WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
University of Pittsburgh Medical Center and UPMC Passavant v. Texas International Property Associates
Case No. D2008-0927
1. The Parties
The Complainants are the University of Pittsburgh Medical Center and UPMC Passavant (hereinafter referred to collectively as “the Complainant”), United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is Texas International Property Associates, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <upmcpassavant.com>, is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2008. On June 19, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On June 19, 2008, Compana LLC 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 July 7, 2008. 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 July 9, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2008. The Response was filed with the Center on July 29, 2008.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 7, 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 United States of America organization that owns a valid United States Patent and Trademark Office (“USPTO”) registration for the service mark UPMC (Registration No. 2,174,963; July 21, 1998) in relation to educational, healthcare and medical research services. The Complainant also owns and uses the service mark PASSAVANT.
The Respondent is the owner of the disputed domain name <upmcpassavant.com>, and the record of registration is dated May 2, 2005.
5. Parties' Contentions
The Complainant owns a USPTO registration for the service mark UPMC. It also owns the service mark PASSAVANT.
The Complainant owns the domain name <upmc.com> through which, among other things, it promotes and advertises its educational, healthcare and medical research services under its service marks.
The disputed domain name is confusingly similar to the Complainant's service marks, because that name is simply a combination of the two marks.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been authorized by the Complainant to use its marks. There is no evidence that the Respondent has prepared to use the dispute domain name in a bona fide offering of goods or services. The Respondent is making neither a noncommercial nor fair use of the disputed domain name, as the Respondent gains revenues from links found at the web site connected with the name.
The Respondent registered and is using the disputed domain name in bad faith. The Respondent has a propensity to register and use domain names in bad faith as evidenced by the many UDRP cases filed against it. The Respondent registered the disputed domain name with the bad faith intention to take advantage of the Complainant's famous service marks. The Respondent is using the disputed domain name for its commercial advantage by attracting Internet users and misleading them as to the Complainant's affiliation with the web site found at the name.
The Complainant wrote the Respondent a letter requesting that it immediately deactivate the web site connected with the disputed domain name and transfer the name to the Complainant. The Respondent promised to reply to the substance of the Complainant's letter, but never did.
The Respondent received from the Complainant a request for transfer of the disputed domain name.
Without concession to the validity of the elements pertaining to Policy paragraph 4(a) in this case, the Respondent agrees that the disputed domain name should be transferred to the Complainant.
6. Discussion and Findings
Pursuant to paragraphs 4(a)(i) through (iii) of the Policy, the Complainant may prevail in these proceedings and gain transfer of the disputed domain name, <upmcpassavant.com>, providing that the Complainant can show that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name was registered and is being used by the Respondent in bad faith.
The Panel finds that the Respondent has acceded to the Complainant's demand that all rights in the disputed domain name, <upmcpassavant.com>, be transferred to the Complainant. Since there is no evidence in the record that Respondent's offer is not genuine, the Panel determines that it would be appropriate and expeditious in this matter to order an immediate transfer of the domain name in question, without the consideration of the parties' contentions or as would be required otherwise by paragraph 4(a) of the Policy. See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 (“…a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer.”); and Mary Frances Accessories, Inc. v. The Shoe Salon, NAF Case No. FA528458.
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 <upmcpassavant.com> be transferred to the Complainant.
Dennis A. Foster
Dated: August 21, 2008