WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Baxter International Inc. v. Whois Privacy Inc.
Case No. D2007-1654
1. The Parties
The Complainant is Baxter International Inc., Deerfield, Illinois, United States of America, represented by Dineff Trademark Law Limited, Chicago, Illinois, United States of America.
The Respondent is Whois Privacy Inc., Georgetown Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is <baxterhealthcare.com> registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2007. On November 19, 2007, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On November 21, 2007 CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 26, 2007. The Center verified that the Complaint together with the amendment to 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 December 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 28, 2007.
The Center appointed John Katz QC as the sole panelist in this matter on January 9, 2008. 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 is a company incorporated in the United States of America on August 9, 1974. It is a well known global heathcare company operating domestically within the United States and in a number of other countries internationally. It provides healthcare professionals and their patients with treatment of complex medical conditions. It is active in the field of pharmaceuticals and biotechnology and develops and markets medical devices, medical treatments, pharmaceuticals and services related thereto.
The Complainant owns various trademarks which are registered in the United States and in a number of countries worldwide. It currently owns 8 registered trademarks for the mark BAXTER in the United States and 58 in 27 countries outside the United States. These are disclosed in Annex 3 to the Complaint. These overseas trademark registrations range as broadly as countries such as Canada, Cuba, Egypt, Indonesia, Nicaragua, Singapore, Switzerland amongst others. The registered owner in a number of these countries differs on occasions but no doubt links back to the ultimate parent company in the United States.
The Complainant has also registered either in its own name or through its associates no less than 130 domain names containing equivalents for the mark BAXTER. The Complainant has put in evidence as Annex 5 a list of the domain names and these include <baxter-heath-care.com>, <baxterhealth.com>, <baxterhealthcare.net>. Some of these domain names are active and direct any user to the Complainant’s main website “www.baxter.com”.
The Complainant has spent a considerable sum of money on advertising and promoting the mark BAXTER throughout the world and has established a considerable reputation and concomitant goodwill in its name.
The Complainant in 2006 had revenue of $10.4 billion and employed some 45,000 people worldwide.
5. Parties’ Contentions
The Complainant contends that by virtue of its worldwide operations, its advertising expenditure, its use of the trademarks in disparate jurisdictions worldwide and its various domain name registrations that it has established an international reputation and concomitant goodwill in the mark BAXTER.
The Complainant further contends that as a result of its activities going back many years beginning with its first use of the mark BAXTER in commerce in the United States in 1929 that it has established goodwill to such degree that the mark is now to be regarded as a famous mark. It contends that its mark is clearly distinctive and famous and that the mark BAXTER alone, and at least in connection with healthcare pharmaceutical products and services would come to connote the Complainant as a result of which the mark BAXTER has become an extraordinarily valuable asset of the Complainant.
The Respondent has defaulted and has therefore not put before the Panel any evidence. Nor is there any evidence that the Complainant has sent a letter before action to the Respondent to which the Respondent had responded.
Nevertheless, some insight into the activities of the Respondent can be gained from accessing its website via the disputed domain name.
The front screen of the Respondent’s website appears to have varied since the screens originally put in evidence by the Complainant. Nevertheless, the front screen clearly proclaims <baxterhealthcare.com> and allows a viewer to click on a number of options described as Healthcare, Medical Services, Healthcare Providers, Healthcare Jobs, Healthcare System and Healthcare Services. A number of other options are also provided for.
When some of these options are selected they themselves contain jump links to other sites offering health or health related products and services in addition to some that are not health or health services related.
6. Discussion and Findings
The Policy adopted by ICANN is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its Complaint. The expectation is that the Complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The Respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Respondent’s domain name has been registered and is being used in bad faith.
Each of three elements must be established by a Complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant must establish that it has rights either at common law or pursuant to registrations to trademarks or service marks.
The Complainant has registered trademarks in a number of jurisdictions sufficient to satisfy the Panel that it clearly has rights to the mark BAXTER. Its domain names include a variety of descriptive additions to the mark BAXTER which descriptions clearly serve to signify the type of activity with which the Complainant’s activities are related.
The Complainant also relies upon its established goodwill in the mark BAXTER. Whether that be via or derivative of the trademark registrations or what would clearly be common law rights does not require to be determined. Clearly the Complainant has significant rights in the mark BAXTER.
There would be no room for argument but that the Complainant has established and continues to enjoy protectable goodwill in the name and mark BAXTER. It is not necessary to cite authority for the proposition. The Complainant also contends that the addition to the mark BAXTER of the descriptive words “health” and “care” whether alone or in combination does nothing but add a generic descriptor to the widely known mark and in particular a descriptor that fortuitously aptly describes the nature of the Complainant’s business. The addition of a generic or descriptive term to a distinctive mark cannot be used to distinguish the disputed domain name from the Complainant’s mark. The Complainant has cited a number of panelists’ decisions to support its contention. This Panel readily accepts the principles.
The disputed domain name is not identical to the Complainant’s mark. The Complainant must therefore establish that it is confusingly similar.
Here again the Complainant cites a number of panelists’ decisions. Given that the descriptive words so aptly capture the essence of the Complainant’s business it must be accepted that the addition of the generic description “healthcare” cannot serve to distinguish the disputed domain name from the Complainant’s mark.
Moreover it is noted that a google search simply of the name “baxter” immediately discloses as the priority hit the Complainant. Other subsidiary hits include the Complainant’s English associate company known as “baxterhealthcare-uk” with the website “wwww.baxterhealthcare.co.uk”.
On a direct comparison between the disputed domain name and the Complainant’s mark, there is a clear likehood of confusion. The Panel accordingly has no hesitation in finding that the disputed domain name and the Complainant’s mark are confusingly similar and that is all the Complainant needs to establish.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to any of the trademarks in suit thereby justifying a proprietory right to the mark.
Under paragraph 4(a)(ii) a Respondent can justify its registration of the disputed domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate non commercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that that the Respondent has no legitimate rights or can claim none.
The Respondent has no obvious link with the Complainant and there is no basis to assume it has any other legitimate connection with the mark BAXTER but is prepared to trade off the goodwill associated with it.
Nor is there any evidence of bona fide right or interest that the Respondent may reasonably claim to the disputed domain name, whether by prior right, legitimate use, genuine connection with its own name or business or otherwise.
There is no evidence that the Respondent has any trademark registration for the words or marks “Baxter” or “Baxterhealthcare” or that it has ever used any of these words or marks to identify its business or activities. It clearly has no licence or authority from the Complainant.
Having regard to the screens which appear when accessing the Respondent’s website the inference is irresistible that the Respondent has no separate or independent business or interest in the disputed domain name other than to use it casually as providing a link to other websites. Whether this is done on a click per view or similar basis with resultant fees and advertising revenue being received by the Respondent is not clear. Nevertheless, the website provides no indication whatsoever of any independent business activity by the Respondent with which it is directly related in the health care industry.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the name be registered and used in bad faith. As has previously been said in other panelists’ decisions together with earlier decisions of this Panelist, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
Even without the quantity of evidence put forward by the Complainant the Panel accepts that in the context of health care the Complainant can be regarded as having a worldwide reputation and concomitant goodwill. The name BAXTER in conjunction with healthcare would connote to any person the Complainant and its business activities.
The Complainant has also provided abundant evidence which can be taken into account together with the information gleaned from its own website and those of its overseas associates to show that the Respondent is variously known as “Baxter” and “Baxterhealthcare” (whether as a composite word/mark or not).
There is no basis to assume nor to draw any inference that the Respondent is known either as “Baxter” or “Baxterhealthcare”.
The only inference to draw is that the Respondent has fortuitously managed to register a domain name in a form that somehow escaped the Complainant when it registered for protective purposes some 128 domain names. That the Complainant missed this particular one is perhaps unfortunate but that does not entitle the Respondent to take advantage of that and to register the domain name for itself. In doing so the Respondent’s activities can be seen as purely opportunistic.
As previously indicated in an earlier section of this Decision, it can reasonably be assumed that the Respondent receives some payment on a pay per view or pay per click or similar basis when any person accesses the Respondent’s website. This is normally the only basis upon which such websites exist and survive. Such activities have long been held in other panelists’ decisions including earlier decisions of this Panel to be wrongful as involving what is little more than “free-loading” on the established goodwill of a complainant.
On the assumption that the Respondent does derive revenue by this means it must follow that the domain name was registered and is being used in bad faith. But even if the Respondent does not acquire revenue by this means it is also clear from earlier panelists’ decisions including decisions of this Panel that a website such as this constitutes registration and use in bad faith, even simply by virtue of it acting as a blocking mechanism.
A further area of concern is that the Respondent describes itself in the whois database as “Whois Privacy Inc.”. Whether or not the Respondent is purporting to be (or is in fact making use) of a privacy service, the use of the term “whois” by the Respondent in its stated name tends to suggest a link with the official Whois database even though no such link is apparent.
Notwithstanding the default by the Respondent it is difficult to comprehend what facts and matters might be set up by this Respondent to justify its registration and use in good faith.
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
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 <baxterhealthcare.com> be transferred to the Complainant.
John Katz QC
Dated: January 23, 2008