WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Physicians Foundation, Inc. v. Zafar Khan
Case No. D2012-2436
1. The Parties
Complainant is Physicians Foundation, Inc. of Columbia, South Carolina, United States of America, represented by Davis & Gilbert LLP, United States of America.
Respondent is Zafar Khan of Carlsbad, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <physiciansfoundations.org> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 12, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the disputed domain name.
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 Respondent of the Complaint, and the proceedings commenced on December 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 9, 2013.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 17, 2013. 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 nonprofit organization based in Columbia, South Carolina, in the United States of America, which is also the country of Respondent’s address of record. Complainant is involved in the industry of healthcare and healthcare reform, and it awards grants to universities, hospital systems, and other healthcare providers. Complainant has demonstrated rights to the mark PHYSICIANS FOUNDATION in association with its services. Although Complainant has not submitted trademark registrations, Complainant has shown by way of website evidence, including press and publicity, that Complainant began operations in 2004, and has been using the mark PHYSICIANS FOUNDATION continuously since that time. In other words, in a jurisdiction that recognizes common law rights in marks, Complainant has demonstrated common law rights to the mark PHYSICIANS FOUNDATION since at least 2004.
Complainant owns the registration for several domain names, which it links to an active website from which it advertises its services. Complainant’s domain names include <physiciansfoundation.org>, registered on April 6, 2004, <physiciansfoundation.net>, registered on May 12, 2012, <physciansfoundations.com>, registered on May 12, 2012, <physiciansfoundations.net>, registered on May 12, 2012, and <physiciansfoundation.co>, registered on May 12, 2012. The registration for the disputed domain name was also formerly owned and controlled by Complainant, beginning in October 28, 2005, until it expired in November of 2011.
The disputed domain name <physiciansfoundations.org> was registered to its current user on December 7, 2011. Respondent has no affiliation with Complainant. Respondent has linked the disputed domain name to an active URL from which Respondent provides content mirroring Complainant’s own copyrighted website, but also providing links to other websites.
Complainant has not authorized any activities by Respondent, nor any use of Complainant’s copyrighted content or trademarks thereby.
5. Parties’ Contentions
Complainant contends that: (i) < physiciansfoundations.org> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Respondent did not file a reply to Complainant’s contentions in this proceeding.
6. Discussion and Findings
A. Identical or Confusingly Similar
This Panel must first determine whether <physiciansfoundations.org> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates the common law mark to which Complainant has demonstrated prior rights, PHYSICIANS FOUNDATION, and merely adds the plural “s,” which is non-source identifying and does not significantly change the resulting commercial impression. See for example S.N.C. Jesta Fountainebleau v. Po Ser, WIPO Case No. D2009-1394.
This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Policy provides some guidance on how a respondent can demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not submit a reply to the Complaint, however. Rather, as noted in Section 4 above, Respondent has been using the disputed domain name to refer to Complainant’s own copyrighted content and to resolve to unauthorized links. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, Respondent has offered links to other websites at the disputed domain name. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
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 <physiciansfoundations.org> be transferred to Complainant.
Dated: January 23, 2013