WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DOTMED.COM, INC. v. Hexap and Promopixel SARL
Case No. D2012-1117
1. The Parties
The Complainant is DOTMED.COM, INC. of New York, United States of America (“U.S.”), represented by Rosensteel Law, U.S.
The Respondents are Hexap and Promopixel SARL of Paris, France, represented by Crowell & Moring, Belgium.
2. The Domain Names and Registrars
The disputed domain names <aboutdotmed.com>, <supportdotmed.com> and <thedotmed.com> are registered with Gandi SARL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On the same date, the Center transmitted by email to Gandi SARL a request for registrar verification in connection with the disputed domain names. On June 1, 2012, Gandi SARL transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details.
On June 5, 2012, the Center informed the parties that the Complaint had been submitted in English whilst the language of the registration agreement for the disputed domain names is French. On June 8, 2012, the Respondent stated that no objection was submitted for English to be the language of proceedings but also stated that proceedings in French would not have been inconvenient for Complainant. Consequently, the Center proceeded in both languages.
On June 5, 2012, the Center informed Gandi SARL of the expiry of the disputed domain names. On June 6, 2012, Gandi SARL informed the Center that no action was required by the parties to keep the disputed domain names under registrar lock and that the administrative procedure could continue. On June 7, 2012, the Complainant requested for English to be the language of the administrative proceedings.
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 Respondents of the Complaint, and the proceedings commenced on June 15, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2012. The Response was filed with the Center on July 3, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on July 12, 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 is a provider of used medical equipment and operates an auction website for the sale of used medical equipment. The Complainant owns several trademark registrations for the mark DOTMED and DOTMED.COM, as follows:
DOTMED – U.S. Registration No. 3,642,643, registered on June 23, 2009.
DOTMED – European Registration No. 9061524, registered on December 27, 2010.
DOTMED.COM – U.S. Registration No. 2,533,361, registered on January 29, 2002.
DOTmed Logo – U.S. Registration No. 2,857,363, registered on January 29, 2004.
The Complainant has also filed trademark applications for the DOTMED trademark in China and India. The Complainant has used the DOTMED trademarks since 1999 in association with the service of providing online sales of medical equipment and related services, but its registered services also include communication servers; website development and hosting; domain name registration; online electronic bulletin board for transmission of messages.
The Complainant operates a website at “www.dotmed.com” and has 180,461 registered users worldwide.
The Respondent Promopixel SARL (“Promopixel”) is a company which provides web hosting and website development for professionals. In early 2012, Promopixel created an affiliated company called Hexap. The Respondent, Hexap, was established with the purpose of preparing, filing and promoting an application with ICANN for the new gTLD “.med”. Hexap is a limited liability company that was founded by healthcare professionals.
The Respondents registered the domain names <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> on August 25, 2011, June 21, 2011 and June 21, 2011, respectively.
At the time the Complaint was filed on May 31, 2012, the disputed domain name <aboutdotmed.com> reverted to a website that provided information regarding the ICANN application for the “.med” gTLD and an opportunity for Internet users to provide their online support. The domain names <thedotmed.com> and <supportdotmed.com> both revert to a parking page.
5. Parties’ Contentions
The Complainant owns many trademark registrations for the trademark DOTMED around the world including: U.S. Trademark Registration Nos. 3,642,643, 2,533,361, 2,857,363 and European Registration No. 9061524, which date back to as early as January, 2002. The Respondents have registered the disputed domain names <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> which are identical to the Complainant’s registered trademark, except for the addition of the generic words “about”, “the” and “support”, which do not distinguish the disputed domain names from the Complainant’s trademark.
Rights or Legitimate Interests
The Respondents are not publicly known by the DOTMED name, and the Complainant submits that the Respondents have no past or current business relationship with the Complainant. The Respondents were never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondents are not making a bona fide use of the disputed domain names, and have used the disputed domain names to offer competitive and/or related services to the services offered by the Complainant, namely domain name registration, website hosting and server hosting for medical professionals. Accordingly, the Complainant contends that the Respondents cannot have any rights or legitimate interests in the disputed domain names.
Registered and Used in Bad Faith
The Complainant contends that the Respondents have registered and are using the disputed domain names in bad faith for the following reasons: (1) the Complaint’s trademark rights in the mark DOTMED are well-known, and the Respondents had to be aware of the Complainant’s trademark rights when they registered the disputed domain names <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> in June and August of 2011; (2) the Respondents have used the disputed domain names in association with a website offering competing and/or related services to the services offered by the Complainant, namely domain name registration, website hosting and server hosting for medical professionals; (3) the Respondents have engaged in a pattern of conduct of registering domain names in order to prevent such registration by competitors, including Complainant. The Respondents have registered over 120 domain names, most of which are warehoused and owned passively; (4) the Respondents failed to respond to the cease and desist letters sent by the Complainant; (5) the Respondents attempted to disguise their identity and eschew their legal obligations by providing invalid email addresses in the public registry information; (6) the Respondents’ trademark application for .MED was refused in opposition proceedings before the Office for Harmonization in the Internal Market (“OHIM”); and (7) the Respondents registered confusingly similar domain names to attempt to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s DOTMED trademarks.
The Respondents submit that the disputed domain names <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> are not confusingly similar to the Complainant’s DOTMED trademark. The Respondents rely on case law that has held that the addition of letters or words can be sufficient to distinguish word marks terminating by MED. The Respondents rely on the ruling in the INPI opposition No. B 626 335, dated September 29, 2005 in association with the word mark NIMED, and INPI opposition No. B1 175 819 dated September 29, 2008 in association with the word mark NIMED.
The Respondents contend that they have a legitimate right or interest in the disputed domain names because the Respondents are making a bona fide use of the disputed domain names in question. The Respondents contend that their trademark application in France, under serial No. 3852680 was partially accepted on April 17, 2012 by the OHIM. The Opposition Decision that rejected part of the application is the subject of appeal proceedings, which remain ongoing at the time the Complaint was filed.
The Respondents claim that they have a right and legitimate interest in the disputed domain names because of their application to ICANN for the “.med” gTLD designation. On January 12, 2012 the Respondents filed an application for the “.med” designation. At this time no domain name can include “.” as part of the name, leading the Respondents to apply for the phonetic equivalent, namely “dotmed”. The Respondents registered <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> in June and August 2011 in order to promote and advertise their proposed “.med” gTLD projects and services.
The Respondents contend that they have over 10 years experience in registering, managing and hosting domain names and nearly 3 years experience in managing sectoral domain names for the French Network Information Centre, or AFNIC (<medicin.fr>; <chirurgiens-dentistes.fr>; <pharmacien.fr>, etc.). The Respondents contend that this experience supports that they are well equipped to handle the anticipated technical, operational and financial challenges that the new “.med” gTLD opportunity will present. The registration of the disputed domain names is for the sole purpose of supporting and advertising the “.med” gTLD project.
The Respondents also submit that the disputed domain names were not registered in bad faith and have not been used in bad faith. The disputed domain names were not registered with the Complainant’s DOTMED trademark in mind and without intention to target the Complainant. The Respondents contend that the Complainant’s rights in the DOTMED trademark are restricted to the specific goods and services for which they are registered. Further, the Respondents submit that because ICANN has received 4 other applications for the “.med” gTLD, the Respondents must have the ability to communicate to Internet users the Respondents’ “.med” gTLD project.
The Respondents also contend that the disputed domain names do not revert to any website that provides online auctioning of second-hand medical equipment and parts, which are the primary services offered by the Complainant.
The Respondents submit that the email addresses are not invalid, but rather the emails sent by the Complainant could not be received due to their size.
The Respondents also submit that they are not replicating or using the Complainant’s DOTMED Logo, but rather their own distinctive “.MED” logo which has a significantly different look, design and colour.
The Respondent Promopixel is a web hosting company, which develops websites for professionals with a special focus on the industrial, institutional and scientific market. In order for Promopixel to provide its customers with domain names of interest, Promopixel has a large portfolio of domain names that it hosts for its clients. All domain names have been registered for legitimate purposes related to Promopixel’s business.
The Respondents claim that the Complainant is engaged in reverse domain name hijacking and is attempting to harass or improperly obtain the disputed domain names through these proceedings.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the mark DOTMED by virtue of its various registrations, including U.S. Trademark Registration Nos. 3,642,643, 2,533,361, 2,857,363 and European Registration No. 9061524, which date back to as early as January, 2002.
The Panel finds that the disputed domain names <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> are confusingly similar to the Complainant’s registered trademark DOTMED for the purposes of the Policy. The addition of generic words such as “about”, “the” and “support” do not serve to distinguish the disputed domain names <aboutdotmed.com>, <thedotmed.com> and <supportdotmed.com> from the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Respondents have filed evidence in support of claimed legitimate interests in the disputed domain names, which relates to their application to ICANN to register the new gTLD “.med”. At the present time, the Respondent Hexap is one among a number of applicants for the “.med” gTLD. Respondents explain that the disputed domain names were acquired in order to support their application for the new gTLD. This purpose is borne out by the content of the website associated with the disputed domain name <aboutdotmed.com>, which explains in detail what Hexap describes as its “.med Project”, and its “candidacy” to register the “.med” gTLD. Hexap describes its mission and purpose for the “.med” gTLD as follows:
“1. federate certified and licensed practitioners in the health care sector under a clear common and easy to remember identifier on the Internet;
2. provide stakeholders within the health care sector with a platform on which they can disseminate information in relation to medical topics, and offer products and services to businesses, consumers and, more in particular, patients;
3. provide Internet users in general looking for genuine and reliable medical information, products and services with a clear and unambiguous identifier which provides them access to such information.”
The Panel accepts that Respondents’ purpose in registering the disputed domain names was to enhance its ability to communicate about its “.med Project”, in the face of competition from 3 other applicants seeking the gTLD. As it was not possible to register the precise domain name <about.med.com> (and the related domain names <support.med.com> and <the.med.com>) it was reasonable for the Respondents to adopt the textual equivalent (e.g., <aboutdotmed.com>), without compromising their claim to legitimate rights or interests.
In the circumstances as they now stand, the Panel finds that the Complainant has failed to establish the absence of legitimate rights or interests on the part of the Respondents. However, the Panel is aware that circumstances may change in the future, in that the decision with respect to the pending applications for the “.med” gTLD will ultimately determine whether Respondents succeed in developing their “.med Project”. As a result, this Decision is not intended to preclude any complaint which may arise from different factual contexts in the future.
Accordingly, the Panel finds that Complainant has failed to satisfy the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In light of the findings set out above, it is unnecessary for the Panel to make any determination on bad faith.
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Date: August 9, 2012