WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Berkeley Eye Institute, P.A. v. Private Registrations, A.G. (Aktien Gesellschaft), CNR of Granby & Sharpe St.
Case No. D2011-1377
1. The Parties
The Complainant is Berkeley Eye Institute, P.A. (d/b/a Berkeley Eye Center), Texas, United States of America, represented by Looper Reed & McGraw, United States of America (hereinafter “Berkeley Eye Center”).
The Respondent is Private Registrations, A.G. (Aktien Gesellschaft), CNR of Granby & Sharpe St., Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <berkeleyeyecenter.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2011. On August 15, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On August 16 and 17, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 August 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on September 29, 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 is a Texas Professional Association dedicated to the treatment of eye diseases. The Berkeley Eye Center was named after Dr. Ralph G. Berkeley, a well-known eye surgeon and a pioneer in refractive eye surgery.
Complainant owns a word mark registration for BERKELEY EYE CENTER, Registration No. 3368625 with the United States Patent and Trademark Office (Principal Register, hereinafter USPTO), Registration Date January 15, 2008, filed on May 7, 2007, covering treatment of eye diseases and conditions of International Class 44, with first use and first use in commerce on June 1, 2003. A disclaimer exists reading “No claim is made to the exclusive rights to use ‘Eye Center’ apart from the mark as shown”.
The disputed domain name was registered on July 16, 2003.
On July 22, 2011, Complainant's attorney sent a cease-and-desist letter to Respondent. As of the filing of the Complaint, Complainant had not received any reply from Respondent.
5. Parties’ Contentions
In its Complaint, Complainant contends as follows:
The disputed domain name includes the BERKELEY EYE CENTER mark and is confusingly similar to marks owned by Complainant.
There is no evidence of Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the disputed domain name. Respondent does not have any mark or any other relevant rights to the name corresponding to the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use the mark BERKELEY EYE CENTER. Respondent is not making any legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the mark at issue. Respondent is using the disputed domain name for a website incorporating links to products and services offered by, inter alia, Complainant’s competitors, thus most likely gaining unjustified monetary benefit via pay-per-click links.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website with the intent of causing confusion as to the source, sponsorship, affiliation and endorsement of Respondent’s website.
The Respondent did not reply to the Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark 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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has shown that it owns trademark rights in the BERKELEY EYE CENTER registered service mark. See section on “Factual Background” above.
Since the disputed domain name incorporates Complainant's registered mark in its entirety, without spaces between the words and only adding the generic top level domain “.com”, the Panel finds that the disputed domain name is identical or confusingly similar to Complainant's mark. See Banco Nacional de México, S.A. Integrante del Grupo Financiero Banamex and Citibank (Banamex USA) v. Domain Park Limited, WIPO Case No. D2008-1457 (“Except for the missing space between the terms “banamex” and “usa”, the disputed domain name is identical to the BANAMEX USA mark). See Grant Thornton International v. Martin Schmitz, WIPO Case No. D2006-1085 (“It is commonly known that technically the letters in domain names cannot be separated by spaces […]”).
B. Rights or Legitimate Interests
Complainant contends that there is no evidence of Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent is not commonly known by the disputed domain name, and denies that Respondent has any mark or any other relevant rights to the name corresponding to the disputed domain name. Also, says Complainant, Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent, adds Complainant, is not making any legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark at issue. Finally, adds Complainant, Respondent is using the disputed domain name for a website incorporating links to products and services offered by, inter alia, Complainant’s competitors, thus most likely gaining unjustified monetary benefit via pay-per-click links.
Taken together, Complainant’s contentions and evidence are apt to constitute a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. For its part, Respondent failed to state any argument in favor of its having at least some rights or legitimate interest in the disputed domain name.
Also, Respondent’s use of the domain name is inapt to support a claim of rights or legitimate interests. As shown at Annex 8 to the Complaint, and confirmed by an independent visit conducted on October 12, 2001 by the Panel, the website at the disputed domain name shows a main web page, entitled “Berkeleyeyecenter.com”, containing a number of links which appear to be commercial and some related to the Complainant’s business.. A similar result obtained when the Panel connected its browser to the “Eye Doctor” link.
It appears that Respondent is using the disputed domain name in a pay-per-click scheme to generate income from clicks made by Internet users presumably looking for Complainant's business name and mark, or Dr. Berkeley himself. The Panel is not satisfied that this use of the disputed domain names can be legitimate. According to the WIPO Overview 2.0, at 2.6, “[p]anels have generally recognized that use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a "bona fide offering of goods or services" [see also paragraph 3.8 below] or from "legitimate noncommercial or fair use" of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder. As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value (a result that PPC page operators can achieve by suppressing PPC advertising related to the trademark value of the word or phrase). By contrast, where such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”
The Panel concludes that Respondent’s use of the disputed domain name is unfair, and that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For a registration of a domain name to be in bad faith it must be made with the complainant’s mark in mind. See WIPO Overview 2.0 at 3.1, “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired? Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
As seen at “Factual Background” above, the disputed domain name was registered on July 16, 2003, almost four years before Complainant filed its application for registration of the BERLELEY EYE CENTER service mark with the USPTO (May 7, 2007). Although this normally might result in a finding that Respondent could not have known of the later registered mark, and that the disputed domain name was not registered in bad faith, in the present case Complainant can rely on rights in a common law mark established before the registration of the disputed domain name. The Panel is satisfied that Dr. Ralph Berkeley was a well-known ophthalmologist and eye surgeon many years before the registration of the disputed domain name. Moreover, the fact that the disputed domain name was registered before Complainant applied for the BERKELEY EYE CENTER mark does not mean that Respondent was unaware of Dr. Berkeley’s professional activity or of his Berkeley Eye Center at the time of the disputed domain name registration.
Complainant has shown that in June 2003, he and his partner Dr. Mann amicably decided to part with each other, and to split the Mann-Berkeley Eye Center into the Mann Eye Center and the Berkeley Eye Center, respectively, and that each of them would continue his medical practice in his own separate eye center and under his own name. Complainant has shown that this decision was published on June 15, 2003 (before the registration of the disputed domain name) by the Houston Business Chronicle in an article authored by Nancy Sarnoff. See Annex 5 to the Complaint. The Panel believes that Respondent most likely came to know of the split of the Berkeley and Mann Eye Centers by reports published in the media, and that it decided to capitalize on such knowledge. In other words, Respondent knew of the Berkeley Eye Center and had this entity in mind when it registered the disputed domain name.
In this respect, the present case is similar to those cases where the respondents, coming to know of an imminent merger or acquisition, decided to extract a profit by registering a domain name corresponding to the new business entity resulting from the merger or acquisition. The WIPO Overview, at 3.1, recognizes that “[i] n certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.”
As to the use of the disputed domain name, as seen at the section on “Rights and Legitimate Interests” above, Respondent, by using the domain name, 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 Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. According to Policy, paragraph 4(b)(iv), this is a circumstance of bad faith registration and use of the disputed domain name.
The Panel concludes that the third requirement of the Policy is met.
For 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, <berkeleyeyecenter.com>, be transferred to the Complainant.
Dated: October 12, 2011