WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MedQuest Pharmacy, Inc. v. SMVS CONSULTANCY PRIVATE LIMITED, SMVS CONSULTANCY PRIVATE LIMITED / Privacyprotect.org
Case No. D2011-2313
1. The Parties
The Complainant is MedQuest Pharmacy, Inc., North Salt Lake City, Utah, United States of America, represented by Stoel Rives, LLP, United States of America.
The Respondent is SMVS CONSULTANCY PRIVATE LIMITED, SMVS CONSULTANCY PRIVATE LIMITED, Mumbai, Maharashtra, India / Privacyprotect.org, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <medquest.com> (the “Domain Name”) 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 December 29, 2011. On January 3, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 3, 2013, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 January 4, 2012 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 amended Complaint on January 10, 2012.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 11, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 31, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2012.
The Center appointed Thomas Legler as the sole panelist in this matter on February 22, 2012. 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
The Complainant in this administrative proceeding is MedQuest Pharmacy, Inc., a Delaware, US Corporation.
The Complainant has filed an application to register the trademark MQ MEDQUEST PHARMACY with the United States Patent and Trademark Office (USPTO) on December 8, 2004. The application was registered on the Principal Register on June 24, 2008. The excerpt from the Register shows that first use of that designation was made on February 1, 2005.
Pursuant to the Registrar Verification of January 3, 2012, the domain name at issue was created on June 13, 1997.
The Respondent is SMVS CONSULTANCY PRIVATE LIMITED, SMVS CONSULTANCY PRIVATE LIMITED, Mumbai, Maharashtra, India. The Complaint reached the Respondent only electronically. Moreover, the Respondent has not filed any Response.
5. Parties’ Contentions
According to the Complainant, the trademarks MEDQUEST, MEDQUEST PHARMACY and MQ MEDQUEST PHARMACY (the "Marks") are used around the world since at least as early as 1996 in connection with medical and pharmaceutical goods and services. The Complainant refers in this respect to two annexes showing copies of Complainant's website as it appeared in August 2000 and in November 2011, as well as to a copy of Complainant's advertisement and product catalog published in 2000.
The Complainant alleges that the Domain Name is confusingly similar to the used signs MEDQUEST, MEDQUEST PHARMACY and the mark MQ MEDQUEST PHARMACY registered since June 24, 2008 with the USPTO.
The dominant part of the Domain Name <medquest.com> comprises the word "medquest", which is identical to the registered trademark MEDQUEST. It is obvious that the addition of ".com" is not relevant and will not have any impact on the overall impression of the dominant part of the name "medquest".
The Complainant is unable to determine exactly when the Respondent took control of the Domain Name because it hid its identity through the use of a privacy protection service. Yet, the Complainant has determined that the Respondent took control of the Domain Name between August 13, 2007 and August 30, 2007. WhoIs records show that the privacy protection only dates back to August 30, 2007. Additionally, on August 13, 2007, the registrant was listed as “Consumer Data Resources” of Dayton, Ohio, USA. Presumably, between August 13, 2007 and August 30, 2007, Consumer Data Resources transferred the Domain Name to the Respondent, which then hid its identity with the privacy protection service. The Complainant believes that the Domain Name was actually transferred, as opposed to Consumer Data Resources simply acquiring privacy protection, because the identity of the prior registrant would also have been hidden had the registrant not changed in August 2007. Copies of the WhoIs report, including the WhoIs history, are attached hereto as Annex 7 of the Complaint. This conclusion is bolstered by records from the Internet Archive's Wayback Machine, which don't show any records for the Domain Name prior to August 31, 2007. As a result, the earliest possible date that the Respondent could have acquired rights to the Domain Name is August 14, 2007, which is more than eleven years after Complainant began using the marks and more than two years after the Complainant filed its application to register MQ MEDQUEST PHARMACIES with the USPTO.
The Complainant indicates having no relationship with the Respondent and having never authorized the Respondent to use the Domain Name. The Respondent is not and has never been commonly known by the name "Medquest". The Respondent's only use of the Domain name is a web address that resolves to a "pay-per-click" advertising site featuring sponsoring listings for medical goods and services, on which Respondent earns revenue from Google AdSense for Domains. Since 2007, the page has resolved to various formats of "pay-per-click" advertising pages, sometimes in direct competition with the Complainant's medical billing and medical record management software.
The use of the Domain Name by the Respondent to direct users to a site primarily intended to generate "pay-per-click" advertisement revenue is not a bona fide offering of goods and services. It is neither a noncommercial or fair use of Complainant's marks.
Regarding the third element of the Policy, the Complainant indicates that the Respondent is using the Domain Name to incorporate its marks and intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the website or the goods and services offered therein, and as to Complainant's authorization, licensure or sponsorship thereof.
The Respondent's acquisition of the Domain Name is suspiciously close to the August 21, 2007 date of publication for Complainant's MQ MEDQUEST PHARMACIES trademark application at the USPTO.
Additionally, the Respondent has shown bad faith by offering a page resolving from the Domain Name, which is nearly identical to the Complainant's marks, that contains links to third party advertisers, many of which offer goods and services competitive with or similar to those offered by the Complainant.
The Respondent is pirating the Complainant's goodwill and consumer recognition for the Respondent's own financial gain by capitalizing on consumer's entering Complainant's mark MEDQUEST with the “.com” suffix. Respondent is generating revenue with a pay-per-click system by receiving compensation from Google AdSense for domain names in exchange for the posting of ads for competitive and other similar goods and services on the webpage. Such activity is frequently cited by panels as evidence of bad faith.
Finally, the actual registrant is using a privacy protection service to hide its identity. Such action can be an indicator of bad faith, in particular where a pay-per-click website is used.
In view of the above, the Complainant concludes that the Domain Name be transferred to the Complainant.
The Respondent has not filed any response.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:
(i) The 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 Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant asserts that through continuous and extensive use, since at least as early as 1996, the Complainant has established rights in the marks MEDQUEST and MEDQUEST PHARMACY around the world, in connection with medical and pharmaceutical goods and services, including medical laboratory services and software used for medical billing, record keeping, and transcription, and with medical and healthcare-related educational services.
However, the Complainant's annexes only refer to a use of the sign MEDQUEST PHARMACY (and not MEDQUEST) in the years 2000 and 2011. No evidence has been submitted for a previous use of the signs MEDQUEST and MEDQUEST PHARMACY. The Panel therefore accepts the proof of use of the sign MEDQUEST PHARMACY as from 2000.
In addition, the Complainant has filed an application for the trademark MQ MEDQUEST PHARMACY with USPTO on December 8, 2004. The registration took place on June 24, 2008.
There is no doubt for the Panel that the Domain Name <medquest.com> is confusingly similar to MEDQUEST PHARMACY used since 2000 and MQ MEDQUEST PHARMACY filed for registration in 2004. The only difference between the Domain Name and the two signs are the descriptive word "pharmacy" and (in relation to the registered mark) in addition the suffix "MQ". These differences are not sufficient to dispel confusing similarity between the domain Name and the two signs as the Domain Name uses the dominant part of these designations.
The first element of the Policy is therefore fulfilled.
B. Rights or Legitimate Interests
According to the Registrar’s WhoIs database verification, the Domain Name has been created on June 13, 1997. It seems however that it has been held by at least one holder different from the present the Respondent.
In the Registrar Verification Request, the Center requested the Registrar indicate, if possible, the date on which the Respondent registered (or acquired the registration of) the Domain Name. The Registrar did not answer this question.
It is therefore not known when exactly the Respondent acquired its rights on the Domain Name. The issue has a certain importance as the Complainant used, according to the record, its MEDQUEST PHARMACY sign for the first time in 2000.
In this regard, the Complainant indicates being unable to determine exactly when the Respondent took control of the Domain Name because it hid its identity through the use of a privacy protection service. The Complainant has however determined that the Respondent took control of the Domain Name between August 13, 2007 and August 30, 2007. WhoIs records show that the privacy protection only dates back to August 30, 2007. Additionally, on August 13, 2007, the registrant was listed as Consumer Data Resources of Dayton, Ohio, USA. Presumably, between August 13, 2007 and August 30, 2007, Consumer Data Resources transferred the Domain Name to Respondent, which then hid its identity with the privacy protection service. The Complainant submits in this regard copies of the WhoIs report, including the WhoIs history, together with records from the Internet Archive’s Wayback Machine, which don’t show any records for the Domain Name prior to August 31, 2007. The Complainant concludes that the earliest possible date that the Respondent could have acquired rights to the Domain Name is August 14, 2007.
In the absence of the Respondent’s Response and insofar as the Complainant’s explanations seem plausible to the Panel, the latter accepts that the transfer of the Domain Name must have taken place in August 2007.
That was seven years after the first use of the above mentioned sign by the Complainant. It is therefore unlikely that the Respondent could claim any prior rights on the Domain Name.
In addition, the Complainant declared having no relationship with Respondent and having never authorized Respondent to use the Domain Name.
The Panel notes that the Respondent has never used the Domain Name in connection with a bona fide offering of goods and services. Quite to the contrary: the Respondent’s only use of the Domain Name is a web address that resolves to a “pay-per-click” advertising site featuring “sponsored listings” for medical goods and services, on which the Respondent earns revenue. The advertising links include advertisements for medical billing and transcription services and for software platforms for patient data and clinical information management, all of which appear to be competitive with the Complainant’s activity. Using a domain name to direct users to a site primarily intended to generate pay-per-click advertisement revenue is not a bona fide offering of goods and services.
The Respondent has not submitted any Response seeking to defend or justify its registration of the Domain Name or the Complainant’s contention that the Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore concludes that the Complainant has fulfilled the second element of the Policy.
C. Registered and Used in Bad Faith
When the Respondent in a UDRP proceeding is an entity other that the original registrant, the date of acquisition of the domain name is generally used to determine bad faith at the time of registration (see Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406).
When, on the basis of the above holding (B.), the Respondent acquired the Domain Name in August 2007, the Complainant had been using the sign MEDQUEST PHARMACIES for seven years and filed in 2004 an application to register the MQ MEDQUEST PHARMACIES mark with the USPTO. As the Complainant used, among other, the Internet for its activities, there can scarcely be any doubt that the Respondent , when acquiring the Domain Name in 2004, must have had actual knowledge of the Complainant’s trademark given in particular the long period the Complainant has been using its trademark.
The Complainant charges that the Respondent has registered the Domain Name solely to take advantage of the trademark significance derived from the use of the word embodied in the Domain Name. The Respondent has not sought to dispute this allegation. Nor has the Respondent sought to claim that the advertisement pages are a temporary arrangement while some other arrangements are made relating to any specific business of the Respondent.
As the record shows, Respondent indeed intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The commercial gain is hereby generated by a pay-per-click system and the respective compensation received from the provider.
Finally, the actual registrant is using a privacy protection service to hide its identity. Such action is under the given circumstances an indicator of bad faith.
In view of all these elements, the Panel finds that the Complainant has satisfied the third requirement of the Policy.
For the foregoing reasons, the Panel orders that the Domain Name <medquest.com> be transferred to the Complainant.
Dated: March 14, 2012