WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Therapro, Inc. v. Administrator, Domain/ Therapro
Case No. D2006-0883
1. The Parties
The Complainant is Therapro, Inc., of Massachusetts, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
The Respondent is Administrator, Domain/ Therapro, of Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <therapro.com> (the “Domain Name”) is registered with Nameview Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on July 11, 2006, and in hard copy on July 14, 2006. The Center transmitted its request for registrar verification to the Registrar on July 12 and July 21, 2006. The Registrar replied on July 24, 2006, confirming that it had received an electronic copy of the Complaint, that it was the Registrar of the Domain Name, that the Domain Name would remain locked during this proceeding, and that the registration agreement was in English and contained a submission to the jurisdiction at its principal office; and providing the contact details for the Respondent on its Whois database; but stating that the entity mentioned in the Complaint was not the registrant of the Domain Name.
The Center notified the Complainant on August 9, 2006 that the Complaint was formally deficient in incorrectly naming the Respondent and invited the Complainant to file an amendment rectifying this deficiency. The Complainant filed an amendment to the Complaint by email on August 14, 2006 and in hard copy on August 17, 2006, amending the name of the Respondent to that shown in the Registrar’s Whois database. The Complainant stated that the Respondent had caused its name and address to be changed in the database since the Complaint was filed on July 11, 2006, and noted that the new name and address provided by the Respondent were the Complainant’s own name and address. These circumstances emphasize that it is important for registrars to lock disputed domain names on receipt of the complaint and to respond promptly to verification requests, in order to ensure the efficient operation of the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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 Complaint and the Amendment to the Complaint to the Respondent, and the proceedings commenced on August 17, 2006. The notification was sent by courier and email to all addresses in the previous and current contact details provided in respect of the registration in the Registrar’s Whois database. Both the hard copy and electronic communications were successfully delivered to the specified addresses.
In accordance with the Rules, paragraph 5(a), the due date for Response was September 6, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2006.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 18, 2006. The Panel submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant has supplied rehabilitation, occupational, speech and physical therapeutic aids under the name “THERAPRO” for over twenty years. The Complainant markets its products through a mail order catalog under the name “THERAPRO” of which it sent out over 75,000 copies in 2005. The Complainant’s website at <theraproducts.com> receives over 2200 hits per month. The Complainant shipped 20,000 packages to its customers in 2005. The Complainant has a pending application to register “THERAPRO” as a trademark in the United States of America.
The Domain Name was originally registered in 1996 by Hospitera Joint Stock Company of Belgium (“Hospitera”) which supplied surgical instruments under the name “THERAPRO”, but this company is no longer in business. The Domain Name was subsequently registered in the name of the Respondent on September 4, 2001; it is not clear whether the Respondent effected a new registration or acquired Hospitera’s registration.
The Respondent has caused the Domain Name to be pointed to a web site which provides numerous links to web sites of third parties offering therapeutic aids and related products which compete with those of the Complainant. The Respondent’s web page also generates “pop up” and “pop under” advertisements for various unrelated third party web sites and products.
5. Parties’ Contentions
The Complainant contends that it has acquired substantial goodwill under the “THERAPRO” name as a result of its use of this name for over twenty years in relation to its therapeutic aids. According to the Complainant, this name has acquired brand recognition and a secondary meaning in the minds of the consuming public as identifying the products and services of the Complainant. In these circumstances, the Complainant submits that it has unregistered rights in the mark “THERAPRO” which are recognized under the first requirement of the Policy.
The Complainant points out that the Domain Name is identical to this mark, apart from the generic top level domain suffix which may be discounted for the purposes of the Policy.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name or any corresponding name. The Complainant notes that the Respondent only changed its name in the registration details for the Domain Name to reflect the Complainant’s name after notice of the dispute, and that previously it relied on the Registrar’s Identity Shield service to conceal its identity. The Complainant alleges that the Respondent did not use the Domain Name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute, and has not made a bona fide non-commercial or fair use of the Domain Name. On the contrary, according to the Complainant, the Respondent is using the Domain Name to divert Internet users seeking the Complainant’s web site to the Respondent’s web site, and thereby to obtain click-through commissions when Internet users are tempted to follow the links provided on the web site or pop up or under advertisements to third party web sites. The Complainant submits that this is not a bona fide offering of goods or services or a legitimate non-commercial or fair use.
Finally, the Complainant contends that the Respondent registered and is using the Domain Name in bad faith, in particular to divert Internet users seeking the Complainant’s web site and obtain click-through commissions as described above. The Complainant points out that the Respondent must have been aware of the Complainant’s rights since the Domain Name is identical to the Complainant’s mark and the Respondent’s web site promotes web sites offering products competing with those supplied by the Complainant. The Complainant submits that in the context of the third requirement, “registered” covers registration of the Domain Name on its acquisition by the Respondent; and that this was in bad faith even if the original registration of the Domain Name by Hospitera was in good faith.
The Complainant requests that the Domain Name be transferred to it.
As mentioned above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and is being used in bad faith. These requirements will be considered in turn.
A. Identical or Confusingly Similarity
Although “THERAPRO” has a descriptive connotation, it is a made-up word which is not generic or in ordinary use as a descriptive term. Rights are recognized even in descriptive terms if they have acquired a secondary meaning under the federal law of the United States of America and the laws of its individual states, including Massachusetts where the Complainant is based. The Panel is satisfied on the evidence that “THERAPRO” has acquired a secondary meaning as identifying the Complainant’s therapeutic aids by virtue of the Complainant’s use of this mark in relation to these products for over twenty years. It is well-recognized that unregistered rights in marks acquired through use qualify under the first requirement of the Policy. The Panel is satisfied that the Complainant has such rights in the mark “THERAPRO”.
It is also well-established that the generic top level domain suffix is to be discounted in comparing a domain name with a complainant’s mark under the first requirement of the Policy. On this basis the Domain Name is identical to the Complainant’s mark. At all events, it is obviously confusingly similar to the Complainant’s mark.
The Panel concludes that the first requirement of the Policy is satisfied.
B. Rights or Legitimate Interests
On the undisputed evidence the only use of the Domain Name or any corresponding name which has been made by the Respondent has been for a web site containing links to third party web sites offering therapeutic aids and related products competing with the Complainant’s products. The Panel is satisfied that this use of the Domain Name is liable to divert internet users seeking the Complainant’s web site to the Respondent’s web site. The Panel also considers it likely that at least some of those Internet users are tempted to follow the links provided on the Respondent’s web site to the web sites of the Complainant’s competitors, and that the Respondent thereby obtains click-through commissions in accordance with common practice on the Internet.
Such use does not constitute a bona fide offering of goods or services or legitimate non-commercial or fair use which may give rise to rights or legitimate interests of the Respondent within the meaning of paragraphs 4(a)(ii) and 4(c) of the Policy: see e.g. Humana Inc. v. Henry Tsung, WIPO Case No. D2005-0221.
The Panel is satisfied on the evidence that the Respondent does not have rights or legitimate interests in respect of the Domain Name and that the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
It is clear from the wording of the Policy and confirmed by numerous decisions that its third requirement is only satisfied if the disputed domain name both was registered and is being used in bad faith. On the other hand, the Policy indicates that the term “registered” in this context includes registration on acquisition by the present owner, and is not limited to the original registration of the domain name. In particular, paragraph 4(b)(i) of the Policy specifies that circumstances which may be evidence of registration and use in bad faith include circumstances indicating that the current registrant has registered or acquired the domain name primarily for the purpose of selling it to the complainant for valuable consideration in excess of its costs.
The view that “registered” for the purpose of the third requirement of the Policy covers registration on acquisition is also supported by a number of decisions, such as in Motorola Inc. v NewGate Internet, Inc., WIPO Case No. D2000-0079; BWR Resources Ltd v Waitomo Adventures Ltd, WIPO Case No. D2000-0861; Dixons Group Plc v. Mr. Abu Abdullah, WIPO Case No.D2000-1406; Ideenhaus Kommunikationsagentur GmbH v. Ideenhaus GmbH, WIPO Case No. D2004-0016; and MC Enterprises v. Mark Segal (Namegiant.com), WIPO Case No. D2005-1270.
The Panel concludes that it is appropriate to consider whether the Respondent acquired and is using the Domain Name in bad faith, and that the probability that the Domain Name was originally registered in good faith by Hospitera does not prevent the third requirement of the Policy from being satisfied.
As mentioned above, the Panel is satisfied that the Domain Name is being used by the Respondent to divert Internet users seeking the Complainant’s web site by confusion with the Complainant’s mark to the Respondent’s web site, in order to obtain commercial gain in the form of click-through commissions. In line with paragraph 4(b)(iv) of the Policy this is evidence that the Domain Name was acquired and is being used by the Respondent in bad faith.
Moreover, the fact that the links on the Respondent’s web site are to web sites which promote and sell products which compete with those of the Complainant shows that the Respondent is deliberately taking advantage of the Complainant’s goodwill under the “THERAPRO” mark. This exploitation of the Complainant’s mark constitutes use of the Domain Name in bad faith; and acquisition of the Domain Name by the Respondent in bad faith for this purpose can be inferred. The Respondent’s efforts to conceal its identity and to obstruct this proceeding by changing the registration details to the Complainant’s name and address are further evidence of bad faith.
In all the circumstances, the Panel concludes that the Domain Name was registered (within the meaning of paragraph 4(a)(iii) of the Policy) and is being used in bad faith. Accordingly, the third requirement of the Policy is satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <therapro.com> be transferred to the Complainant.
Dated: October 2, 2006