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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Johns Hopkins University (“JHU”), The Johns Hopkins Health System Corporation (“JHHS”), Johns Hopkins Medicine International, L.L.C. (“JHI”) v. Marketing Express

Case No. D2013-0148

1. The Parties

The Complainants are The Johns Hopkins University (“JHU”), The Johns Hopkins Health System Corporation (“JHHS”), Johns Hopkins Medicine International, L.L.C. (“JHI”), of Maryland, United States of America represented by Vorys, Sater, Seymour and Pease, LLP, United States of America.

The Respondent is Marketing Express, Domain Administrator of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <hopkinsmedicine.com> is registered with Rebel.com Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2013. On January 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 23, 2013, the Registrar 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 January 30, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2013.

The Center appointed Alistair Payne as the sole panelist in this matter on March 1, 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

The Complainants are a group of related entities in the United States that have operated for many years and between them operate the renowned John Hopkins Hospital, John Hopkins University and facilitate the expansion of the founder John Hopkins’s mission to improve community health. Between them they own various registered trade marks for or incorporating the JOHN HOPKINS mark. In particular JHHS and JHU own United States trade mark registration number 3949736 for the word mark JOHN HOPKINS and also trade mark registration number 3875504 for the word mark JOHN HOPKINS MEDECINE and also United States trade mark registration number 2342251 for HOPKINS BUSINESS OF MEDECINE. JHHS and JHU also own the domain name <hopkinsmedicine.org> at which they operate a website describing the medical mission of the three entities.

The disputed domain name was registered on May 4, 2003.

5. Parties’ Contentions

A. Complainant

The Complainants state that they own registered trade mark rights in the JOHN HOPKINS, JOHN HOPKINS MEDECINE and HOPKINS BUSINESS OF MEDECINE marks and that the JOHN HOPKINS name and mark is famous and well known worldwide as a consequence of use over the last 120 years or so. They say further that the Complainants joined together to use the JOHN HOPKINS MEDECINE mark in relation to their whole medical enterprise in 1996 and have established substantial rights in the name and mark subsequently. The Complainants submit that the disputed domain name is confusingly similar to what they describe together as their JOHN HOPKINS Marks and note in this regard that the disputed domain name wholly incorporates its distinctive common law HOPKINS mark.

The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name, is not a licensee or affiliate of the Complainants and is not authorized to use the JOHNS HOPKINS Marks. They contend further that the Respondent is not commonly known by the domain name or offering bona fide goods or services under it and neither is the Respondent making a legitimate non-commercial or fair use of the disputed domain name. The Complainants further argue that the Respondent’s bad faith as set out below is inconsistent with any notion that it has rights or legitimate interests in the disputed domain name.

As far as bad faith is concerned, the Complainants’ essentially submit that the Respondent’s use of the disputed domain name to divert consumers to a pay-per-click advertising website is an attempt to create confusion by trading off the goodwill attaching to the Complainants’ mark in an attempt to mislead Internet users to visit the Respondent’s website for commercial gain. The fact that Internet users may as a consequence visit the site of one of the Complainants’ competitors as advertised on the Respondent’s site only confirms the Respondent’s bad faith according to the Complainants.

The Complainants say further that the Respondent’s bad faith is compounded by the fact that it has also been the named respondent in five prior complaints filed under the Policy. As in the current case, including in relation to the Complainants’ cease and desist letter, in each of these cases the Respondent failed to respond to any of the complaints and in each case the panel found that the Respondent had acted in bad faith. The Complainants note these cases as The Institute of Electrical and Electronics Engineers, Incorporated (“IEEE”) v. Marketing Express, Domain Administrator, WIPO Case No. D2011-1985; Aquatherm Inc. v. Marketing Express, WIPO Case No. D2011-1370; Mutuelle d’Assurance du Corps de Santé Français - MACSF Assurances v. Marketing Express, WIPO Case No. D2010-0242; Harrah’s License Company, LLC v. Marketing Express c/o Domain Administrator, NAF Claim 1280534; and Brown Shoe Company, Inc. and Brown Group Retail, Inc. v. Marketing Express c/o Domain Administrator, NAF Claim 1273208.

The Complainants say that these prior adverse decisions demonstrate that the Respondent has engaged in a pattern of conduct in which it registers domain names that are confusingly similar to others’ trademarks for its own commercial gain and to prevent the owner of the trademark from reflecting their mark in a corresponding domain name and that this is further indicative of its bad faith under the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Procedural Issue

This panel notes that the Complaint was filed by three Complainants (JHU, JHHS and JHI) against one Respondent. This Panel is satisfied that the Complainants have a specific common grievance against the Respondent and that it is equitable and procedurally efficient to permit this consolidation.

A. Identical or Confusingly Similar

The Complainants have developed a very substantial reputation and goodwill in connection with the JOHN HOPKINS name and their various medical activities. JHHS and JHU own United States trade mark registration number 3949736 for the word mark JOHN HOPKINS and trade mark registration 3875504 for the word mark JOHN HOPKINS MEDECINE and also trade mark registration 2342251 for HOPKINS BUSINESS OF MEDECINE all of which comprise trade mark rights under this limb of the Policy. Although JHI is not a registered owner of either of these trade marks it may be that due to the very long use and substantial renown attaching to the JOHN HOPKINS name in conjunction with the Complainant’s activities in the field of medicine that it owns common law rights in conjunction with JHHS and JHU in any of these names or marks. However in view of the evidence concerning the ownership of registered trade mark rights by JHHS and JHU, it is unnecessary for the Panel to make such a finding in this case.

The disputed domain name differs from the JOHN HOPKINS MEDECINE mark by omission of the first name “John” and from the HOPKINS BUSINESS OF MEDECINE mark by omission of the generic words “business of”. In the Panel’s view the use of the surname “Hopkins” in conjunction with the generic term “medicine” are the distinctive elements of these marks and the disputed domain name is therefore confusingly similar to either mark. Even if this view was incorrect, the Panel notes that the disputed domain name only differs from the HOPKINS BUSINESS OF MEDECINE mark by omission of the generic words “business of” and is therefore confusingly similar to this mark alone.

Accordingly, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Panel accepts the Complainants’ submission that there is no evidence that the Respondent is a licensee or affiliate of the Complainants or that it has any authority to use the JOHNS HOPKINS Marks. Further there is no evidence that the Respondent is commonly known by the disputed domain name or offers a bona fide goods or services under it. Neither does it appear to the Panel that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. For these reasons and as set out below under Section C the Panel finds that the Complainant has made out a prima facie case under this head which has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and as a result, the Complaint succeeds under the second element of the Policy.

C. Registered and Used in Bad Faith

As a consequence of long use and very considerable success in their field, the Complainants have undoubtedly developed a significant reputation in relation to the JOHN HOPKINS name in the field of medicine both in the United States and overseas. It is not necessary for the Panel to determine the precise extent of this renown and reputation except to say that, as a result, it seems to the Panel very unlikely that the Respondent based in the United Kingdom with a registered address in Grand Cayman was not aware of the JOHN HOPKINS mark in the field of medicine when it registered the disputed domain name in May 2003. It is notable in this regard that the Complainant’s identical domain name <hopkinsmedecine.org> was created in September 2002 and that a simple Internet search would have revealed this fact to the Respondent prior to its registration in 2003. Registering a domain name comprising the surname “Hopkins” together with the word “medicine” is hardly an obvious choice and failing any explanation to the contrary and considering the Complainants’ prior identical domain name registration, the Panel infers that the Respondent chose to register the disputed domain name purposefully and in bad faith.

This inference of registration in bad faith is reinforced by the pattern of UDRP past cases in which the Respondent has been found to have registered domain names in bad faith. These include the following cases: The Institute of Electrical and Electronics Engineers, Incorporated (“IEEE”) v. Marketing Express, Domain Administrator, WIPO Case No. D2011-1985; Aquatherm Inc. v. Marketing Express, WIPO Case No. D2011-1370; Mutuelle d’Assurance du Corps de Santé Français - MACSF Assurances v. Marketing Express, WIPO Case No. D2010-0242; Harrah’s License Company, LLC v. Marketing Express c/o Domain Administrator, NAF Claim: 1280534; and Brown Shoe Company, Inc. and Brown Group Retail, Inc.v. Marketing Express c/o Domain Administrator, NAF Claim: 1273208.

It is also reinforced by the fact that the Respondent failed to reply to the Complainant’s cease and desist letter of September 13, 2012, as has been found by panels in various prior UDRP cases including see TDS Telecommunications Corporation v. Registrar [20758] Nevis Domains and Registrant [117400] Moniker Privacy Services, WIPO Case No. D2006-1620; Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696; and Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632.

Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with Complainants’ marks has been found by previous panels to amount to evidence of bad faith registration under paragraph 4(b)(iv) of the Policy. For example see: Credit Industriel et Commercial S.A. and Confédération Nationale du Credit Mutuel v. Spiral Matrix, WIPO Case No. D2006-0271;

The Respondent’s use of the surname “Hopkins” and the word “medicine” in the disputed domain name to divert consumers to a pay per click advertising website featuring links to competitors of the Complainants amounts in the Panel’s view to use in bad faith. This is particularly the case in the circumstances that the Complainant’s main website is maintained at the identical domain name <hopkinsmedicine.org> and Internet users may well enter the “.com” variant instead of the “.org” version, or when relying on search site results may very well choose the “.com” variant and arrive at the Respondent’s website instead of the Complainants’ website. It appears that in reliance on misleading or confusing Internet users in this way the Respondent most likely operates this website for commercial gain by earning revenue from it on a pay per click basis, as was found to be the case in the 5 previous UDRP cases in which the Respondent has been involved, and in all of which it was found to have conducted itself in bad faith. In the overall circumstances of this case it seems to the Panel that the requirements of paragraphs 4(b)(iv) (wilfully diverting and confusing Internet users for commercial gain) of the Policy has been met and therefore that the Respondent is deemed under paragraph 4(b) of the Policy to have both registered and used the disputed domain name in bad faith.

The Panel notes that the disputed domain name was first registered in 2003 and that there is no explanation as to why the Complainants took until September 2012 to communicate with the Respondent. Previous panels have not found that delay in bringing a complaint is not fatal to a finding of bad faith unless the overall circumstances militate against a finding of no rights or legitimate interests or of bad faith. See for example The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057. The Panel finds that considering the overall circumstances and the evidence of registration and use in bad faith as set out above, the Complainants’ interest in preventing the continuing use of its mark in the disputed domain name to confuse or mislead Internet users is of primary concern here.

As a consequence, the Panel finds that the disputed domain name was both registered and used in bad faith and that the Complaint succeeds under the third limb of the Policy.

7. Decision

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 <hopkinsmedicine.com> be transferred jointly to The Johns Hopkins University and to The Johns Hopkins Health System Corporation. The Panel notes that it makes the transfer order to these entities jointly as they are the relevant Complainant owners of the United States registered trade marks relied upon and which the Panel has found to comprise “trade mark rights” for the purposes of the first element of the Policy.

Alistair Payne
Sole Panelist
Date: March 17, 2013

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