World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZocDoc, Inc. v. Qian Jin

Case No. DCO2011-0029

1. The Parties

Complainant is ZocDoc, Inc., New York, New York, United States of America, represented by Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP, United States of America.

Respondent is Qian Jin, Nanjing Guojiashan, the People’s Republic of China, self represented.

2. The Domain Name and Registrar

The disputed domain name <zocdoc.co> is registered with My.CO Gateway.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2011. On May 12, 2011, the Center transmitted by email to My.CO Gateway a request for registrar verification in connection with the disputed domain name. On May 13, 2011, My.CO Gateway transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 16, 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 Respondent of the Complaint, and the proceedings commenced on May 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2011. The Response was filed with the Center on May 24, 2011.

The Center appointed Ross Carson as the sole panelist in this matter on June 6, 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

Complainant is a privately-held Delaware corporation formed in 2007 with corporate headquarters in New York City and operations in Chicago, Dallas, Los Angeles, San Francisco and Washington D.C. Complainant provides a free online service that allows patients to locate and book appointments with doctors and dentists. Since 2007, Complainant has used its ZOCDOC trademark in association with its online patient booking service. Complainant has registered thousands of doctors and booked tens of thousands of appointments. Complainant was voted by Forbes as the Best Small Business in America in 2010. Complainant has received press coverage in such well known publications as The New York Times, NBC, CNN, USA Today, and TechCrunch. Complainant has raised US $20M in venture capital from reputable investors such as The Founders Fund, Kholsa Ventures, and Jeff Bezos, the founder and CEO of Amazon.com.

Complainant is the owner of United States Trademark Registration No. 3408771 for the trademark ZOCDOC registered April 8, 2008 in relation to services in International Class 44, more particularly in relation to the services: “Providing health care information by telephone and the Internet”. The application was filed on August 3, 2007, showing a date of first use in commerce of July 15, 2007. Complainant is the registered owner of German Trademark Registration No. 302009000955, registered May 12, 2009, for the trademark ZOCDOC registered in relation to services in IC 44. Complainant is also the registered owner of Australian Trademark Registration No. 1372546 for the trademark ZOCDOC registered October 18, 2010 in relation to services in IC 44.

Complainant registered its domain name <zocdoc.com> on April 30, 2009. Respondent registered the disputed domain name <zocdoc.co> on July 20, 2010.

5. Parties’ Contentions

A. Complainant

A.1. Identical or Confusingly Similar

Complainant states that its registered trademark ZOCDOC referred to in section 4 is a unique English word designed as a rhyming play on the shorthand word for “doctor”: “doc”. Complainant further states that its trademark ZOCDOC has been in use in the USA since July 15, 2007, has been the subject of widespread reports in media in the United States of America concerning Complainant’s services of providing lists of doctors and dentists available for appointments for their services.

Complainant submits that previous UDRP panels have found that a disputed domain name that incorporates the whole of a complainant’s trademark supports a finding of confusing similarity. See, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark”.

Complainant further submits that previous UDRP panels have held that “[t]he mere addition of the ccTLD (country code top-level domain) ‘.co’ is not enough to avoid similarity between the disputed domain name and the trademark. See, Fedération Française de Tennis (FTT) v. Marimuthu Devendran, WIPO Case No. DCO2011-0006). Neither the addition of a purely descriptive/generic term to a well-known mark nor the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See, Pirelli & C. S.p.a. v. Cristian Bello, WIPO Case No. DCO2011-0002).

A.2. No Rights or Legitimate Interests in respect of the Domain Name

Complainant states that it has in no way authorized Respondent to affiliate itself in any way with Complainant. Respondent does not have a legitimate interest in the disputed domain name. The full trademark of Complainant is used within such disputed domain name, and Respondent has not been authorized to use such trademark.

Complainant submits that Respondent’s use of Complainant’s mark also demonstrates an illegitimate commercial use in respect of the disputed domain name. Respondent’s use of the disputed domain name demonstrates that its primary purpose is to reap commercial benefits from Complainant’s trademark. Respondent is “domain parking” on the disputed domain name. Domain parking is the advertising monetization practice of registering an Internet domain name without using it for services or placing any content on the website and instead “reserving the name for future development, to protect against the possibility of cybersquatting, or to engage in cybersquatting. ”(Wikipedia, ”www.en.wikipedia.org/wiki/Domain parking, 2010)”. The disputed domain name enlists a service from Bodis, a landing page service company that enables domain name owners to add minimal content and generate revenue from advertisements and click throughs from site visitors. The purpose of the Bodis service is to monetize underdeveloped domain names where users see keywords and ads that are directly related to what they are looking for. When users click on an advertisement or a link that they believe will take them to the genuine site desired in their search, the domain name owner earns money. By Respondent using a generic landing page running the Bodis service on the disputed domain name, Respondent earns a profit from the Complainant’s trademark every time a user types the disputed domain name <zocdoc.co> instead of Complainant’s domain name <zocdoc.com> into his/her browser, lands on the page and clicks on a strategically placed keyword advertisement.

Complainant further submits that Respondent’s failure to develop an active website corresponding to the disputed domain name is further evidence supporting the conclusion that Respondent has no right or legitimate interests in this domain name. In Pirelli & C. S.p.a. v. Cristian Bello, WIPO Case No. DCO2011-0002, the panel held that respondent’s lack of commercialization of a disputed domain name with a bona fide good or service can serve as evidence of its lack of a legitimate interest in the property. In this case, Respondent is commercializing the site for an illegitimate purpose to take commercial advantage of erroneous traffic. Consequently, Respondent should not be permitted to have rights in the disputed domain name.

A.3. Registration in Bad Faith

Complainant submits that Respondent acquired the disputed domain name more than three years after Complainant’s adoption, use and registration of its ZOCDOC trademark. Complainant further submits that given the increased amount of online and off line press attention that Complainant received in the second half of 2010 following its most recent round of financing, it can be concluded that Respondent registered the disputed domain name in late 2010 to take advantage of the Complainant’s trademark and profit from public confusion.

Complainant further submits that the unique spelling of Complainant’s trademark ZOCDOC and the incorporation of the spelling in the disputed domain name indicates that the disputed domain name was registered to take advantage of and redirect Internet traffic caused by Complainant visitors who may misspell the intended URL. This demonstrates that the disputed domain name was registered in bad faith with the intent to mislead and confuse the public as to its source or origin in an attempt to attract Internet users for commercial gain. Respondent knew that users would frequently make a mistake typing a URL, especially given the increasing prominence of the “.co” domain name identifier. Complainant states that Respondent thus purposefully registered an English language domain name attached to an up-and-coming American corporation in order unfairly extract profit from the search process as noted above.

A.4. Use in Bad Faith

Complainant submits that the spelling of the disputed domain name indicates that the disputed domain name was registered to take advantage of and redirect Internet traffic caused by Complainant visitors who may misspell the intended URL. This demonstrates that such URL was registered in bad faith with the intent to mislead and confuse the public as to its source or origin in an attempt to attract Internet users for commercial gain. Respondent knew that users would frequently make a mistake typing a URL, especially given the increasing prominence of the “.co” domain name, and Respondent thus purposefully registered an English language domain name attached to an up-and-coming American corporation in order to unfairly extract profit from the search process. As noted above, Respondent has actively engaged third-party web service providers to provide a parking page associated with the disputed domain name. Consequently, visitors are likely to be confused that Respondent is affiliated with and/or authorized to provide goods and services associated, licensed or sponsored by Complainant. Respondent’s efforts in this regard have been held by prior UDRP panels to constitute acting in bad faith. See, Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO Case No. D2005-0837. “Even if the Panel is not convinced that the texts posted on Respondent’s website directly infringe on Complainant’s copyrighted web content, it is satisfied that such content leads Internet users into confusion. Because the disputed domain name is almost identical to Complainant’s trademark, users searching for Complainant’s website and inadvertently misspelling ... may connect to Respondent’s website, and after seeing its content, they may believe that it is Complainant’s website. The resulting confusion provides a ground for a finding of bad faith use.”

Complainant further submits that in addition, a finding of bad faith may be made where the respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the domain name. See,Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763). Because “Zocdoc” is not an official word in the English language and specifically created by Complainant for use in commerce, it can be deduced that Respondent had actual knowledge of Complainant’s trademark and intentionally chose to infringe upon such trademark for commercial gain. It is also conceivable that when Respondent applied to register the disputed domain name, it ran a search on “zocdoc” and found”, “www.zocdoc.net” and “www.zocdoc.org” were already taken and owned by Complainant. Consequently, it appears that Respondent then registered the next logical domain name that would retrieve accidental traffic from Complainant’s primary commercial property and thus registered “zocdoc” with a “.co” extension.

Complainant further states that because Respondent cannot be contacted through legitimate commercial means, there is an assumption that Respondent must rebut that he is claiming use of the domain name for another purpose. Since such purpose cannot be verified, it can be concluded based upon the other facts and circumstances set forth herein that Respondent seeks only to use the disputed domain name to infringe upon the rights of Complainant. Therefore, Respondent should not be permitted to have ownership of the disputed domain name.

B. Respondent

B.1. Identical or Confusingly Similar

Respondent states that Complainant owns the domain name <zocdoc.com> but it does not mean that he can own other domain suffixes. I know that there are now several hundreds of domain suffixes; suppose one has the suffix of “ABC.COM”, he/she can have “ABC.CO”, “ABC.CN”, “ABC.US”, etc. with the same suffix. Then why are there so many suffixes? I guess there are so many suffixes to provide more choices for more people who want to register domains they favour or need, and to avoid monopoly.

Respondent further submits that the disputed domain name <zocdoc.co> is a national top level domain in Columbia, and it shall be governed by the law of Columbia. Though the other side owns the ZOCDOC trademark in America, Germany and Australia, they are not allowed to be extended to Columbia. What’s more, there are 45 categories of trademarks, so it does not mean that others are not permitted to register the same trademark in different categories if the other side owns 1 or 2. The other side is not unique or monopolistic, just like the situation that I have 35 categories of trademarks for “sex” in China, but I cannot arbitrate <sex.com> or <sex.us> in America.

B.2. Rights or Legitimate Interests in respect of the Domain Name

Respondent states that he registered the disputed domain name <zocdoc.co> to build a website for sharing documents between friends. Respondent submits that DOC is a suffix of a filename and also has a meaning of “document”, not referring to “Doctors” as Complainant alleges. Seen from an intuitive perspective, a majority of people will not take DOC as “Doctors” but as “document”.

“As for parking zocdoc.co at bodis.com, I want to say that since my website, lack of funds and technology, is during the preparation, parking the domain at bodis.com enables me to build a webpage with the funds and technology of bodis, and to make google, yahoo and other search engines included in advance with the current webpage, which is extremely useful to me. Besides, the current webpage it parks at lists the key word of “doc” rather than “Doctors”. The website has nothing to do with the other side. The other side said that I used the trademark of complainant to benefit from it and confuse the public, which is not true.”

B.3. Registration in Bad Faith

Respondent further submits that the generic top-level country code domain name (“ccTLD”) “.co” had a Sunrise trademark period of over 1 month before the fully open registration period. At that time, there were extensive reports by media and websites concerning registration of the ccTLD “.co”. Complainant failed to register <zocdoc.co> with his trademark in a reasonable way, and it was construed as a waiver of his rights. Respondent states that he registered <zocdoc.co>, which was reasonable and under the protection of the law, as Respondent had failed to register “www//zocdoc.co”.

B.4. Use in Bad Faith

Respondent states that he legally owns the disputed domain name <zocdoc.co> and he has never sold it in any way at any time. Respondent further states that he wants to utilize the website associated with the disputed domain name for sharing documents between friends. Respondent submits that as is known to all, DOC is a suffix of a filename and also has a meaning of “document”, not referring to “Doctors” as Complainant alleges. Respondent asserts that seen from an intuitive perspective, a majority of people will not take DOC as “Doctors” but as “document”. Respondent further asserts that the explanation of the other side sounds kind of farfetched and even importunate.

“As for parking zocdoc.co at bodis.com, I want to say that since my website, lack of funds and technology, is during the preparation, parking the domain at bodis.com enables me to build a webpage with the funds and technology of bodis, and to make google, yahoo and other search engines included in advance with the current webpage, which is extremely useful to me. Besides, the current webpage it parks at lists the key word of “doc” rather than “Doctors”. The website has nothing to do with the other side. The other side said that I used the trademark of Complainant to benefit from it and confuse the public, which is not true.”

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant is the owner of United States Trademark Registration No. 3408771 for the trademark ZOCDOC registered April 8, 2008 in relation to services in International Class 44, more particularly in relation to the services: “Providing health care information by telephone and the Internet”. Complainant’s application for the trademark ZOCDOC in the United States of America was filed on August 3, 2007, showing a date of first use in commerce of July 15, 2007. Complainant is also the owner of trademark registrations for the trademark ZOCDOC in Germany and Australia. Further particulars of Complainant’s trademark registrations and use of its trademark ZOCDOC in the United States of America since well before Respondent registered the disputed domain name <zocdoc.co> on July 20, 2010 are found in Section 4 above.

The disputed domain name <zocdoc.co> incorporates the entirety of Complainant’s trademarks ZOCDOC. Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See, PepsiCo. Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (a domain name is “nearly identical or confusingly similar” to a complainant’s mark when it “fully incorporate[s] said mark”; holding <pepsiadventure.net>, <pepsitennis.com>, and other domain names confusingly similar to the complainant’s PEPSI mark) and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768.

Previous UDRP panels have held that “[t]he mere addition of the ccTLD (country code top-level domain) “.co” is not enough to avoid similarity between the disputed domain name and the trademark. See, Fedération Française de Tennis (FTT) v. Marimuthu Devendran, WIPO Case No. DCO2011-0006.

When applying for the disputed domain name with the Registrar for the cc TLD in Columbia Respondent agreed to be bound by terms of the registration agreement. The terms of the registration agreement provide that any disputes regarding the disputed domain name shall be decided pursuant to Policy and Rules (including any rules and principles that the Panel deems applicable). Respondent’s submission that the dispute relating to the disputed domain name should be decided pursuant to the laws of Columbia is not accepted in this particular case as the Panel does not find it necessary to look to specific national laws to decide this case under the UDRP.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s registered trademarks or any trademarks confusingly similar thereto.

Complainant’s evidence shows that Respondent has retained an intermediary landing page Service Company to create a webpage which contains links relating to information on health, medicine, and including references to Complainant’s website “www.zocdoc.com”. Complainant position is that Respondent’s use of the parking page to generate click through revenue from Internet users associating the disputed domain name with Complainant’s ZOCDOC trademark is not a legitimate use of the disputed domain name.

Respondent’s position is that he registered the disputed domain name <zocdoc.co> to build a website for sharing documents between friends. Respondent submits that DOC is a suffix of a filename and also has a meaning of “document”, not referring to “Doctors” as Complainant alleges. Respondent’s position is that seen from an intuitive perspective, a majority of people will not take DOC as “Doctors” but as “document”. Respondent‘s position is that he is currently using the domain name in association with a parking page because of a lack of funds and technology to build the website for sharing documents between friends.

The Panel finds that Respondent has failed to submit any evidence of use or demonstrable preparations to use the disputed domain name or of a name corresponding to the domain name in connection with a bona fide offering of goods or services. Respondent’s submission that the suffix “doc” of the disputed domain name as being an abbreviation for documents is relevant. However, Respondent has not advanced any position as to why the prefix “zoc” supports the development of a website for sharing documents among friends.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

C. 1. Registered in Bad Faith

Complainant has established that it is the owner of three registered trademarks for the trademark ZOCDOC. The earliest of the trademark registrations is United States Trademark Registration No. 3408771 for the trademark ZOCDOC registered April 8, 2008 in relation to services in International Class 44, more particularly in relation to the services: “Providing health care information by telephone and the Internet”. The application was filed on August 3, 2007, showing a date of first use in commerce of July 15, 2007. Respondent registered the disputed domain name <zocdoc.co> on July 20, 2010.

The disputed domain name incorporates the whole of Complainant’s trademark ZOCDOC. The term “zocdoc” appear to be a coined term and no evidence was submitted to the contrary. Respondent argues that the ccTLD “.co” had a Sunrise trademark period of over 1 month before the fully open registration period. Respondent argues that at that time, there were extensive reports by media and websites concerning registration of the ccTLD “.co”. Respondent states that Complainant failed to register <zocdoc.co> which incorporates its registered trademark in a reasonable way and Respondent construed the failure of Complainant to register the disputed domain name as a waiver of its rights in the disputed domain name. Respondent states that he registered <zocdoc.co>, which was reasonable and under the protection of the law, as Complainant had failed to register <zocdoc.co>. Respondent does not deny that it was aware of Complainant’s registered trademark rights in the trademark ZOCDOC at the time of registration of the disputed domain name. Respondent is in error in concluding that Complainant waived its trademark rights in its registered trademark ZOCDOC by failure to register the disputed domain name in Columbia.

The Panel finds on a balance of probabilities that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a respondent’s website constitutes evidence of bad faith use of a domain name.

Respondent’s webpage associated with the disputed domain name include links to entities providing health services the same general field of services offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent’s use of the disputed domain name which is confusingly similar to Complainant’s registered trademark ZOCDOC enables Respondent to draw Internet users to the website associated with the disputed domain name for profit by misleading Internet users associating the disputed domain name with Complainant. Respondent admits that he is receiving click-through profits from the links associated with the parked pages. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. See, e.g., Google Inc. v. Forum LLC, NAF Claim No. 1053323 (finding bad faith registration and use where <googlenews.com> resolves to a commercial search engine website generating click-through advertising fees).

The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, and that Complainant satisfies the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <zocdoc.co> be transferred to Complainant.

Ross Carson
Sole Panelist
Dated: June 20, 2011

 

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