WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bureau International de Medecins Sans Frontieres and Medecins Sans Frontieres USA Inc v. Nizar Mawani

Case No. D2001-0515

 

1. The Parties

The Complainants are Bureau International de Medecins Sans Frontieres of Rue de la Tourelle, 39, 1040 Brussels, Belgium and Medecins Sans Frontieres USA Inc of 6 East 39th Street, New York, New York 10016, United States.

The Respondent is Nizar Mawani of 23 Hartford Trail, Brampton, Ontario L6W 4K2, Canada.

 

2. The Domain Name and Registrar

The domain name on which the Complaint is based is <doctorswithoutborders.com>.

The registrar with which the domain name is registered is Network Solutions Inc of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 ("the Policy") in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on April 7, 2001 and, following verification of the registration of the domain name and other details with the Registrar on April 11, 2001, the Respondent was notified of the Complaint and the commencement of administrative proceedings, together with a copy of the Complaint, on April 12, 2001, both by email and post/courier. In the case of the email communications, these were addressed to each of the parties listed in the Registrarís verification as the registrant (the Respondent), the administrative contact and billing contact (Marvin Foest) and the technical contact (Role Acct, Domain Registration, Aurora Communications Exchange Ltd). In the case of the post/courier communications, these were sent to the postal addresses given in the Registrarís verification for each of these parties.

3.3 Having received no response from the Respondent within the specified time in the Notification of Complaint, the Center issued a Notification of Respondent Default on May 2, 2001 by email addressed to each of the parties listed in the Registrarís verification. Following an email from "Marvin Foest (WebbFX)" (the administrative and billing contact) to the Center with corrected contact information for the Respondent, the Notification of Respondent Default was resent by email on May 3, 2001, to nizarmawani@home.com. On May 7, 2001, the Notification of the Complaint and commencement of administrative proceedings were resent.

3.4 On May 8, 2001, the parties were notified of the appointment of the administrative panel and the projected decision date.

3.5 In light of the above, the Panel finds that

- The Complaint was filed in accordance with the requirements of the Rules and the WIPO Supplemental Rules.

- The Respondent was properly notified of the Complaint and of its Default in lodging a Response in accordance with the Rules, paragraph 2(a): see 3.2 and 3.3 above.

-The Panel was correctly constituted.

- No communication has been received from the Respondent at any time during these proceedings, although the Panel would have been prepared to receive and consider such a communication up to the date of finalization of the decision.

3.6 In the absence of a response by the Respondent, the Panel now proceeds to determine the dispute on the basis of the Complaint under paragraph 5(e) of the Rules.

 

4. Factual Background

4.1 The First Complainant is the largest independent international medical relief agency in the world, with offices in 18 countries (Complaint, p 6). Since 1971, the Complainantís staff and volunteers have aided victims of armed conflict, epidemics, and natural and man-made disasters in more than 80 countries. In 1999, the First Complainant won the Nobel Peace Prize in recognition of its outstanding humanitarian achievements.

4.2 The First Complainant owns several US registered service marks comprising the words DOCTORS WITHOUT BORDERS, Registration Numbers 1,820,094 and 2,290,906 respectively (Annexe H). The first of these registrations was registered in 1994 by the Second Complainant in respect of "recruitment services for medical professionals to participate in international relief projects (class 35) and for "charitable fund raising services for international relief projects" (in class 36), with a first use in 1981 and a first use in commerce in 1990. The second registration, also comprising the words DOCTORS WITHOUT BORDERS was registered by the Second Complainant in 1999, in respect of "charitable services, namely providing emergency medical relief and assisting victims of disasters and conflicts worldwide and providing public awareness of populations at risk" within class 42, with a first use in 19790 and first use in commerce in 1990. In September 2000, the Second Complainant assigned these service marks to the First Complainant in exchange for an exclusive licence to use the service marks within the United States (see declaration of Joelle Tanguy, Annexe I and copy of the licence in Annexe J.) The First Complainant has also granted its consent to the Second Complainant being a party to the present administrative proceeding (Annexe K).

4.3 The Complainants are also the registrants of a number of domain names that incorporate the names "Doctors Without Borders" and "Medecins Sans Frontieres". These include <doctorswithoutborders.org>, <doctorswithoutborders.net> and <medecinssansfrontieres.com> and <medecinssansfrontieres.org> (see further Annexe L). The Second Complainant has maintained a website at <doctorswithoutborders.org> since June 12, 1997, and this displays the service marks prominently (see Tanguy declaration, para 5, Annexe I).

4.4 In addition, the Complainants have provided considerable supporting material relating to publicity that their activities have received in various forms of the media, including newspapers, both in the USA and elsewhere (see Annexe M). In particular, a great deal of publicity appears to have been generated when the Complainants won the Nobel Peace Prize in 1999.

4.5 According to the WHOIS database maintained by Network Solutions, the Respondent is listed as the Registrant of the domain name <doctorswithoutborders.com>, having been registered on January 27, 2000 (see Annexe A). The record was last updated on 16 January 2001 and expires on 27 January 2004. Marvin Foest of Web Expression, 53 Summit Avenue, Welland, Ontario L3C 4G5 Canada is listed as the administrative and billing contact, and the technical contact is "Role Acct, Domain Registration", Aurora Communications Exchange Ltd of 8500 Leslie Street Suite 320, Thornhill, Ontario L3T 7M8 Canada.

4.6 The Complaint alleges that the Complainants' US attorney first contacted the Respondent on November 2, 2000, with a request that the domain <doctorswithoutborders.com> should be transferred to the Complainants, subject to the latter paying the reasonable costs of the Respondent in securing the registration. Following further communications between the parties, the Complaint in the present proceeding was made.

 

5. Partiesí Contentions

A. Complainant

The Complainants (collectively referred to in the Complaint as the "Complainant") seek transfer to them of the domain name <doctorswithoutborders.com>, and in support of this contention addresses each of the elements described in paragraph 4(a) of the Policy as follows.

- With respect to the element described in paragraph 4(a)(i), the Complainant submits that the disputed domain name is identical to its registered service marks DOCTORS WITHOUT BORDERS, being marks in which the Complainant has rights.

- With respect to the element described in paragraph 4(a)(ii), the Complainant submits that there is no evidence of any right or legitimate interest by the Respondent in the domain name. It states that the Respondent is in no way affiliated with the Complainant, that it does not operate an active web site under the domain name and that it provides no international medical services and has no affiliations with groups providing these services. It further asserts that there is no evidence of any use of the domain name or any part thereof in relation to the Respondentís own business and website which is carried on under the name of Webfix (Winnick Declaration, para 6, Annexe F and Exhibit C, which sets out a copy of the <webfix.com> webiste). Finally, it alleges that there are no defences open to the Respondent under para 4(c) demonstrating that it has any rights or legitimate interests in the domain name.

- With respect to the element described in paragraph 4(a)(iii) of the Policy, the Complainant submits that the Respondent has registered and used the domain name in bad faith and that this is evidenced in a number of ways (some of these allegations appear also in relation to para 4(a)(ii) but are more relevant to the question of bad faith). Thus, it is alleged that the Respondent registered the domain name after all the publicity attending the award of the Nobel Peace Prize to the Complainant in 1999 and that the Respondent could hardly have been unaware of this. Secondly, it is alleged that the domain name has not been used in connection with an active web site for more than a year and that it is open to infer bad faith from this (citing in support Mondich, WIPO Case No D2000-0004 and Stella Díoro, WIPO Case No D2000-0012). Thirdly, it is alleged that the Respondent appeared to understand that the Complainant had legitimate rights to the domain name (Winnick Declaration, par 5, Annexe F; Annexe D). Finally, it is alleged that the Respondent sought to sell the domain name to the Complainants for more than the reasonable out-of-pocket expenses involved in registering and maintaining the domain name.

B. Respondent

As noted above, the Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.

 

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating three elements.

6.1 That the complainant has rights in a trade or service mark with which the respondentís domain name is identical or confusingly similar

As noted in paragraph 4.2 above, the Complainant has provided evidence of its trade mark registrations within the United States of America. In addition, it has registered several domain names that incorporate the words <doctorswithoutborders>, and has provided considerable evidence of publicity and press coverage that its activities have received, both in the US and world press. Accordingly, the Complainant has satisfied the first part of paragraph 4(a)(i) of the Policy, namely that it has rights in a trade or service mark.

The next question is whether the disputed domain name is identical or confusingly similar to the Complainantís mark. In this regard, the domain name and registered service marks are virtually identical, with the only differences being the absence of spaces between the words DOCTORS WITHOUT BORDERS and the addition of the suffix ".com". Even if these differences were sufficient to make the domain name not identical to the trade marks, there can be little doubt that the domain name is confusingly similar to the Complainantís services marks, and it is noteworthy that previous panels have reached the same decision with respect to similar small differences: see, for example, World Wrestling Federation Entertainment Inc v Michael Bosman WIPO Case No D99-0001 (January 14, 2000) (worldwrestlingfederation.com and World Wrestling Federation) and InfoSpace.com, Inc v Registrar Administrator Lew Blanck, WIPO Case No D2000-0069 (April 3, 2000) (infospaces.com and Infospace). In the present case, the second part of the requirements of paragraph 4(a)(i) has therefore been satisfied.

6.2 That the Respondents must be shown to have no rights or legitimate interests in the Domain Name

Paragraph 4(c) of the Policy sets out certain matters to which a Respondent can point as demonstrating rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii). These include:

"(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

In the present proceeding, there is no evidence that the Respondent has used the domain name <doctorswithoutborders.com> in connection with any bona fide offering of goods and services (subpara (i)). Nor is there any evidence of "demonstrable preparations" to use the domain name in that way (subpara (i)), while it is clear that there has been no licence or authorization given by the Complainant to the Respondent to use the name or mark "DOCTORS WITHOUT BORDERS".

Likewise, there is no evidence before the Panel that indicates that the Respondent has ever carried on a business under the name "DOCTORS WITHOUT BORDERS" or any variant of this expression, or that it has been commonly known by that name (subparagraph (ii)).

Finally, there is no evidence before the Panel that indicates whether any of the factors referred to in subparagraph (iii) are applicable.

The matters referred to in paragraph 4(c) are not an exhaustive statement of what may constitute rights or legitimate interests in a domain name, and it is therefore open to a Respondent to point to other evidence that may show this. In the present proceeding, there has been no Response or evidence presented by the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is entitled to draw from such default such inferences as it considers appropriate. The Panel therefore concludes that the Complainant has established this element of Paragraph 4(a) of the Policy, namely that the Respondent has no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent registered and is using the Domain Name in bad faith

Paragraph 4(b) of the Policy lists certain factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This is not an exclusive list, and includes:

"(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration (and acquisition) of the name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of an Administrative Panel to the effect that registration in bad faith followed by a passive holding of a domain name when there is no way in which it could be used legitimately can amount to use in bad faith: Telstra Corporation Ltd v Nuclear Marshmallows WIPO Case No D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several Panel decisions: see, for example, Estee Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No D2000-0869 and E & J Gallo Winery v Hanna Law Firm, WIPO Case No D2000-0615.

In the present proceeding, the Complainant raises a number of matters that go to the questions of registration and use in bad faith under paragraph 4(a) (iii) of the Policy (see para 5.A above). Of these, the most significant is that the Respondent acquired and maintained the domain name for the purpose of sale or rent at a consideration in excess of the reasonable out of pocket expenses of registration.

In this regard, the Complainant refers to various communications between the parties, beginning with an email from the Complainantsís attorney (Alison J Winnick) to the Respondent on November 2, 2000, requesting the transfer of the domain name (Complaint, p 12; Winnock Declaration, para 2, Annexe F; see also Exhibit A). In an email response, the Respondent asked Winnick to call him "to discuss what reasonable costs can be claimed" (Winnick Declaration, para 3, Annexe F; see also Exhibit B). On November 3, 2000, Winnick spoke with the Respondent on the telephone and he asked what the Complainant was willing to pay to get the domain name back (Winnick Declaration, para 3, Annexe F). Winnick states that she told him that the Complainant would pay "his reasonable costs and expenses incurred in connection with registering the Domain Name with NSI and transferring the Domain Name to MSF" (Id). She goes on to relate that the Respondent told her that he needed more than expenses because "his team" had done a "lot of work" (unspecified) on the Domain Name (Id). A further telephone discussion concerning payment for the transfer occurred on 20 November 2000 (Winnick Declaration, para 7, Annexe F), and on November 30, 2000, Winnick sent an email offering $US500 (Winnick Declaration, para 9, Annexe F, Exhibit D). There was no response to this by the Respondent, but in another telephone conversation initiated by Winnick on December 19, 2000, the Respondent stated that he wanted the sum of $US10,000 and refused to detail how this sum was made up. Winnick said this was more than the Complainant was prepared to pay and the Respondent said he would not transfer the name (Winnick Declaration, para 10, Annexe F).

From the above, it can be inferred that the Respondentís purpose in registering and using the domain name was that referred to in paragraph 4(b)(i). In support of this inference, it is also relevant to refer to the fact that the Respondent has registered a number of other domain names that appear to have little if any connection to its own business which is conducted under the name "Webfix" and <webfix.com> (see the list of names in Complaint, Annexe O). Such a bundle of apparently unrelated registrations can be evidence from which can be inferred a general purpose on the part of the Respondent to register and sell them at a profit to third parties who might be assumed to have a more legitimate interest in them, ie because they represent or resemble names under which they carry on trade: see further Club Méditerranée v Yosi Hasidim, WIPO Case No D2000-1350 (Dec 15, 2000) and JP Morgan v Resource Marketing, WIPO Case No D2000-0035 (March 23, 2000). In the present case, the list of domain names registered by the Respondent is certainly suggestive of such an intent, but it is by no means clear that all, or indeed any, of the names registered are those of wellknown trade marks or service marks such as would satisfy the requirements of paragraph 4(a)(i) of the Policy. It is alleged in the Complaint (at p 13) that these include the names of well known religious leaders, but it is unclear to what, if any extent, these would enjoy trade mark rights. The main name of interest here is that of the Aga Khan (<agakhanfoundation.com>, <agakhanuniversity.com> and <hhagakhan.com>. The others are probably lesser known, and others again seem of a general descriptive of geographic character. Taken on its own, there would be probably nothing sufficiently egregious in this stockpile of domain names to justify a finding of registration and use in bad faith under paragraph 4(b)(i). However, it does add weight to the finding made above with respect to the offer to sell in the present proceeding, making it easier to conclude that the offer was indeed made with the purpose described in paragraph 4(b)(i).

The Complainant has also submitted that a finding of bad faith can be sustained by virtue of the fact that there has been no active use of the domain name for over a year, referring here to previous Panel decisions in Mondich, WIPO Case No D2000-0004 and Stella Díoro, WIPO Case No D2000-0012). In both cases, however, there was evidence of offers to sell at a profit within the meaning of paragraph 4(b)(i) and it does not seem that non-use was itself relied upon as a separate basis for finding registration and use in bad faith. Rather, it is better treated as a further factor which supports the finding of bad faith pursuant to paragraph 4(b)(i). In the same way, it is difficult to escape the conclusion that the Respondentís registration must have been effected with full knowledge of the Complainant and its international activities, and that there was therefore no legitimate commercial or other purpose underlying the registration. At no time during the negotiations between the Complainantís attorney and the Respondent did the latter seek to deny the legitimate interest of the Complainant in the domain name. Coupled with the offer to sell the domain name, these matters go to confirm the bad faith of the Respondent for the purposes of paragraph 4(a)(iii) of the Policy.

6.4 Conclusions

The Panel finds that the Complainant has established its case with respect to each of the elements stated in paragraph 4(a) of the Policy.

 

7. Decision

The Administrative Panel accordingly directs that the registration of the domain name <doctorswithoutborders.com> should be transferred to the Complainant. In this regard, it notes that the Complaint does not indicate which of the two Complainants this should be. Although it has been assumed throughout this determination that the interests of the two Complainant are identical, it will now be necessary for them to indicate to the Registrar which of them is to become the registrant of the domain name.

 


 

Staniforth Ricketson
Sole Panelist

Dated: May 27, 2001