The Complainant is Scott and White Memorial Hospital and Scott, Sherwood, and Brindley Foundation, of Temple, Texas, United States of America, represented by DuBois, Bryant, Campbell & Schwartz LLP, United States of America.
The Respondent is Bao Shui Chen, of Shanghai, China.
The disputed domain name <scottandwhite.com> is registered with Rebel.com Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2009. On February 9, 2009, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On February 12, 2009, Rebel.com Corp. 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” or “UDRP”), 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 February 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 9, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on March17, 2009. 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.
1 Two doctors, Arthur C. Scott and Raleigh R. White Jr., founded a medical practice in Temple, Texas in 1897 under the name Scott & White.
2 Scott & White is now a multi-specialty medical practice with more than 600 physicians located in Temple and in regional clinics throughout Texas.
3 In 1904 they also established a hospital, Temple Sanitarium, which in 1922 changed name to the Scott & White Memorial Hospital. In 1950, it underwent a further name change to that of the Complainant.
4 The Complainant is independently ranked as one of the top 15 teaching hospitals in the United States and is amongst the top 100 US hospitals for cardiovascular care.
5 The Complainant has not authorised the Respondent to use the trade mark, nor to register any domain name incorporating the trade mark.
6 The disputed domain name was first registered in the name of a proxy service company, Whois Identity Shield.
7 A pre-Complaint letter of demand from the Complainant to WhoIs Identity Shield resulted in transfer of the disputed domain name to Respondent, the beneficial owner, on January 9, 2009.
8 A portal website corresponding with the disputed domain name carried links to medical and healthcare services unconnected with the Complainant.
9 The Complainant petitions the Panel to order transfer of the disputed domain name from the Respondent to the Complainant.
The Complainant asserts trade mark rights in the name SCOTT & WHITE and states that the disputed domain name is legally identical to the trade mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
The detail of the Complaint is included where necessary in Part 6 of this Decision.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 4(a) of the Policy, a complainant must prove that:
(i) the domain name is identical or confusingly similar to a trade mark 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 domain name has been registered and is being used in bad faith.
The Complaint references certain registered and pending trade mark applications however on the evidence it is clear that the words SCOTT & WHITE have been used in a trade mark sense continuously since 1904 and enjoy protection as a common law trade mark by virtue of long term use and reputation1. The evidence shows that the Complainant is widely regarded as a leader in its field with a reputation which extends well outside Texas2. The Panel has no doubt that the Complainant has rights in the trade mark SCOTT & WHITE.
The Panel accepts the Complainant's submission that the disputed domain name is legally identical to the trade mark SCOTT & WHITE. The gTLD, “.com”, can be ignored as trivial in making the comparison of domain name with trade mark3. Additionally, the word “and” as used in the domain name is a simple substitution for the ampersand symbol in the trade mark and does nothing to dispel confusion4. Moreover, an ampersand symbol cannot be used in URLs and so Internet users are even more prone to seeing the word “and” and the symbol “&” as interchangeable.
The Panel finds that the Complainant has satisfied the first element of the Policy.
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests5.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The WhoIs data does not support any conclusion here that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights in the name, registered or not. The Complainant has stated there to be no relationship between it and the Respondent.
The Respondent does not appear to be using, nor has it presented evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent was (and, to a lesser extent, still is) using the disputed domain name to re-direct Internet users to commercial websites that promote the services of competitors in the same business as the Complainant. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name6.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainant has satisfied the second limb of the Policy.
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about paragraphs 4(b)(i)-(iv) of the Policy is that they are cases of both registration and use in bad faith. The Complaint has not explicitly relied on any one of those scenarios, although it uses the language of paragraph 4(b)(iii). On the facts, the Panel takes the view that the Respondent's conduct might be examined under paragraphs 4(b)(ii) or (iv).
Clearly, were not <scottandwhite.com> taken by the Respondent, it would be a desirable domain name for the Complainant's business. In terms of paragraph 4(b)(ii), it could readily be said that the Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name. The Complainant provides evidence that the Respondent has been previously engaged in such conduct. The Complaint states:
There are at least 8 cases in the UDRP case records involving Respondent for claims of cybersquatting and, all of them, ordered Respondent to transfer the domain name to the owner. See MLA Multibrand Holdings, Inc., BCBG Max Azria Group Inc. v. Chen Bao Shui/ Privacyprotect.org/ Laksh Internet Solutions Private Limited, WIPO Case No. D2008-0952; Crédit Industriel et Commercial S.A. v. Beijinghongshanhushuizushangmaoyouxiangongsi, WIPO Case No. D2007-1818; Deveraux Deloitte v. Bao Shui Chen, WIPO Case No. D2007-1160; Cis Bio International v. N.A. Bao Shui Chen, WIPO Case No. D2007-1191; Weyerhaeuser Company v. Chen Bao Shui, WIPO Case No. D2007-0969; The Ford Foundation v. Chen Bao Shui, WIPO Case No. D2007-0862; SmithKline Beecham PLC v. Chen Bao Shui, NAF Claim No. FA989685; and Dillard's, Inc., Dillard's International, Inc. v. Chen Bao Shui, WIPO Case No. D2007-0520.
The Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory7. Accordingly, it finds that the Respondent has engaged in a pattern of abusive conduct within the meaning of paragraph 4(b)(ii) and so finds bad faith registration and use pursuant to that subparagraph of the Policy.
Moreover, in terms of paragraph 4(b)(iv) of the Policy, the Panel has already found the domain name to be confusingly similar to the trade mark SCOTT & WHITE. The Panel finds that the likelihood of confusion as to source is therefore highly likely.
Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is a finding that it is more likely than not such an intention existed; absolute proof is not required. The links in question are principally to medical and healthcare services unconnected with the Complainant's services. The Complainant allege that the Respondent was most likely benefitting from pay-per-click revenue resulting from the likely confusion. It is abundantly clear that use of a domain name in this same manner is very frequently for commercial gain8 and can also be inferred in this case.
The Panel finds that the Respondent's behaviour also falls under paragraph 4(b)(iv) of the Policy, providing a further basis for the finding that the domain name was used and registered in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third and final limb 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, <scottandwhite.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: March 22, 2009
1 It is well established that a UDRP complainant need not have a trade mark registered with a national authority if it can show unregistered trade mark rights garnered through use and reputation. See SeekAmerica Networks Inc. v.Tariq Masood and Solo Signs, WIPO Case No. D2000-0131 finding that the Rules do not require that the complainant's trade mark or service mark be registered by a government authority or agency for such rights to exist; see also Great Plains Metromall, LLC v. Gene Creach, NAF Claim No. FA 97044 stating that “The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”
The Complainant here has used the trade mark for over 100 years. At the time the Complaint was filed, healthcare services offered under the trade mark included Allergy and Immunology, Bariatric Surgery, Cardiology, Colorectal Surgery, Complementary and Alternative Medicine, Dentistry, Dermatology, Endocrinology, Executive Health, Family Medicine, Gastroenterology, General Internal Medicine, General Surgery, Genetics, Hematology/Oncology, Infectious Disease, Interventional Radiology, Nephrology, Neurology, Neuropsychology, Neurosurgery, Obstetrics/Gynecology, Occupational Medicine, Ophthalmology, Oral Surgery, Orthopedics, Otolaryngology – Head and Neck Surgery, Pathology, Pediatric Surgery, Physical Medicine and Rehabilitation, Plastic Surgery, Podiatric Medicine and Surgery, Psychiatry, Pulmonary/Critical Care, Radiology, Reproductive Endocrinology and Infertility, Rheumatology, Surgical Oncology, Travel Medicine, and Urology.
2 See Tuxedos By Rose v. Hector Nunez, NAF Claim No. FA 95248 finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established; see also Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168 stating that “[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”
3 See, for example, Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. FA 153545 finding that “The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”
4 See, Villeroy & Boch AG v. Whois Data Shield/Hong Kong Names LLC., WIPO Case No. D2008-1300 holding that use of the word “and” between the names “villeroy” and “boch” did not distinguish the <villeroyandboch.com> domain name from the VILLEROY & BOCH mark; see also Reece & Nichols Realtors, Inc. v. Texas International Property Associates, WIPO Case No. D2008-0494 for the same proposition.
5 See, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. FA741828; AOL LLC v. Jordan Gerberg, NAF Claim No. FA780200.
6 See, for example, Bank of America Corporation v. Azra Khan, NAF Claim No. FA124515, finding that the respondent's diversionary use of the domain name to <magazines.com> was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also MEDIATIS S.A. v. Packalo S.A.RL. Cyberger and Stan Virgiliu, WIPO Case No. D2007-0312, stating that “The website to which the domain name resolved, although active, only consisted in a parking page, hosted by Sedo and containing sponsored links to competitors of Complainant. This use does not qualify as a bona fide offering of goods or services. Neither does it qualify as a non-commercial or fair use of the domain name”.
7 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Claim No. FA95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the complaint.”).
8 See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.magazines.com” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant's mark to profit in the form of commissions by linking of the Ticketsnow.com Affiliate Program”.); Yahoo! Inc. v. DFI Inc., NAF Claim No. FA147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Claim No. FA125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).