Domain name – Domain name dispute resolution policy – Trademark – Identical – Legitimate rights – Bad faith – Distinctive – Default.

MedicaLogic owns the trademark, MEDICALOGIC.  Medscape owns the trademark, MED SCAPE.  These two companies merged and currently seeks a combined trademark application.  Respondent registered the domain name medicalogic-medscape.com on the same day the Complainants merged.  Respondent subsequently offered to sell the domain name to Complainant.

Held, Name Transferred to Complainant.

MedicaLogic and Medscape each owned their trademarks before their merger.  Their merger does not alter those rights, and the combined mark is distinctive.  Complainant thus has exclusive rights to the mark and Respondent’s domain name is identical and confusingly similar to Complainant’s mark.

Respondent is not commonly known by it’s registered domain name and is not making a legitimate use of the site by making a bona fide offering of goods or services in connection with the site.  Respondent does not assert any rights to the name.

Respondent purchased the name with the intent to sell it to Complainant of an amount that exceeds its out-of-pocket expenses related to the name.  Respondent has also registered domain names in the past to prevent trademark owners from using the mark in a domain name.  This is evidence of bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy

Panel decisions referred to

Hewlett-Packard Company v. Full System, FA94637 (Nat. Arb. Forum May 22, 2000).

World Wrestling Federation v. Bosman, D99-0001 (WIPO Jan.14, 2000).

Cree, Inc. v. The Domain Name You Have Entered is For Sale, FA94790 (Nat. Arb. Forum May 24, 2000).

Carmody, Panelist: -

REGISTRAR AND DISPUTED DOMAIN NAME(s) 

The domain name at issue is “MEDICALOGIC-MEDSCAPE.COM”, registered
with Network Solutions, Inc. (“NSI”).

PANELIST(s) 

Hon. James A. Carmody,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The
Forum") electronically on May 31, 2000; The Forum received a hard copy of the
Complaint on May 30, 2000. 

On June 1, 2000, NSI confirmed by e-mail to The Forum that the domain name
“MEDICALOGIC-MEDSCAPE.COM” is registered with NSI and that the
Respondent is the current registrant of the name.  NSI has verified that Respondent
is bound by the Network Solutions Service Agreement Version 5.0 and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s UDRP.

On June 5, 2000, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting a deadline
of June 26, 2000 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via email, post and fax, and to all entities and
persons listed on Respondent’s registration as technical, administrative and billing
contacts by email. 

On June 26, 2000, having received no Response from Respondent, using the same
contact details and methods as were used for the Commencement Notification, The
Forum transmitted to the parties a Notification of Respondent Default. 

On June 29, 2000, pursuant to Complainant’s request to have the dispute decided
by a Single Member panel, The Forum appointed the Hon. James A. Carmody as
Panelist.

Having reviewed the communications records in the case file, the Administrative
Panel (the "Panel") finds that The Forum has discharged its responsibility under
Paragraph 2(a) of the Uniform Rules "to employ reasonably available means
calculated to achieve actual notice to Respondent." Therefore, the Panel may issue
its Decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules
and principles of law that the panel deems applicable, without the benefit of any
Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name transferred from the Respondent
to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that the Respondent has registered a domain name that
is identical to its trademark registered for and in use by the Complainant.  Further,
the Complainant contends that the Respondent has no rights or legitimate interests
to the domain name, and that the respondent has registered and is using the domain
name in bad faith. 

B.     Respondent

The Respondent submitted no response in this matter and, accordingly, all
reasonable inferences of fact in the Complaint will be deemed to be true.

FINDINGS

On February 22, 2000, Medscape, Inc. and MedicaLogic, Inc. issued a press
release announcing their merger; they agreed to conduct business under the name
MedicaLogic/Medscape.  MedicaLogic owns the U.S. trademark,
MEDICALOGIC, (filed: March 4, 1994; registration: March 4, 1995; No.
1,887,003) for computer software for use in managing electronic medical records. 
Medscape owns two U.S. trademark registrations, MED SCAPE (filed: June 26,
1995, registration: June 4, 1996; No. 1,978,357) and MED SCAPE THE
ONLINE RESOURCE FOR BETTER PATIENT CARE (filed: June 26, 1995;
registration: June 4, 1996; No. 1,978,350), for providing medical information
through means of a computer network.  The Complainant is currently seeking a
combined trademark application. 

The Respondent registered the domain name in question on May 15, 2000, the
same date that the stockholders approved the Complainant’s merger and the public
was notified.  That same day (at 4:05pm), the Respondent emailed Medscape
stating: “Someone emailed me about a domain name I own. 
MEDICALOGIC-MEDSCAPE.COM.  Yes it is for sale.”  In a series of
subsequent emails, the Respondent offered to sell the said domain name for
$3,000, then $1,700, and then $1,250.  The Respondent also threatened to place
the domain name up for auction if these offers were not accepted.

DISCUSSION 

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy (“Policy”)
directs that the complainant must prove each of the following three elements to
support a claim that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar
to a trademark or service mark in which the Complainant has rights; 

(2) the Respondent has no rights or legitimate interests in respect of the domain
name; and

(3) the domain name has been registered and is being used in bad faith.

The Complainant has offered exhibits in support of its claims, whereas the
Respondent has submitted no response in the matter.  The Respondent’s failure to
dispute the allegations of the Complainant permits the inference that the
Complainant’s allegations are true.  Further, the Respondent’s failure to respond
leads one to believe that the Respondent knows that its website is misleading and
intentionally diverting business from the Complainant.  See Hewlett-Packard
Company v. Full System, FA 94637 (Nat. Arb. Forum May 22, 2000). 
Applying the Policy to the issue in this case furthers these inferences.

Identical and/or Confusingly Similar

Complainant has rights in the mark “MedicaLogic/Medscape”.

Prior to the merger, MedicaLogic and Medscape each individually owned their
specific trademark.  The merger does not alter their rights to their marks.  The
combined mark is unusual and distinctive and the Complainant has exclusive rights
to the combined mark. 

Rights or Legitimate Interests

The Respondent does not assert any rights or legitimate interests to the domain
name in question.

The Respondent is not commonly known by the domain name in question, is not
making a fair or legitimate use of the site, nor has made a bona fide offering of
goods and services in connection with the site.  Policy  4(c)(i) – (iii).

Bad Faith

The Respondent does not deny that its actions were taken in bad faith.

It is not a coincidence that the Respondent registered the domain name on the same
date of the Complainant’s merger and press release.  The Respondent purchased
the name with the intent to sell it to the Complainant for a price in excess of
out-of-pocket costs related to the domain name.  This is evidence of registration
and use of a domain name in bad faith.  Policy  4(b)(i).  See World Wrestling
Federation v. Bosman, D99-0001 (WIPO Jan. 14, 2000).

The Respondent has registered domain names subsequent to business mergers and
acquisitions in the past to prevent trademark owners from using the mark in a
domain name.  See Cree, Inc. v. The Domain Name You Have Entered is For
Sale, FA 94790 (Nat. Arb. Forum May 24, 2000) (registering the domain name
<creelighting.com and cree-lighting.com> after Cree, Inc. (Complainant)
announced the acquisition of a lighting company).  This pattern of conduct is also
evidence of bad faith.  Policy  4(b)(ii).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is
the decision of the panel that the requested relief be granted. 

 Accordingly, for all of the foregoing reasons, it is ordered that the domain name,
 “MEDICALOGIC-MEDSCAPE.COM” be transferred from the Respondent to
 the Complainant.