WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clínica Corachán, S.A. v. Marketing Total S.A.
Case No. D2007-1662
1. The Parties
The Complainant is Clínica Corachán, S.A., of Barcelona, Spain, represented by Herrero & Asociados, of Madrid, Spain.
The Respondent is Marketing Total S.A., of West Indies, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <clinicacorachan.com> is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2007. On November 13, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On November 27, 2007, Capitoldomains, LLC 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 November 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2007.
The Center appointed Jeffrey D. Steinhardt as the sole panelist in this matter on January 5, 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.
The Complaint slightly exceeds the 5,000 word limit imposed by the Rules and Supplemental Rules paragraph 10(a), however the portions of the Complaint outlining the facts and grounds for relief are shorter than 5,000 words. See Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel, WIPO Case No. D2001-0907 (suggesting that “[t]he word limit referred to in the WIPO Supplemental Rules, Paragraph 10a), is only applicable to the description of grounds on which the Complaint is made”). Absent any Reply or objection by Respondent and in the interests of efficiency, the Panel renders this decision on the basis of the Complaint as submitted, without requesting amendment.
4. Factual Background
Complainant has several registered Spanish trademarks in connection with medical services, solicited as early as 1990, including the following:
Num. 2.325.092 CLINICA CORACHAN, in class 16.
Num. 2.325.093 CLINICA CORACHAN, in class 38.
Num. 2.325.094 CLINICA CORACHAN, in class 42.
Num. 2.413.411 CLINICA CORACHAN, in class 5.
Num. 2.413.412 CLINICA CORACHAN, in class 9.
Num. 2.413.413 CLINICA CORACHAN, in class 10.
Num. 2.413.414 CLINICA CORACHAN, in class 35.
Num. 2.413.415 CLINICA CORACHAN, in class 36.
Num. 2.413.416 CLINICA CORACHAN, in class 39.
Num. 2.413.417 CLINICA CORACHAN, in class 40.
Num. 2.413.418 CLINICA CORACHAN, in class 41.
Num. 2.547.106 CLINICA CORACHN, in classes 1, 3, 12, 37, 43, 44 and 45.
In 2000, Complainant brought a successful claim under the Rules on the basis of some of the same trademarks. Clínica Corachán, S.A. v. Fc Team Car. S.L., WIPO Case No. D2000-0723.
Complainant does not provide the date of registration for the disputed domain name <clinicacorachan.com>, however it appears to have been registered since at least March 2005. See “http://domain-history.domaintools.com/?q=clinicaCorachán.com&page=results”.
The website to which the disputed domain name resolves is still active. The Panel was unable to access earlier versions of the website because Respondent has inserted a robots.txt file on the website. See “http://web.archive.org/collections/web/faqs.html#exclusions” (website owners use robot.txt file to signal preference to exclude web crawlers such as those used by the Internet Archive).
Respondent has lost several claims under the Policy relating to Respondent’s conduct in registering domain names found to violate other parties’ trademarks. See, e.g., The Southern Company, Georgia Power Company and Gulf Power Company v. Marketing Total S.A., Keyword Marketing, Inc., and Domain Drop S.A., WIPO Case No. D2007-1048 (listing cases).
5. Parties’ Contentions
Complainant avers that its business, a private clinic offering a wide variety of medical services, has grown over a 75-year period and is well known in Barcelona and Cataluña under the name and mark “CLÍNICA CORACHÁN”. Complainant’s facility covers an area of 24.000 m2, with 122 bedrooms, 160 beds and 80 medical treatment rooms, employing a medical staff of more than 350 people.
Complainant’s attorneys aver that their client enjoys a leading reputation and submit substantial arguments respecting the legal implications of their client’s well-known trademarks.
Identical or Confusingly Similar to Complainant’s Trademark
Citing Panel decisions in both English and Spanish addressing confusing similarity, Complainant argues that when the gTLD suffix “.com” is omitted, its client’s trademarks and the disputed <clinicacorachan.com> domain name are identical.
No Rights or Legitimate Interests in Domain Name
Complainant alleges that Respondent has registered and used the domain name without legitimate right, license or authorization. Complainant avers that Respondent is a Caribbean-based marketing company and that Respondent’s website advertises medical services in Spain similar to and in competition with those offered by Complainant. Complainant appears to argue that Respondent does not offer or engage in medical services, therefore Respondent’s use in its domain name of “clínica” (the Spanish word for clinic) is not made in connection with a bona fide offering of goods or services, nor could it be a non-commercial or fair use of the trademark. The use of the domain name to advertise links to other medical services providers, Complainant argues, is inconsistent with any legitimate interest in using the name for a company based in the Caribbean. This conclusion is based upon various cited Panel decisions and the fact that, based upon Complainant’s “extensive” search of the Internet, the name “Clínica Corachán” otherwise uniquely refers to Complainant.
Registration and Use of Domain Name in Bad Faith
Complainant infers that Respondent knew of the trademarks before registering the disputed domain name. Complainant alleges that Respondent’s posting of links in the Spanish language, in connection with the well-known status of its client’s marks, establishes that Respondent knew of the marks and registered the domain name in bad faith, citing the decision in F. Hoffmann-La Roche AG v. Mildred Strupp, WIPO Case No. D2007-0609. Use of the name for link advertising presumably generates click-based revenues by diverting customers to Complainant’s competitors, therefore, Complainant continues, Respondent is using the disputed domain name in bad faith.
In conclusion, Complainant urges that this case is similar to a case decided in 2006 against Respondent. The Panel in HBH, Limited Partnership. v. Marketing Total, S.A., WIPO Case No. D2006–1452, ordered transfer on the basis that the domain name in issue was used to divert customers to competitors of the complainant. Complainant here seeks the same result in this case.
Respondent did not submit a reply to the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Complainant must establish these elements even if the respondent does not reply. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Reply, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to Complainant’s trademarks.
The existence of Complainant’s trademarks under Spanish law is sufficient to support this ruling, without reference to whether Complainant’s marks are well known. See Policy paragraph 4(a)(i). Panels disregard the “.com” suffix in evaluating whether marks are identical, Myrurgia, S.A. v. Andrés Iragorri, WIPO Case No. D2001-1468, or confusingly similar. E.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
Removing the suffix, the Panel finds that Complainant’s trademarks and the disputed domain name are identical.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) the use of the “domain name in connection with a bona fide offering of goods and services”; (2) an entity being commonly known by the domain name; or (3) the making of “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers . . .”. Policy paragraphs 4(c)(i)–(iii).
Complainant must show a prima facie case proving the negative that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no Reply. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondent was not commonly known by the disputed domain name, did not offer services related to Complainant’s clinic, and that Respondent had no license to use the trademarks. In the absence of a Reply, the Panel accepts these undisputed facts as true and the Panel finds there is no bona fide offering of goods or services by Respondent.
The Panel also infers that Respondent receives revenues from the activity of users who click on the links in advertisements for medical services placed on the website to which the disputed domain name resolves. E.g., The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 (“[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit . . . in consideration of directing traffic to that site” (citing COMSAT Corporation v. Ronald Isaacs, WIPO Case No. D2004-1082)). See Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626. Since Respondent posts sponsored link advertising, the Panel further finds that Respondent is not making a legitimate non-commercial or fair use of the domain name.
Therefore, the Panel concludes that the second element of paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
Both bad faith registration and bad faith use must be established under the third element of paragraph 4(a) of the Policy. E.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy paragraph 4(b)(iv). Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether there is no response to the Complaint, concealment of identity, and a lack of conceivable good faith uses for the domain name. Telstra Corporation Limited supra.
Complainant contends that Respondent’s posting of links in the Spanish language, in combination with the internationally well-known status of its client’s marks, establishes that Respondent knew of the marks and registered the domain name in bad faith. Complainant notes that Respondent was found similarly to have registered a domain name in bad faith in the case of HBH, Limited Partnership supra.
The Panel has visited the website to which the domain name directs traffic. Whether or not the link advertisements first appear predominantly in Spanish or in English (or include other languages) changes depending on the user’s browser language setting. Therefore, the links to Spanish-language websites are not evidence of Respondent’s prior knowledge of the existence of Complainant’s trademarks.
The Panel finds that CLÍNICA CORACHÁN is a well-known trademark in Spain and Cataluña. The clinic enjoys considerable prestige in its field and receives thousands of patients each year (in 2004, according to the Complaint, there were over 50,000 visits and over 17,000 admissions). Indeed, Dr. Corachán, the clinic’s founder and namesake, was well known: he was Minister of the Generalitat of Cataluña in 1935. Clínica Corachán, S.A. supra. The question remains whether Respondent knew of the clinic’s name before registration, thus supporting a finding of bad faith.
Complainant states that foreign patients use the clinic for specialist treatment, though the extent of that activity is unclear. It is not necessary, and the Panel declines, to rule on whether Complainant enjoys sufficient international renown to constitute a well-known mark outside of Spain and Cataluña.
Several other circumstances strongly suggest that Respondent knew of Complainant’s pre-existing trademarks before registering the domain name. For instance, Respondent refrained from responding to the Complaint. Respondent also exploits the fame of the CLÍNICA CORACHÁN trademark for commercial gain and is clearly not making a fair use of the name.
Respondent deliberately prevents the viewing of archives of its website by employing robot.txt files. Respondent is deeply involved in the registration of domain names. Respondent apparently owns over 150,000 domain names and is associated with over 200,000 names. “http://whois.domaintools.com/clinicacorachan.com”.
These activities alone might not be conclusive in every case. In the case of this Respondent, however, the Panel concludes that Respondent’s activities add up to a well-established pattern of violating others’ rights.
It is significant to the Panel’s conclusions that in the past year, Respondent Marketing Total S.A. has been ruled by sixteen other WIPO Panels to have violated the rights of others. In each case, Respondent chose not to file a response. In every case, after careful consideration, the Panels ordered transfer of the disputed domain names.
Like the Panel in Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236, this Panel finds “that Respondent most likely was aware of Complainant’s trademark when it registered the disputed domain name. It seems [highly] unlikely . . . that Respondent would have chosen this name randomly”. It is especially unlikely in this case, since the mark CLÍNICA CORACHÁN has been uniquely associated with Complainant’s Barcelona clinic.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
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 <clinicacorachan.com> be transferred to the Complainant.
Jeffrey D. Steinhardt
Dated: January 19, 2008