WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

University of Iowa v. Juraj Vyletelka

Case No. D2002-0349

 

1. The Parties

The Complainant is the University of Iowa, an institution of higher education and an entity of government of the State of Iowa located in Iowa City, Iowa, United States of America. The Complainant is represented by Gay D. Pelzer, Associate Counsel, the University of Iowa.

The Respondent is Juraj Vyletelka of Zilina, Slovakia SK.

 

2. The Domain Name and Registrar

The domain name at issue is <virtualhospital.info>.

The Registrar with which the disputed domain name is registered is Tucows, Inc dba OpenSRS, 96 Mowat Avenue, Toronto, Ontario, Canada.

 

3. Procedural History

On April 12, 2002, a Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") for decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On April 17, 2002, the Registrar responded to a request for verification of the disputed domain name <virtualhospital.info> confirming:

h That the disputed domain name was registered with Tucows, Inc;

h The details of the Respondent;

h That the Policy applied to the disputed domain name;

h That the Respondent was the current registrant of the disputed domain name;

h That the status of the disputed domain name was "on hold".

On April 18, 2002, the Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent. The Respondent was advised that a response to the Complaint was required within 20 calendar days i.e. by May 8, 2002.

On May 6, 2002, a Response was received from the Respondent.

On May 16, 2002, the Center advised the parties that an Administrative Panel had been appointed, consisting of a single member. The Panelist finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The Panel has independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

 

4. Factual Background

The Complainant states that it "is actively involved in trademark licensing activities that utilize the term VIRTUAL HOSPITAL". These activities were not specified in the Complaint.

The Complainant claims that its first use of the trademark VIRTUAL HOSPITAL was November 29, 1992. It obtained US Federal trade mark registration for the trademark on May 6, 1997, in class 42 in respect of the following specifications of services:

"Providing medical information, education, and instruction through database accessible by remote computer".

On September 21, 2001, the Respondent registered the disputed domain name <virtualhospital.info>.

On November 12, 2001, the Complainantís representative wrote to the Respondent offering to purchase the disputed domain name "for an amount which would reimburse your cost for its purchase".

On November 26, 2001, the Respondent replied to that letter as follows:

"dear sir,

I know the websites: virtualhospital.org, net, com, I didnít intend to break intellectual property rights of The University of Iowa. I have prepared another activities (sic) on my domain virtualhospital.info. With the stopping of those activities I shall lose 10,000 USD.

This is my offer to sell my domain virtualhospital.info.

very truly yours

juraj vyletelka"

The Respondent has registered two other domain names in the Slovak Republic and the Czech Republic: <virtualnanemocnica.sk> and <virtualninemocnice.cz>. They appear to have been registered on September 24, 2001, and December 11, 2001, respectively. The Respondent states that the disputed domain name, <virtualhospital.info>, is the English equivalent of these domain names.

The Panel expresses disappointment at the spartan details provided by the Complainant as to its trademarks, licensing activities and the reputation of its trademark. It is only as a result of the Panel viewing the Complainantís website <virtualhospital.com> (which resolves to <vh.org>) that it is possible to see that there is indeed licensed use of the VIRTUAL HOSPITAL trademark in Australia, Iceland, Japan and Venezuela as well as in the United States of America.

The website provides individualized services in each of these countries:

- Australiaís services are provided by the University of Queenslandís Royal Brisbane Hospital;

- Icelandís services are provided by the University of Iceland;

- Japanís services are provided by the Kameda Medical Center;

- Venezuelaís services are provided by Universidad de los Andes.

The Complainantís website also notes that the trademark VIRTUAL HOSPITAL is registered in Australia and Japan.

 

5. Partiesí Contentions

A. The Complainant

The Complainant claims that the disputed domain name is confusingly similar to the trademark VIRTUAL HOSPITAL maintained and used by the Complainant. It states that the Respondent does not have a legitimate right or interest with respect to the disputed domain name as he is not a licensee of the University of Iowa, has never applied for any licensing rights and is not otherwise authorized to use the Complainantís mark. It states further that the Respondent is not an alumnus of the Complainant, is not a participant in any auxiliary organizations of the University and has no contractual business relationship with the University.

The Complainant claims that the Respondent does not have a legitimate business purpose for registering the disputed domain name. It bases this contention on the fact that the Respondent registered the disputed domain name on September 21, 2001, and has not yet developed any website using the disputed domain name.

The Complainant alleges that the Respondent registered the name in bad faith and for the sole purpose of selling the disputed domain name to the Complainant for consideration far in excess of the Respondentís out-of-pocket costs. The Complainant relies on the fact that in the email to the Complainant dated November 26, 2001, the Respondent offered to transfer the domain name to the Complainant for US$10,000.

The Complainant referred the Panel to the decisions of WorldWrestling Federation Entertainment, Inc v Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v Mike Pearson, WIPO Case No. D2000-0001 and Panavision International, LP v Dennis Toeppen et al, 141 F.2d 1316 (9th Cir. 1998) as authority for the proposition that a Respondentís offer to sell a domain name for valuable consideration well beyond any out-of-pocket costs directly related to the domain name constitutes "use" of the domain name in bad faith.

B. The Respondent

The Respondent claims that he did not intend to disrupt the rights of the Complainant, which he acknowledges to be the owner of the trademark VIRTUAL HOSPITAL. He states that at the time of registration of the disputed domain name, he was not aware of the Complainantís trade mark registration in the United States.

The Respondent claims that the Complainantís assertion that the disputed domain name was registered and is being in bad faith is refuted by the existence of the two other domain names registered by the Respondent, <virtualnanemocnica.sk> and <virtualninemocnice.cz>. As indicated above, the Respondent states that the disputed domain name is the English equivalent of these domain names. No evidence was provided in support of this claim.

The Respondent also claims that all three domain names are intended to be used for a non-commercial purpose but did not specify what this non-commercial purpose would be - only that he registered the domain names <virtualnanemocnica.sk> and <virtualninemocnice.cz> and <virtualhospital.info> "for use as one common project, without intent for commercial gain to misleadingly divert consumer (sic) or to tarnish the trademark or service mark of the Complainant".

The Respondent acknowledges that he has not published any content on the website corresponding to the disputed domain name. The Respondent claims, however, that the preparation and realisation of a website in the Slovak Republic is substantially different and more expensive than in the United States of America and Western European countries. He contends that he would have been unlikely to have registered the domain names, including the disputed domain name, if he had had no real intent to use these.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar or identical to a trademark or service mark in which the Complainant has rights

The Complainant has provided evidence that it has registered the trademark VIRTUAL HOSPITAL in the United States of America. The registration notes that the Complainantís first use of the trademark was November 29, 1992 Ė nearly ten years ago.

As noted earlier, the Complainantís website also refers to registrations of the trademark in Australia and Japan as well.

The Panel considers that it is plain that the disputed domain name is identical to the trademark VIRTUAL HOSPITAL in which the Complainant has rights.

Respondent has no rights or legitimate interests in respect of the domain name

The second burden on the Complainant is to establish that the Respondent has no rights or legitimate interests in the disputed domain name. The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain name. These circumstances are:

(i) Before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) The Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) The Respondent is making a legitimate non-commercial 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.

It appears to be common ground that there has been no use of the disputed domain name to date. As at May 2002, the site displayed a message that it was "currently under construction".

In his response to the Complainantís email expressly raising concerns over infringement of the US trademark the Respondent stated:

"I have prepared another activities (sic) on my domain virtualhospital.info. With the stopping of those activities I shall lose 10,000 USD."

No details are provided as to these "activities" either in the email or in the Response. Yet the Policy makes it plain that the Respondent must show such activities in order to demonstrate a legitimate right or interest in the disputed domain name.

In the circumstances, the Panel finds that the Respondent has no legitimate rights or interest in respect of the disputed domain name.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) Circumstances indicating that you 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 website 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 website or location or of a product or service on your website or location."

The Complainantís sole allegation of bad faith is that the Respondentís primary purpose in registering the disputed domain name was to sell, rent or otherwise transfer the disputed domain name registration to it for valuable consideration in excess of the Respondentís out-of-pocket costs directly related to the domain name.

In his Response the Respondent strongly refutes any such bad faith. He states that "in the time of registration of the domain name <virtualhospital.info> I didnít know about the Complainantís trademark". However, this statement seems to be at odds with what the Respondent said in his email reply to the Complainantís first email dated 10 November 2001 Ė just two months after registration of the disputed domain name. At that time the Respondent stated:

"I know the websites :virtualhospital.org, net,com, I didnít intend to break intellectual property rights of The University of Iowa."

The Panel considers that the only real way to reconcile these apparently conflicting statements is to accept that the Respondent was aware of the Complainantís "virtual hospital" websites, but not that the Complainant had obtained trademark registrations for the mark "VIRTUAL HOSPITAL".

The Respondent further claims that the assertion of bad faith is refuted by the existence of the two other domain names he has registered. The Panel notes that one of these domain names appears to have been registered in December 2001 Ė after the Complainantís email to the Respondent dated November 10, 2001, putting him on notice of its rights. Furthermore, the fact that there are two other domain names does not of itself disprove bad faith registration and use Ė particularly as neither of the sites appear to be operating, even now.

As has already been noted, the Respondentís email of November 26, 2001, which offered to sell the disputed domain name, stated:

"I have prepared another activities (sic) on my domain virtualhospital.info. With the stopping of those activities I shall lose 10,000 USD. This is my offer to sell my domain virtualhospital.info".

The Respondent has not put any evidence before the Panel to show what these other "prepared" activities were and how these justified a demand of US$10,000. In circumstances where prima facie the demand falls within paragraph 4(b)(i), there is an evidential onus on the Respondent to explain how this figure of US$10,000 was reached and/or is justified.

As the Respondent has failed to do so, and has acknowledged that he had knowledge of the Complainantís sites <virtualhospital.org>, <virtualhospital.net> and <virtualhospital.com>, the Panel is prepared to find that the demand for US$10,000 is evidence of bad faith registration in terms of paragraph 4(b)(i).

The Policy requires a Complainant to demonstrate both that the disputed domain name was registered and that it is being used in bad faith. As indicated earlier, the Respondent has not made any use of the disputed domain name to date. However a passive holding of a domain name, particularly in the context of other evidence of bad faith registration, has consistently been found not to frustrate a Complainantís allegation of bad faith registration and use. (Telstra Corp v Nuclear Marshmallows, WIPO Case No. D2000-0003.)

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the domain name <virtualhospital.info> is identical to a trademark or service mark in which the Complainant has rights;

(b) the Respondent does not have a right or legitimate interest in respect of the domain name <virtualhospital.info>;

(c) the domain name <virtualhospital.info> has been registered and is being used in bad faith.

Accordingly, the Panel orders that the disputed domain name <virtualhospital.info> be transferred to the Complainant.

 


 

Andrew Brown
Sole Panelist

Dated: May 31, 2002