World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Hospital for Sick Children v. Jet Stream Enterprises Limited / Private Whois For cbelprip1702

Case No. D2010-2174

1. The Parties

Complainant is The Hospital for Sick Children of Toronto, Ontario, Canada, represented by Sim, Lowman, Ashton & McKay LLP, Canada.

Respondent is Jet Stream Enterprises Limited of St Johns, Antigua and Barbuda / Private Whois For cbelprip1702 of Mumbai, India.

2. The Domain Name and Registrar

The disputed domain name <motherrisk.org> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2010. On December 15, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On December 15, 2010, eNom transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2010, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 17, 2010.

The Center verified that the Complaint together with the amended 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 proceeding commenced on December 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2011.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 21, 2011. 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

Complainant has applied for and advertised the term “motherisk” as an “official mark” on the register of the Canadian Intellectual Property Office (CIPO), application number 0909995, filed May 20, 1998 and advertised on July 29, 1998.

Complainant has used the official mark MOTHERISK as an identifier of its services, including by identification of informational literature produced and distributed to promote the health of women and children, and including advice regarding prenatal and postnatal care. Complainant operates an active Internet website at “www.motherisk.org” that is identified, inter alia, with the banner MOTHERISK, with reduced font banner “Treating the Mother - Protecting the Unborn”. Complainant’s MOTHERISK website includes links to third party booksellers that offer for sale literature recommended by Complainant. Complainant’s MOTHERISK website solicits contributions. According to the website “The Hospital for Sick Children (SickKids) is a health-care, teaching and research centre dedicated exclusively to children; affiliated with the University of Toronto.” Complainant indicates that it has operated this website at the referenced Internet address since at least 1997.

Complainant has submitted evidence of third-party print and online references to the MOTHERISK official mark in association with the services of Complainant.

According to the registrar eNom’s verification, Respondent is registrant of the disputed domain name. According to a Domain Tools WhoIs record submitted by Complainant, the record of registration of the disputed domain name was created on January 6, 2003. At the time the Complaint was filed, the identity of Respondent was protected by a privacy shield. In its response to verification request from the Center, the registrar eNom provided the identity of Respondent, Jet Stream Enterprises Limited.

Respondent has used the disputed domain name in connection with a pay-per-click link farm page. That link farm page contains links to products and services related to women’s health and childcare, as well as to products and services unrelated to women’s health and childcare. As of November 29, 2010, Respondent’s pay-per-click link farm page displayed a photograph of Complainant’s hospital facility alongside links to various third-party health care services providers. As of the date of this decision, the home page of Respondent’s website at the disputed domain name has been redesigned to show a picture of a pregnant woman, along with various subject matter links. Clicking through on those links takes the Internet user to various third-party providers of goods and services, including (but not limited to) healthcare services relating to women and children.

Complainant has provided evidence in the form of printouts of third-party websites showing persons attempting to direct Internet users to Complainant’s website mistakenly directing Internet users to the website identified by the disputed domain name.

The registration agreement in effect between Respondent and the registrar eNom.subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the official mark MOTHERISK as evidenced by application at CIPO and advertisement, and as supported and confirmed by use in connection with the promotion of its services in Canada. Complainant indicates that several administrative panel decisions under the Policy have recognized that ownership of rights in a Canadian official mark establishes trademark rights within the meaning of the Policy.

Complainant contends that the disputed domain name is confusingly similar to its official mark. Complainant states that there is only a one letter difference between its official mark and the disputed domain name (which Complainant refers to as a “typographical error”), and that the appearance and meaning of the two terms are virtually identical. Complainant further argues that by using a photograph of Complainant’s hospital facility on its website homepage, Respondent evidenced its intention to take advantage of Internet user confusion with respect to the disputed domain name that is virtually identical to Complainant’s official mark. Complainant argues that there has been actual Internet user among those seeking to identify its website who have inadvertently referred to the disputed domain name.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that: (1) the disputed domain name was deliberately adopted by Respondent to intentionally attract Internet users to Respondent’s website at the disputed domain name for the latter’s commercial gain; (2) Respondent is not using the disputed domain name in association with a bona fide offering of goods or services, but instead is using it to generate pay-per-click revenue from third-party advertisers unrelated to Complainant; (3) there is no bona fide offering of goods or services when a deliberate misspelling is used to divert Internet traffic for commercial gain; (4) Respondent is not using the disputed domain name for legitimate noncommercial activity such as criticism, review or news reporting, and Respondent has used the disputed domain name in association with goods not recommended by Complainant under its MOTHERISK official mark, and; (5) Respondent did not use the disputed domain name in Canada prior to Complainant’s use of its official mark, Respondent is not commonly known by the disputed domain name, Respondent is not using the disputed domain name in a manner descriptive of the character or quality of goods, services or business, the disputed domain name is not generic in any language, the disputed domain name is not the legal name or surname of Respondent, and the disputed domain name has no geographical connotations.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith in that: (1) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; (2) Respondent registered and used the disputed domain name intentionally for commercial gain to attract Internet users to its website by creating a likelihood of confusion with Complainant’s official mark, suggesting sponsorship, affiliation or endorsement of Respondent’s website at the disputed domain name; (3) Complainant has established a significant reputation in connection with its official mark, and; (4) Respondent is deliberately taking advantage of Internet user typographical errors.

Complainant requests the Panel to direct the registrar eNom to transfer the disputed domain name to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center transmitted by express courier to Respondent notification of the Complaint and commencement of the proceeding. The records of the express courier indicate that the Center’s packet was successfully delivered (and signed for) at the physical address of Respondent. The Center also transmitted notification by email to the addresses provided by Respondent in its record of registration. The Panel is satisfied that Respondent received adequate notice of this proceeding and was afforded a reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of application for and advertisement of MOTHERISK as an “official mark” in Canada. Complainant has not provided substantive explanation of the legal characteristics and effects of an “official mark” in Canada. Complainant, however, has referenced prior administrative panel decisions under the Policy in which Canadian official marks were treated as conferring trademark rights. Previous panels have considered in detail the legal characteristics and effects of Canadian official marks. Such panels have concluded that the Canadian official marks should be treated as conferring trademark rights within the meaning of the Policy at least where the official marks have been used in a trademark sense in association with the performance or advertising of services (see Canadian Hockey Association v. Mrs. Jello, LLC, WIPO Case No. D2005-1050 and Government of the Province of Alberta v. RolloverNow, Inc., WIPO Case No. D2006-0163).1 Complainant in this proceeding has provided substantial evidence of use of its official mark in a trademark sense (i.e., in connection with advertising and providing its services). Respondent has not contested Complainant’s assertion of trademark rights based on its official mark and use in a trademark sense. The Panel determines that Complainant has trademark rights in MOTHERISK in Canada from the standpoint of the Policy.

The disputed domain name is identical to Complainant’s official mark, except for the addition of an “r” following the term “mother”. To the extent that Complainant’s mark has a meaning, that meaning would more ordinarily be conveyed in the manner adopted by Respondent in the disputed domain name, that is, by using the two words “mother” and “risk” in combination with two “r”s. Complainant has added an element of uniqueness to its official mark by dropping one of the ‘r’s. Respondent might have argued that it had adopted a common descriptive term for use as the disputed domain name, and that this common descriptive term could not be used to confuse Internet users because it is freely available for use by any person. Respondent did not make that argument, and the Panel is disinclined to make a factual assessment on that question absent facts and pleading from Respondent.2 Leaving that argument aside, the official mark and disputed domain name are without doubt confusingly similar based on visual impression, sound and meaning. Because Respondent used a photograph of Complainant’s place of business on its home page, it is apparent that Respondent has deliberately attempted to take advantage of the close similarity between the official mark and the disputed domain name. In the Panel’s view, this demonstrated intention to take unfair advantage supports a finding of confusing similarity between the official mark and the disputed domain name.

The Panel determines that Complainant has rights in a trademark, and that the disputed domain name is confusingly similar to that trademark within the meaning of the Policy.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“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 your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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.” (Policy, paragraph 4(c))

Complainant has argued that Respondent lacks rights or legitimate interests in the disputed domain name because, inter alia, Respondent was not commonly known by the disputed domain name, Respondent’s use of Complainant’s mark in connection with a link farm pay-per-click page that returns results of third parties offering services competitive with those of Complainant does not establish rights or legitimate interests, Respondent has not made a legitimate noncommercial or fair use of Complainant’s mark in the disputed domain name, and Respondent has deliberately attempted to take unfair advantage of Complainant’s mark. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has used the disputed domain name in connection with a link farm page advertising goods and services of third parties in competition with those of Complainant. It is well-established that operating a link farm page using a trademark in a domain name, and providing connection to goods and services competitive with the trademark owner, does not establish rights or legitimate interests. See, e.g., Editorial Armonia, S.A, de C.V. v. Cagri Sadik Bayram, WIPO Case No. D2010-1963; Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp., WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925; Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates, WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell, WIPO Case No. D2007-1139, Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah, WIPO Case No. D2007-1368, and Alfa Laval AB and Alfa Laval Corporate AB v. Alfalava.com, WIPO Case No. D2007-1881. Respondent may not disclaim responsibility for the manner in which the disputed domain name is used because it has delegated parts of that responsibility to a domain name service provider. In this proceeding, Respondent deliberately incorporated a photograph of Complainant’s business on its website homepage, evidencing a specific intention to create confusion regarding Complainant’s association with its website. This negates a potential suggestion that Respondent acted neutrally to take advantage of the meaning of the terms in the disputed domain name and/or was using the disputed domain name in a legitimate noncommercial or fair use sense.

The Panel determines that Respondent has failed to rebut Complainant’s prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location”.

Complainant has argued that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. The Panel finds little basis for inferring such an intention from the facts presented in the case file.

Respondent has used Complainant’s official mark, which has been the subject of Complainant’s substantial use in Canada, in the disputed domain name to direct Internet users to a pay-per-click link farm page that includes links to competitors of Complainant, as well as links to products and services that would not be endorsed by Complainant under its official mark. Respondent has deliberately attempted to engender Internet user confusion by using a photograph of Complainant’s place of business on its home page. This constitutes intentional use of a domain name for commercial gain to attract Internet users to a website by creating consumer confusion with Complainant’s mark with respect to Complainant as source, sponsor, affiliate or endorser of Respondent’s website at the disputed domain name.

The Panel determines that Respondent registered and used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

7. Decision

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 <motherrisk.org> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Dated: February 1, 2011


1 The Panel has not attempted to canvas all decisions under the Policy which may involve Canadian official marks, but is satisfied that the decisions referenced in the text above were well reasoned and decided.

2 The Panel does not suggest that Complainant’s official mark is generic or commonly descriptive. It is a combination of two words that taken together have some meaning in the English language. It is less clear that the terms sufficiently describe a particular genus or category of thing to be incapable of being distinctive a trademark sense.

 

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