WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan

Case No. D2003-0611

 

1. The Parties

The Complainant is Cancer Treatment Centers of America, Inc. (CTCA) of Illinois, United States of America, represented by Schiff Hardin & Waite of Chicago, Illinois, United States of America.

The Respondent is Henry Chan of Nassau, Bahamas.

 

2. The Domain Names and Registrar

The disputed domain names <cancercenterofamerica.com> and <cancertreatmentcenterofamerica.com> are registered with iHoldings.com, Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 5, 2003. On August 6, 2003, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On August 6, 2003, iHoldings.com, Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 27, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 29, 2003.

On September 17, 2003, the Complainant transmitted to the Center, and the Respondent via email a supplemental submission. The Center transmitted its acknowledgment of receipt of the supplemental submission to the Complainant and copied it to the Respondent and the Panel. The Panel found that there was no need to review the Complainants supplemental submissions.

The Center appointed Jacques A. Léger, Q.C. as the sole panelist in this matter on September 8, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant, Cancer Treatment Centers of America, Inc. is an Illinois company that provides management, marketing, and related services to affiliated hospitals and medical practices, which in turn provide medical, counseling, and other services to cancer patients.

Through the Complainantís website at "www.cancercenter.com," and through other means, the Complainant also provides a wide variety of information related to cancer, cancer prevention, and treatments for cancer to patients, prospective patients, and the general public.

The Complainant owns U.S. Trademark Registration No. 2,273,680 for its CANCER TREATMENT CENTERS OF AMERICA mark, as well as U.S. Trademark Registration No. 1,705,553 for its CANCER TREATMENT CENTERS OF AMERICA logo mark.

The Respondent registered the <cancertreatmentcenterofamerica.com> domain name on December 4, 2002 and the <cancercenterofamerica.com> domain name on October 28, 2002 <cancercenterofamerica.com>.

On June 12, 2003, the Complainant sent a letter to the Respondent by e-mail, informing it of Complainantís trademark rights in the mark CANCER TREATMENT CENTERS OF AMERICA and demanding that the Respondent stop using the <cancertreatmentcenterofamerica.com> domain name. The Complainant received no response to this e-mail.

On June 24, 2003, the Complainant sent a letter to the Respondent by USPS Global Priority and by e-mail, again demanding that the Respondent stop using the <cancertreatmentcenterofamerica.com> domain name. The Complainant never received a response from the Respondent to either this letter or this e-mail.

On July 22, 2003, the Complainant sent a letter to the Respondent by e-mail, demanding that the Respondent stop using the <cancercenterofamerica.com> domain name. The Complainantís e-mail provider sent the Complainant an "Undeliverable: Delivery Failure" e-mail message, notifying the Complainant that the e-mail provider could not deliver the Complainantís e-mail to the Respondent. On July 23, 2003, the Complainant attempted to re-send the July 22, 2003, e-mail to the Respondent. The Complainant received another "Undeliverable: Delivery Failure" message from its e-mail provider. Apparently, the Respondent has blocked e-mail from the Complainantís attorney, or the Respondentís e-mail account has been deactivated.

 

5. Partiesí Contentions

A. Complainant

Rights in the Mark

The Complainant has provided management, marketing, and related services to affiliated hospitals and medical practices under the service mark CANCER TREATMENT CENTERS OF AMERICA since at least as early as March 20, 1990.

Through its services and extensive advertising, the Complainant has generated valuable goodwill and widespread customer recognition in the CANCER TREATMENT CENTERS OF AMERICA service mark. The Complainant also has featured the CANCER TREATMENT CENTERS OF AMERICA mark prominently on its website, at "www.cancercenter.com." The Complainant advertises and has advertised its services, its CANCER TREATMENT CENTERS OF AMERICA mark, and its website in a variety of advertising media and promotional materials, including national television and magazines, regional radio, and newspapers distributed within the geographic areas surrounding its facilities.

The Complainant has treated patients from all 50 of the United States, and received inquiries and requests for cancer information from hundreds of thousands people residing in all 50 of the United States. The Complainant currently receives more than 90,000 discrete visits to its website each month.

Identical or Confusingly Similar

The domain name <cancertreatmentcenterofamerica.com> is confusingly similar to the Complainantís service mark CANCER TREATMENT CENTERS OF AMERICA and differs only in that it merely deletes the "s" from the word "centers."

The domain name <cancercenterofamerica.com> is also confusingly similar to the Complainantís service mark (particularly in light of the Complainantís use of "cancercenter" in the URL for its website, "www.cancercenter.com") and differs only in that it deletes the word "treatment" from the service mark and the letter "s" from the word "centers."

UDRP decisions clearly support the principle that, when choosing a domain name, a domain name that misspells or omits a letter from a recognized trademark may be confusingly similar to the trademark. See, e.g. AOL, Inc. v. Yeteck Comm., Inc., WIPO Case No. D2001-0055. Further, a domain name that omits a word from a trademark may be confusingly similar to the trademark. See, e.g., Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031) wherein it was stated that the domain name <rbcroyal.com>, apparently registered by the same respondent as in this matter - was confusingly similar to trademark RBC ROYAL BANK, the only difference between the domain name and the trademark being the deletion of the generic term "bank."

In addition, the Respondentís search sites and "Search Results" windows list cancer-related links and information; the search sites feature Complainantís CANCER TREATMENT CENTERS OF AMERICA service mark and/or near variants of that mark in the lists of "Popular Searches" on the right side of the page; and the "Search Results" windows feature headlines that utilize the Complainantís service mark (or a near variant), thereby further increasing the likelihood that the Internet user will mistakenly believe that the Respondentís sites are associated with the Complainant.

Rights or Legitimate Interests

The Respondent uses the <cancertreatmentcenterofamerica.com> and <cancercenterofamerica.com> domain names to link Internet users to a search site, a gambling window, advertisement windows, and a purported "Search Results" window. These websites and windows may vary slightly each time an Internet user accesses either of the <cancertreatmentcenterofamerica.com> or <cancercenterof-america.com> domain names. As of August 1, 2003, the search site linked to "www.cancertreatmentcenterofamerica.com," and as of August 4, 2003, the search site linked to "www.cancercenterofamerica.com," featured the Complainantís CANCER TREATMENT CENTERS OF AMERICA service mark and/or slight variants of that mark in the lists of "Popular Searches" on the right side of the page. As of August 4, 2003, the "Search Results" windows linked to both of these domain names was headlined: "Below are the top sites related to cancer treatment centers of America!!" (emphasis in original). The search sites and the "Search Results" windows listed various links related to cancer, none of which was associated with or authorized by the Complainant. The Search Results windows also contained links to sites offering such goods and services as coupons, on-line business degrees, debt reduction, the International Star Registry, and a dating service for singles. It should be noted that, on other dates immediately prior to the filing of the Complaint, the domain names were associated with other search and advertising sites.

The Respondent trades on the Complainantís goodwill by misdirecting members of the public to its sites and affirmatively seeks to confuse the Complainantís customers and others who mistakenly misspell the Complainantís service mark, or who guess at or cannot recall exactly the URL of the Complainantís website.

The Respondent uses the <cancertreatmentcenterofamerica.com> and <cancercenterofamerica.com> domain names to misdirect Internet traffic to search engines and a series of pop-up advertisements in order to collect advertising and click-through fees and to generate sales revenues. Use of domain names for such purposes is neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain names. See Yahoo! Inc., et al. v. Henry Chan, (FA0306000162050, National Arbitration Forum, July 16, 2003) wherein it was found that Henry Chanís registration and use of more than 70 domain names incorporating the complainantsí marks to redirect Internet traffic to a search engine and through a series of pop-up advertisements was not legitimate use.

In addition, if Respondent fails to submit a response to the Complaint in this matter, that is further evidence that the Respondent lacks rights or legitimate interests in the disputed domain names. See Yahoo! Inc. v. Henry Chan, (FA0306000162050, National Arbitration Forum, July 16, 2003).

Furthermore, there is no evidence that the Respondent has been commonly known by the <cancertreatmentcenterofamerica.com> or <cancercenterofamerica.com> domain names.

Bad faith

The Respondent registered and uses the <cancertreatmentcenterofamerica.com> and <cancercenterofamerica.com> domain names in bad faith. The Respondentís domain names rely on their confusing similarity with the Complainantís mark. The Respondentís reliance on the goodwill surrounding the Complainantís mark to redirect Internet users to websites unrelated to the Complainant and then to subject those users to pop-up advertisements indicates bad faith use and registration of the domain names. See Yahoo! Inc. v. Henry Chan (FA0306000162050, National Arbitration Forum, July 16, 2003). Given the Complainantís registration and widespread promotion of its CANCER TREATMENT CENTERS OF AMERICA service mark, and its widespread promotion of the services provided by the Complainant and its affiliated hospitals and medical practices under its service mark, it is highly unlikely that the Respondent was unaware of the Complainantís service mark when it registered either of these domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 wherein complainantís trademark found to have strong reputation and to be widely known based on substantial use in Australia and in other countries.

Even if the Respondent was unfamiliar with the Complainantís CANCER TREATMENT CENTERS OF AMERICA service mark, the Respondent would have discovered the Complainantís service mark upon performing a trademark search. Failure to perform a trademark search is evidence of bad faith. See Rubbermaid, Inc. v. Venture-Q, LLC, WIPO Case No. D2001-1361 wherein it was found that the respondentís failure to perform a trademark search prior to registering the domain name at issue, despite the fact that most registration websites contain a link for trademark searches to be done online and free of charge, was evidence of bad faith.

Moreover, the Respondentís registration of more than one domain name that is confusingly similar to the Complainantís service mark further supports the inference that the Respondent knew of the Complainantís service mark. See Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 wherein it was stated that the respondentís registration of three domain names that were identical or confusingly similar to complainantís trademark supported inference that the Respondent knew of the complainantís trademarks upon registering the domain names and was evidence of a pattern of such conduct.

Several UDRP complaints have been filed against the Respondent in connection with domain names registered by him namely: Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031; LTD Commodities LLC v. Henry Chan, (FA0303000152617, National Arbitration Forum, May 8, 2003); Pioneer Hi-Bred Intíl Inc. v. Henry Chan, (FA0304000154119, National Arbitration Forum, May 12, 2003); Bedford Fair Apparel, Inc. v. Henry Chan, (FA0305000157322, National Arbitration Forum, June 20, 2003); and Yahoo! Inc., GeoCities, HotJobs.com, Ltd. and Launch Media, Inc. v. Henry Chan, (FA0306000162050, National Arbitration Forum, July 16, 2003). The respondent in these decisions and the Respondent in this proceeding are clearly the same person. In all of these domain name disputes, the respondent has the name of Henry Chan, the respondent registered domain names through Dotregistrar.com, the respondent registered one or more domain names that were slight variations of trademarks owned by the complainants, and the respondent did not reply to the complainantsí contentions. In at least one of these decisions (Yahoo! Inc., GeoCities, HotJobs.com, Ltd. and Launch Media, Inc. v. Henry Chan, (FA0306000162050, National Arbitration Forum, July 16, 2003), the respondent had the same email address as in this matter.

These decisions indicate that the Respondent habitually registers domain names comprising trademarks or variations of trademarks in which he has no rights, and habitually links the domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks. As in these other UDRP cases, in this case the Respondent has registered two domain names that are close variations of Complainantís CANCER TREATMENT CENTER OF AMERICA service mark. The Respondent has linked these domain names to websites that are likely to confuse the Internet user as to the distinction between the Complainantís and its services and the Respondentís goods and services, whatever they may be. The Respondent also uses the domain names in a manner that tarnishes the goodwill associated with the Complainant and its service mark, because the websites appear to be sponsored by the Complainant, but they "mouse trap" and annoy the Internet user, and they create a false and negative association between the Respondentís sites and the Complainant and its CANCER TREATMENT CENTERS OF AMERICA service mark.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Pursuant to the UDRP Policy, THE Complainant must convince the Panel of three elements if it wishes to have the domain names transferred. It is incumbent upon the Complainant to cumulatively show:

(i) that the domain names are identical or confusingly similar to a trademark in which it holds rights; and

(ii) that the Respondent has no rights or legitimate interests in the domain names; and

(iii) that the domain names were registered and used in bad faith.

These three elements are considered below.

A. Identical or Confusingly Similar

The Panel is of the opinion that the evidence provided by the Complainant supports a finding that the Complainant is the owner of the registered service mark CANCER TREATMENT CENTERS OF AMERICA and that the Complainant has rights in that mark.

While the domain names are not identical to the Complainantís CANCER TREATMENT CENTERS OF AMERICA mark, the Panel finds that they are confusingly similar. The test of confusion in comparing the words or marks at issue is from the standpoint of the average unwary consumer, looking at the marks in their totality, having an imperfect recollection of the former.

The domain name <cancertreatmentcenterofamerica.com> incorporates in whole the Complainantís registered CANCER TREATMENT CENTERS OF AMERICA mark and the only deviation is that the Respondent has deleted the letter "s" from the word "centers." Moreover, the <cancercenterofamerica.com> domain name merely differs from the service mark in that it deletes the word "treatment" as well as the letter "s."

The Panel adopts the finding in Net2phone Inc. v. Dynasty System SDN BHD, WIPO Case No. D2000-0679 wherein the Panel made the following statement: "It points out that the only significant difference between its registered trademarks "NET2PHONE" and <n2phone.com> is the absence of the letters "et" which it argues has "little effect" in distinguishing the marks which "compels a finding of confusing similarity."

The Panel agrees with the Complainant and its assertion that, quoting America Online Inc., v. Yeteck Communications, Inc., WIPO Case No. D2001-0055: "Precedent clearly supports the principle that the adaptation of a recognized trademark in a domain name by variation in spelling or by the deletion, addition or insertion of letters, words or acronyms does not escape a finding of confusing similarity."

And finally, it is relevant to quote Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698 wherein: "The elimination of the letter Ďsí between Ďguinnesí and ĎGuinnessí does not significantly affect the visual impression made by the domain name as compared with the mark, and does not affect the pronunciation of the domain name as compared with the mark. The Panel therefore concludes that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has prior exclusive rights."

As to the fact that the domain name <cancercenterofamerica.com> does not include the word "treatment," the Panel is of the opinion that, as the test for confusing similarity is one of an overall impression, the domain name is confusingly similar to the service mark CANCER TREATMENT CENTERS OF AMERICA. The Panel adopts the findings in Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031 wherein the mere deletion of the word "bank" was not an obstacle to a finding of confusing similarity.

Because the domain names refer to "CANCER TREATMENT CENTERS OF AMERICA," consumers are likely to believe that they refer to websites that concern the Complainantís products.

Given that the domain names are confusingly similar to the Complainantís registered service mark, the Panel is of the opinion that the Complainant has readily met the burden of proof as stated by paragraph 4(a)(i) of the UDRP Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the URDP Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain dame. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.

The Panel agrees with the Complainantís contention that the Respondent has no rights or legitimate interests in the domain names.

First, the fact that the Respondent uses the domain names to misdirect Internet traffic to search engines and a series of pop-up advertisements in order to collect advertising and click-through fees and to generate sales revenues is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the domain names.

The Panel relies on the findings in Yahoo! Inc., GeoCities, HotJobs.com, Ltd., and Launch Media, Inc. v. Henry Chan, (FA0306000162050, National Arbitration Forum July 16, 2003) and Yahoo! Inc. v. Web Master a/k/a MedGo, (FA 127717 National Arbitration Forum November 27, 2002) wherein it was found that the respondentís use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the Complainant, was not a bona fide offering of goods or services. See also Geoffrey, Inc. v. Toyrus.com, FA 150406 (National Arbitration Forum April 5, 2003) wherein it was held that the Respondentís use of the disputed domain name, a simple misspelling of the Complainantís mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name.

Second, the Panel agrees with the Complainant in that there is no evidence that Respondent has been commonly known by the domain names. In fact, since when typing in the domain names, the Internet user was automatically directed to four other sites or pop-up windows, namely (1) a search site, (2) a gambling window, (3) an advertisement window and (4) a purported "Search Results" window listing various links somewhat unrelated, it is the Panelís opinion that the Respondent has not been commonly known by the domain names.

Third, the Complainant asserts that the Respondentís failure to respond constitutes further evidence that the Respondent lacks rights or legitimate interests in the disputed domain names. In this regard, the Panel refers to its decision in Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648. The Panel is of the opinion that, once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue. This finding is supported by the various means which are available to a respondent under the URDP Policy to show legitimate right or interest, on a balance of probabilities.

Therefore, the Panel, relying on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein: "The Administrative Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the respondentís failure to respond to this administrative proceeding, that the complainant is correct in its assertion that the respondent has no rights or legitimate interest in the domain name" finds that the complainant has established prima facie that the respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy paragraph 4(a)(ii). See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221 wherein it was found that: "Respondentsí failure to respond can be construed as an admission that they have no legitimate interest in the domain names."

C. Registered and Used in Bad Faith

It is often quite difficult to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once the Complainant has presented some evidence pointing in that direction, it is then incumbent upon the Respondent to either respond or explain why its conduct should not be assimilated to bad faith.

The Panelís understanding of the Policy is that although the initial burden to prove the Respondentís bad faith in the registration or the use of the disputed domain name relies squarely on the shoulders of the Complainant and once it has done so, as it did in the present case, it is then incumbent upon the Respondent to either justify or explain its business conduct (if not to demonstrate the contrary). Failure to do so will, in some circumstances, enable the Panel to draw negative inferences.

In the present case, the Panel finds that, since Complainantís service mark CANCER TREATMENT CENTERS OF AMERICA is federally registered, it is very unlikely that when Respondent registered the domain names, it was not aware that it was infringing on Complainantís trademark rights (see e.g. Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Moreover, as stated by the Complainant, failure to perform a trademark search is evidence of bad faith. See Rubbermaid, Inc. v. Venture-Q, LLC, WIPO Case No. D2001-1361.

Furthermore, the Panel is of the opinion that the domain names are so obviously connected with Complainantís service mark and its services that its very use by someone with no connection with the Complainant suggests "opportunistic bad faith" (see Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Moreover, the Panel is of the opinion that the evidence, as submitted by the Complainant, tends to demonstrate that the Respondent registered the domain names with the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites and windows by creating a likelihood of confusion with Complainantís service mark and by using the goodwill and positive reputation attached to the Complainantís CANCER TREATMENT CENTERS OF AMERICA service mark. See Snapple Beverage Corp. v. Telmex Management Services, WIPO Case No. D2002-0114.

Additionally, the Respondentís registration of more than one domain name that is confusingly similar to the Complainantís service mark further supports the inference that Respondent knew of Complainantís mark and therefore, registered the domain names in bad faith. The Panel adopts such a view as it was expressed in Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.

Finally, the Panel greatly considers the fact that several UDRP complaints have been filed against the Respondent, and in every case, the Respondent did not reply to the complainantís contentions. These decisions tend to indicate a pattern by which the Respondent initially registers domain names comprising trademarks or variations of trademarks for which he has no rights, and then links the domain names to websites that directly compete with the owners of the trademarks or that tarnish the goodwill associated with the trademarks.

As in these other UDRP cases, in this case the Respondent has registered two domain names that are close variations of the Complainantís CANCER TREATMENT CENTER OF AMERICA service mark. The Respondent has linked these domain names to websites that are likely to confuse the Internet user as to the distinction between the Complainantís and its services and the Respondentís goods and services, whatever they may be. The Respondent also uses the domain names in a manner that tarnishes the goodwill associated with the Complainant and its service mark, because the websites appear to be sponsored by the Complainant, therefore creating a false and negative association between the Respondentís sites and the Complainant and its CANCER TREATMENT CENTERS OF AMERICA service mark.

In view of all the above, the Panel is of the opinion that the Complainant has discharged of its burden under Policy paragraph 4(a)(iii), and finds that the Respondent has registered and used the domain names in bad faith.

 

7. Decision

For the foregoing reasons, the Panel finds that:

- The domain names registered by the Respondent are confusingly similar to the trademark to which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the domain names; and

- The domain names have been registered and are being used by the Respondent in bad faith.

Accordingly, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the registration of the domain names <cancertreatmentcenterofamerica.com> and <cancercenterofamerica.com> be transferred to the Complainant.

 


 

Jacques A. Léger, Q.C.
Sole Panelist

Dated: September 18, 2003