MedicaLogic/Medscape, Inc. v The Domain Name You Have Entered Is For Sale

The Domain Name You Have Entered Is For Sale, Las Vegas, NV, USA
RESPONDENT.

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

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.

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

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.

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

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.

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.

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).

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).

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.