Medcenter One, Inc. v. Ying ter Wang Ju
Le Bu Ltd. c/o Wang Zhi Zhu Ce Yong Hu
Claim Number: FA0311000214614
Complainant is Medcenter One, Inc., Bismark, ND
(“Complainant”) represented by Brian
Bergeson, of Schulz Lervick
Geiermann & Bergeson Law Offices, P.C., P.O. Box 2196, Bismarck, ND
58502-2196. Respondent is Ying ter Wang Ju Le Bu Ltd. c/o Wang Zhi Zhu Ce Yong Hu, 60-262,
Dong-lu-yuan, Jiao-wang-zhuang, Tongzhou, Beijing 101101, China (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <medcenterone.org>,
registered with Go Daddy Software.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as Panelist
in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 25, 2003; the Forum received a hard copy of the
Complaint on December 1, 2003.
On
November 26, 2003, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <medcenterone.org>
is registered with Go Daddy Software and that Respondent is the current
registrant of the name. Go Daddy Software has verified that Respondent is bound
by the Go Daddy Software registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
December 3, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 23, 2003 by which Respondent could file a Response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@medcenterone.org by
e-mail.
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
December 31,2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.)as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy
(the "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 Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <medcenterone.org> domain name is confusingly similar to
Complainant’s 1 MEDCENTER ONE mark.
2. Respondent does not have any rights or
legitimate interests in the <medcenterone.org>
domain name.
3. Respondent registered and used the <medcenterone.org> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
registered the 1 MEDCENTER ONE mark with the United States Patent and Trademark
Office (“USPTO”) on September 29, 1987 (Reg. No. 1459631). Complainant has used the 1 MEDCENTER ONE
mark in conjunction with its hospital and healthcare services since 1984.
Respondent
registered the disputed domain name, <medcenterone.org>,
on October 21, 2003. Respondent is
using the domain name solely to redirect Internet users to advertisements
featured on other websites, presumably for referral fees, and to sell
pornographic products and services.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) 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.
Complainant has
established rights in the 1 MEDCENTER ONE mark through registration with the
USPTO and continuous use in commerce since 1984.
The disputed
domain name, <medcenterone.org>,
contains the dominant part of Complainant’s 1 MEDCENTER ONE mark and merely
omits the numeral, “1.” Panels have
held that a mark differing only superficially from a domain name, such as
deliberately changing a single letter or number, retains the confusing similarity
between the mark and name. See Desktop Media, Inc. v. Desktop Media,
Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes
of the domain name dispute resolution process[,] a low threshold of proof is
all that is required to meet the first element”); see also Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum
Sep. 10, 2001) (“it is beyond refute that Respondent’s domain names are
virtually identical, and thus confusingly similar to [Complainant’s]
trademarks. Any superficial differences between the domain names and [Complainant’s]
trademarks are de minimis and of no legal consequence”); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO
July 13, 2000) (finding that a domain name which differs by only one letter
from a trademark has a greater tendency to be confusingly similar to the
trademark where the trademark is highly distinctive); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259
(WIPO Dec. 1, 2000) (holding that the deliberate introduction of generic typos
do not change Respondent’s infringement of a trademark held by Complainant); see also Westfield Corp., Inc. v. Hobbs,
D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com>
domain name confusingly similar to WESTFIELD because the WESTFIELD mark was the
dominant element); c.f. Body Shop Int’l
PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding
that the domain name <bodyshopdigital.com> is confusingly similar to
Complainant’s THE BODY SHOP trademark).
Furthermore,
top-level domain names are irrelevant for determining whether a disputed domain
name is confusingly similar to a registered mark. See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) (finding that the addition of a top-level domain is without
legal significance).
Therefore,
Policy ¶ 4(a)(i) is established.
Respondent has
not asserted any rights or legitimate interests in the domain name. Therefore, the Panel may accept all
reasonable inferences of fact in the allegations of Complainant, without the
benefit of a Response. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint); see also Vert. Solutions Mgmt., Inc. v.
Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true).
Furthermore,
there is no evidence that Respondent is commonly known by the disputed domain
name pursuant to Policy ¶ 4(c)(ii). The
WHOIS registration information fails to imply that Respondent is commonly known
by the name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating, “nothing in Respondent’s WHOIS information implies that Respondent is
‘commonly known by’ the disputed domain name” as one factor in determining that
Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The fact that
Respondent uses the disputed domain name to direct Internet users to advertisements
featured on third-party websites, as well as to provide pornographic products
and services for profit that tarnish Complainant’s mark, is evidence that
Respondent lacks rights and legitimate interests in the name pursuant to Policy
¶¶ 4(c)(i) & (iii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003)
(stating, the “use of the disputed domain name in connection with pornographic
images and links tarnishes and dilutes [Complainant’s mark],” evidencing that
Respondent had no rights or legitimate interests in the disputed domain name); see also Paws, Inc. v. Zuccarini a/k/a
Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the
use of a domain name that is confusingly similar to an established mark to
divert Internet users to an adult-oriented website “tarnishes Complainant’s
mark and does not evidence noncommercial or fair use of the domain name by a
respondent”).
Therefore,
Policy ¶ 4(a)(ii) is established.
Respondent uses
the disputed domain name to direct Internet users to pornographic material,
associating the intended online location, specifically Complainant, with
objectionable material likely to tarnish and dilute Complainant’s mark. This is evidence of bad faith registration
and use. See Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002)
(holding that Respondent’s use of Complainant’s mark to post pornographic
photographs and to publicize hyperlinks to additional pornographic websites
evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names,
D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking
the domain names in question to graphic, adult-oriented websites is evidence of
bad faith); see also Youtv, Inc. v.
Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where
Respondent attracted users to his website for commercial gain and linked his
website to pornographic websites).
In addition,
Respondent has registered and used the disputed domain name in bad faith,
pursuant to Policy ¶ 4(b)(iv), by attracting Internet users to its website
through user-confusion, presumably to profit from advertising fees, among other
things. See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if Respondent profits from its diversionary use of Complainant's
mark when the domain name resolves to commercial websites and Respondent fails
to contest the Complaint, it may be concluded that Respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat.
Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet
users seeking Complainant’s site to its own website for commercial gain); see also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent
attracted users to advertisements).
Therefore,
Policy ¶ 4(a)(iii) is established.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <medcenterone.org>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 12, 2004
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