Complainant is WebMD LLC, of New York, New York, United States of America, represented by Wilmer Cutler Pickering Hale and Dorr LLP, United States of America.
Respondent is Vittaria.com, Inc. of Beverly Hills, California, United States of America.
The disputed domain name <webmdpet.com> is registered with Intercosmos Media Group d/b/a directNIC.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2009. On October 23, 2009, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain name. Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response on October 24, 2009, confirming that Respondent is listed as the registrant providing the contact details. Complainant filed an amendment to the Complaint. 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” 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 Respondent of the Complaint, and the proceedings commenced on October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009. The Response was filed with the Center on November 16, 2009.
The Center appointed Mark Partridge as the sole panelist in this matter on November 30, 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.
Complainant is an online medical information business which has used the name and mark WEBMD since 1998. Complainant owns federal registrations for the mark, including United States Trademark Registration Number 2,349,285, for WEBMD, issued May 16, 2000. Complainant also operates an Internet presence using the domain name <webmd.com>. Although Complainant's services primarily relate to human patients, Complainant has provided information about pets as well.
Respondent is a corporation founded by Wendy Kim in 2003 as a holding corporation for incubating companies. Respondent operated a parking page at the disputed domain name generating a small amount of revenue for Ad Sense links provided by Google. Respondent was aware of Complainant's “www.webmd.com” website when it registered the disputed domain name.
The parties have exchanged correspondence involving these disputes, but there has been no resolution.
Complainant makes the following basic contentions:
(i) Complainant owns rights in the mark WEBMD.
(ii) The disputed domain name <webmedpet.com> is confusingly similar to Complainant's mark.
(iii) Respondent lacks any right or legitimate interests in the disputed domain name.
(iv) Respondent registered and used the disputed domain name in bad faith for commercial gain based on confusion with Complainant's name and mark.
Respondent relies on the following contentions:
(i) Complainant's mark is generic and therefore open to use by others.
(ii) The addition of the word “pet” distinguishes the names and avoids confusion.
(iii) That Respondent has a legitimate plan to use the disputed domain name.
(iv) That Respondent was not aware of Complainant's rights when it registered the domain name and therefore did not act in bad faith.
(vi) Respondent's use of Ad Sense from Google is minimal and does not constitute bad faith.
The record shows that Complainant owns rights in the WEBMD mark. Respondent argues that the mark is generic because it is formed of two ordinary words and is not arbitrary or coined. The Panel disagrees. Although the mark does suggest an online service relating to medical doctors, the term is not the common or ordinary word for such services. The mark merely suggests or describes the site, it is not the generic term for such sites. Therefore, the Panel finds that Complainant has rights in the mark.
The mark and disputed domain name are not identical. Complainant argues that it is sufficient that the disputed domain name incorporates its mark in full. The Panel disagrees. Although it is well-established that confusion is usually not avoided by the addition of a merely descriptive or generic term that is apt for the Complainant's products or services, the addition of distinctive or unrelated terms may in certain circumstances be sufficient to avoid confusion. Each case must be evaluated on its own merits.
Here, despite Complainant's distribution of materials relating to pets, the Panel does not find that the term “pets” is an apt descriptive term for Complainant's services. Nevertheless, when considering the disputed domain name as a whole, the Panel does not accept Respondent's contention that “webmd” is an ordinary description for an online medical site. Rather, the Panel finds that “webmd” is a distinctive reference to Complainant's trademark. Internet users encountering “www.webmdpet.com” are more likely to associate the site with Complainant's trademark than to interpret the disputed domain name as an unrelated medical site involving pets. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Respondent suggests it has a legitimate interest in the disputed domain name because it registered the domain name for the purpose of operating an online pet health ecommerce site. In support, Respondent claims it conducted a feasibility study and registered additional domain names <petsurant.com> and <petsnality.com.> relating to the development of this online business. The Panel finds that the evidence presented is insufficient to show a demonstrable plan to use the disputed domain name for a bona fide offering of goods or services prior to being put on notice of Complainant's objection. Such use may simply be a pattern of speculation in domain names for sale or pay-per-click monetization with no intention of offering goods or services. Further, use of a domain name that is a deliberate infringement of another's mark cannot be a bona fide offering. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. For the reasons stated below, the Panel finds it more likely than not that the disputed domain name was registered and used in bad faith as a deliberate infringement of Complainant's rights. Thus, the Panel agrees with Complainant that Respondent lacks any rights or legitimate interests in the disputed domain name.
Respondent admits that the disputed domain name was registered with knowledge of Complainant's use of the name and mark WEBMD. Respondent denies that it knew of Complainant's rights, but it is held to have constructive notice of such rights under U.S. law. In any event, the admission of actual knowledge is critical.
As stated above, the Panel is not persuaded by the claim that the phrase “webmd” is simply an ordinary phrase used generally to identify medical sites. “Webmd” is not generally used as a description for online medical sites. Instead it is an unusual combination of terms that is distinctive of Complainant's site and trademark. Respondent knew or should have known this when it registered the domain name.
“WebMD” is also an odd choice for Respondent's proposed services since medical doctors do not normally provide medical treatment for pets. The Panel's reactions might be different if the disputed domain name were based on “vet”, the phrase normally used for professionals who treat pets, but that is not the case here. As a result, it appears more likely than not that Respondent registered the disputed domain name with the intent of obtaining commercial benefit from confusion with Complainant's mark.
It is also admitted that the domain name has been monetized with pay-per-click advertising links and that Respondent seeks to derive commercial gain from this practice. Accordingly, the Panel finds that the disputed domain name was registered and used in bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <webmdpet.com> be transferred to the Complainant.
Dated: December 21, 2009