WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mediq N.V. formerly OPG Groep N.V. v. DomainsByProxy, Inc., / Janelle Fausett
Case No. D2011-1446
1. The Parties
The Complainant is Mediq N.V., formerly OPG Groep N.V. of Utrecht, Netherlands represented by Novagraaf Nederland B.V., Netherlands.
The Respondent is DomainsByProxy, Inc., and Janelle Fausett, of Scottsdale, Arizona, United States of America and Saint George, Utah, United States of America, respectively.
2. The Domain Name and Registrar
The disputed domain name <yourmediq.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2011. On August 26, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On August 26, 2011, GoDaddy.com, Inc. 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 the Complainant on August 30, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 1, 2011.
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 the Respondent of the Complaint, and the proceedings commenced on September 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on September 28, 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
According to the Complainant, Mediq N.V. is a company operating in the healthcare field in principally Europe, Scandinavia and North America. The company was incorporated in 1899 and employs some 8,200 people. The company operates in three divisions, namely Mediq Direct which delivers services to patients, Mediq Instellingen which supplies to professional institutions, and Mediq Apotheek which operates pharmacies.
The Complainant owns the following trademarks registered at the Benelux Bureau voor de Intellectuele Eigendom (BBIE; Benelux Office for Intellectual Property):
MEDIQ, wordmark, registration no. 776748, registration date July 29, 2005, classes 35, 44;
MEDIQ, wordmark, registration no. 789918, registration date November 17, 2005, classes 5, 10, 36, 41;
MEDIQ, with design, registration no. 782408, registration date November 21, 2005, classes 5, 10, 35, 36, 39, 41, 44;
MEDIQ, with design, registration no. 819489, registration date March 9, 2007, classes 5, 10, 35, 36, 39, 41, 44;
The Complainant owns the following trademark registered at the World Intellectual Property Organization (WIPO):
MEDIQ, registration no. 881669, registration date January 27, 2006, classes 5, 10, 35, 36, 39, 41, 44, with subsequent designation of the European Union, Norway and Switzerland;
MEDIQ with design, registration no. 929949, registration date March 7, 2007, classes 5, 10, 35, 36, 39, 41, 44, European Union.
The Complainant uses the Internet in business with websites that include “www.mediq.com”, “www.mediq.nl” and “www.mediqdirect.com”.
No factual information is available about the Respondent except for the details accompanying the registration of the disputed domain name, which appears to have been registered on April 16, 2010.
5. Parties’ Contentions
The Complainant has submitted prints of on-line searches of the BBIE trademarks register and the WIPO ROMARIN international trademark information database in support of its claim to have rights in the trademarks listed in section 4 above. The Complainant says that the trademark MEDIQ has no descriptive meaning in the languages of its websites, which are Dutch or English, and is a distinctive and well-known trademark internationally.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark, visually and phonetically, and differs only in the addition of the preceding word “your”. The non-distinctive word “your” refers to the word following, which is the Complainant’s trademark MEDIQ, and focuses attention on that trademark. There is a likelihood of confusion between the disputed domain name and the Complainant’s trademark.
The Complainant further contends that the Respondent does not have any right or legitimate interest in the disputed domain name and that the Complainant has not consented to the use of its trademark by the Respondent. The disputed domain name is parked and is indicated as being for sale but also offers links to advertisers including those of on-line pharmacies. Thus it is not in bona fide commercial use but is trading on the Complainant’s trademark in a bait and switch operation.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Respondent employs initial interest confusion with the Complainant’s trademark in order to attract Internet users for commercial gain by diverting them through sponsored links to websites including those of the Complainant’s competitors. This activity is also disruptive of the Complainant’s business. It is contended that the initial interest confusion constitutes bad faith irrespective of whether the Internet user realises that they have been misled.
The Complainant contends that cease and desist letters sent on two dates to the Respondent were not replied to and that in the interim the registration of the disputed domain name was renewed. The disputed domain name is registered through a privacy service that normally conceals the registrant’s contact details. These may be factors in a finding of bad faith.
The Complainant has submitted a number of citations of previous decisions under the UDRP that it considers should be treated as precedent.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Identity of the Respondent
The Complaint as initially submitted named the Respondent as “DomainsByProxy, Inc.”, which offers a privacy service that does not publicly divulge the contact details of the true registrant. The use of such a privacy service may in general be entirely legitimate.
With the commencement of the proceedings the registrar, as required, disclosed to the Center that the disputed domain name was registered in the name of Janelle Fausett, and provided the contact details on record. The Complainant amended the Complaint to name both DomainsByProxy, Inc., and Janelle Fausett as Respondents. Since there would appear to be a single entity behind the registration, the Respondent will be referred to in the singular.
The Complaint was notified to the Respondent by sending emails to the disclosed email addresses of Janelle Fausett directly; the postmaster of the disputed domain name; and via DomainsByProxy, Inc. The Complaint was also sent to the disclosed physical address of Janelle Fausett, at which it was recorded as delivered (left at porch), and to the physical address of DomainsByProxy, Inc. Attempts to send by fax to DomainsByProxy, Inc., were unsuccessful. The Panel is satisfied that the Center has fulfilled its obligations to attempt to deliver the Complaint to the Respondent at the points of contact on record in the terms of paragraph 2 of the Rules.
A. Identical or Confusingly Similar
The disputed domain name is <yourmediq.com>. The Panel is satisfied on the evidence that the Complainant has rights in the trademark MEDIQ and that the trademark is a distinctive creation. The disputed domain name differs from the Complainant’s trademark only by the presence of the word “your” preceding the trademark MEDIQ. It is generally found in proceedings under the UDRP that the presence of a generic prefix or suffix such as “your” in conjunction with a trademark does not detract from confusing similarity between the disputed domain name and the trademark. The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that it has not granted or licensed to the Respondent any right or legitimate interest in the disputed domain name and that the Respondent cannot demonstrate any such right or legitimate interest.
The Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating, in the terms of paragraph 4(c) 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 Respondent has not submitted any Response in the terms of paragraph 4(c) of the Policy or otherwise. The Panel is satisfied that the Respondent’s use of the disputed domain name, since it features essentially the Complainant’s trademark but is offered for sale and is used to refer visitors to sponsored links, is not bona fide. There is no evidence that the Respondent has been commonly known by the disputed domain name, or a similar name. There is no evidence that the Respondent’s use of the disputed domain name is noncommercial or otherwise fair. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith, namely:
“(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 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 your web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith registration and use may be found otherwise.
According to the evidence, the disputed domain name resolves to a website managed by GoDaddy, a company that trades in domain names, website hosting and other Internet services. The GoDaddy website resolved to by the disputed domain name displays the line: “Want to buy this domain? Our Domain Buy Service can help you get it.” The Panel interprets that line as meaning that the disputed domain name is offered for sale to visitors who may have reached it in the process of searching for the Complainant’s trademark or accepting search results containing the Complainant’s trademark. In the absence of any explanation to the contrary, and on the balance of probabilities, it may reasonably be concluded that the Respondent intends to sell the disputed domain name for a price in excess of the costs of registration, and that the registration was made primarily for that purpose, constituting bad faith within the meaning of paragraph 4(b)(i) of the Policy.
A screen capture made on August 22, 2011, produced in evidence, displays the website to which the disputed domain name resolved at that time. The Respondent’s website offered links to other websites generally related to pharmacies and medicines. It may reasonably be concluded that the Respondent has enabled the provision of these links in return for revenue through the business model known as click-through or pay-per-click. By this model the advertiser pays a commission, at least part of which would be received by the Respondent, in return for referrals received through links. Such an operation may be entirely legitimate and is routinely used to provide partial funding for public service or news websites, or as a legitimate stand-alone business.
In order to succeed commercially, however, the operator of a pay-per-click website must attract visitors. The Respondent in the present case must expect to attract visitors seeking the Complainant’s trademark, to which the Respondent does not have rights, thus rendering the operation not bona fide. The Panel finds on the balance of probabilities that the Respondent, pending the primary purpose of selling the disputed domain name, has put it to use in order to attract visitors in the expectation of commercial gain resulting from their initial interest confusion, constituting bad faith within the contemplation of paragraph 4(b)(iv) of the Policy.
According to the evidence the Complainant sent cease and desist letters to the Respondent on May 23, 2011 and June 17, 2011, which were not replied to, and in the interim the registration of the disputed domain name was renewed. The Panel finds the Respondent’s actions to be an aggravating factor in bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
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 <yourmediq.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: October 12, 2011