WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Medical Recruitment Pty v. Kerry McGuinness / Medlink

Case No. D2013-0768

1. The Parties

The Complainant is International Medical Recruitment Pty of Melbourne, Victoria, Australia represented by Hunton & Williams, Australia.

The Respondent is Kerry McGuinness / Medlink of Wanganui, New Zealand.

2. The Domain Names and Registrar

The disputed domain names <imrmedical.biz>, <imrmedical.info>, <imrmedical.net> and <imrmedical.org> (the ““imrmedical” domain names”) are registered with Hostopia.com Inc. d/b/a Aplus.net (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2013. On April 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 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 May 6, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2013.

The Center appointed James McNeish Innes as the sole panelist in this matter on June 7, 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 Complainant and its predecessors have operated a business in New Zealand and Australia under the name “IMR” since October 2001 providing recruitment and placement services for medical workers. It has acquired rights in the names “imrmedical” and “IMR” by reason of its significant use of those names in relation to the provision of medical recruitment services, primarily in New Zealand and Australia. It has promoted and marketed the services of the business on a website using the domain name <imrmedical.com> since January 2004. It has also used the domain name <imrmedical.com.au> since September 2008. The record confirms that the domain name <imrmedical.com> was created on January 23, 2004 and the domain name <imrmedical.com.au> was created on September 8, 2008. The Complainant’s marks IMR MEDICAL, IMR INTERNATIONAL MEDICAL and IMR LOCUM BANK are registered in Australia and confirmed by the record.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

(a) The Complainant is a substantial business. It currently employs 20 people. Since 2007, the Complainants offices have been located at level 6, West Tower, 608 St Kilda Road, Melbourne, Victoria, Australia, where it has 280 square meters of floor space. From 2001 to 2006, the Complainant’s (and its predecessor’s) offices were located at 23/ 2-6 New Street, Richmond, Victoria, Australia.

(b) It promotes its services at several international trade fairs each year. These include:

(i) The world Psychiatric Association International Congress, held in Melbourne, Australia in 2007.

(ii) The British Medical Journal Fair in London, UK in 2009.

(iii) The Radiological Society of North America Fair in Chicago, Illinois USA in 2009.

(iv) The American Psychiatric Fair in San Francisco, California USA in 2009.

(v) The American Psychiatric Association Fair in Honolulu, Hawaii USA in 2011.

(vi) American Society of Anesthesiologists (ASA) in Orlando, Florida USA in 2008.

(i) A seminar called “Work, Live and Play in New Zealand” conducted by the Complainant in London, UK in October 2009.

(ii) Presentations by the Complainant to the Knox Division of General Practice Expo in East Ringwood, Victoria in December 2008.

(iii) Seminars conducted by the Complainant in Sydney, Cairns, Townsville, Brisbane, Hobart and Melbourne, Australia in July 2008.

(d) The Complainant produces and distributes a guide to assist doctors working in Australia and New Zealand, entitled “The Doctors Guide to Working in Australia and New Zealand”.

(e) The Complainant regularly advertises its services in third party publications and websites.

(f) The Complainant provides recruitment and placement services for medical workers, primarily in New Zealand and Australia. Applications for positions can be made online using the Complainant’s website. Since 2006, the Complainant has received more than 11,000 job applications each year, through its website alone.

(g) Since the commencement of its business in October 2001, the Complainant has made more than 3,400 job placements for medical workers in New Zealand and Australia.

(h) The Complainant has registered the names IMR MEDICAL, IMR INTERNATIONAL MEDICAL RECRUITMENT and IMR LOCUM BANK as trade marks in Australia. This is confirmed by the record.

(i) For the reasons referred to above, the Complainant believes there is a strong connection between the names IMR and IMRMEDICAL and the medical recruitment services provided by the Complainant in New Zealand and Australia, among a significant portion of medical workers, employers of medical workers, and other persons who deal with providers of medical recruitment services.

(i) The Respondent’s “imrmedical” domain names are similar to the Complainant’s IMR name.

(j) The Respondent’s “imrmedical” domain names are identical to the Complainant’s domain names <imrmedical.com> and <imrmedical.com.au>, except for the different country code top level domain names and generic top level domain names.

(k) The Respondent has no rights or legitimate interests in respect of the “imrmedical” domain names.

a. The business carried on by the Respondent is known by the name “Medlink”, and has never been commonly known by the name “IMR” or “imrmedical”.

b. The Respondent’s “imrmedical” domain names are being used misleadingly to divert consumers of the Complainant’s services to the Medlink business.

(l) The Respondent’s “imrmedical” domain names are used to promote and advertise the Medlink business which provides recruitment and placement services for medical workers in New Zealand. That is, the Respondent’s “imrmedical” domain names are used in relation to the same kind of services as the Complainant provides in New Zealand and Australia.

(m) It appears from the website at the Respondent’s “imrmedical” domain names that the Medlink business is trading under the name “Medlink” or “Medlink International Recruitment Centre”, not under the name “imrmedical” or “IMR”. There is no reference to the name “imrmedical” or “IMR” on the website, except in the Respondent’s “imrmedical” domain names.

(n) Also, the websites at the Respondent’s “imrmedical” domain names are identical to the website at the <medlink.co.nz> domain name. According to the records of the New Zealand Domain Name Commission (“NZDNC”), the “medlink.co.nz” domain name has been registered since September 27, 2000. However, the Respondent’s “imrmedical” domain names were only registered on May 13, 2008 by which date the Complainant had established a significant reputation in the names IMRMEDICAL and IMR in relation to the provision of medical recruitment services in New Zealand and Australia, as discussed above.

(o) The Respondent’s “imrmedical” domain names were registered and are being used in bad faith. There is no proper reason for the registration or use of the Respondent’s “imrmedical” domain names by the Medlink business in relation to the provision of medical recruitment services. Having regard to those matters, the logical inference to draw is that the Respondent’s “imrmedical” domain names were registered and are being used by the Medlink business in order to intentionally attempt to attract, for commercial gain, internet users to the Medlink business by creating confusion with the Complainant’s IMRMEDICAL and IMR marks as to the source, sponsorship, affiliation, or endorsement of the Medlink business.

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) That the “imrmedical” domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

(ii) That the Respondent has no rights or legitimate interests in respect of the “imrmedical” domain names.

(iii) That the “imrmedical” domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant contends that the “imrmedical” domain names are identical or confusingly similar to its mark for the following reasons:

(a) The Respondent’s “imrmedical” domain names are identical to the Complainants domain names (<imrmedical.com> and <imrmedical.com.au>), except for the different country code top level domain names and generic top level domain names.

(b) The Respondent’s “imrmedical” domain names are also very similar to the Complainant’s IMR name.

The Panel accepts the Complainant’s contentions. The “imrmedical” domain names are confusingly similar to the Complainant’s mark. The Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent's rights or legitimate interests in the domain name for the purpose of paragraph

4(a)(ii):

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 a response and has failed to invoke any circumstance which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Respondent has no rights or legitimate interests in the “imrmedical” domain names. The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy contains the following provisions under the heading “Evidence of Registration and Use in Bad Faith”. For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith:

(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 web site or location.

The Respondent has made no Response in this connection. The Complainant has made contentions that would lead to situations mentioned in paragraph 4(b)(iv). The Panel accepts the Complainant’s assertion that the Respondent has attempted to divert users to its websites for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a service on the Respondent’s websites. The Panel finds that paragraph 4(a)(iii) of the Policy, has been satisfied.

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 names <imrmedical.biz>, <imrmedical.info>, <imrmedical.net> and <imrmedical.org> be transferred to the Complainant.

James McNeish Innes
Sole Panelist
Date: June 21, 2013