WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Organización Sánitas Internacional S.A., formerly known as Compañia de Promociones Internacionales de Servicios de Salud S.A. "Soprinsa" v. Domain Admin / Paulo Roberto Ribeiro Guimaraes
Case No. D2014-1310
1. The Parties
The Complainant is Organización Sánitas Internacional S.A., formerly known as Compañia de Promociones Internacionales de Servicios de Salud S.A. "Soprinsa" of Bogotá, Colombia, represented by Pinzón Pinzón & Asociados, Colombia.
The Respondent is Domain Admin of Queensland, Australia / Paulo Roberto Ribeiro Guimaraes of São Paulo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <medisanitasbrasil.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 31, 2014. On August 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 4, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 8, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on August 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 2, 2014.
The Center appointed Andrea Dawson as the sole panelist in this matter on September 9, 2014. 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 Organización Sanitas Internacional S.A is a multinational healthcare company.
The Complainant has several subsidiaries including, Colsánitas, EPS Sánitas and Medisanitas.
The Complainant is the owner of the trademark registration MEDISANITAS No. 161628 dated December 28, 2013.
The disputed domain name <medisanitasbrasil.net> was registered on May 21, 2014.
5. Parties' Contentions
The Complainant provides evidence demonstrating its ownership of the trademark MEDISANITAS.
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's trademark. The disputed domain name reproduces entirely the Complainant's trademark, plus the addition of a geographical term – "Brasil" (the Lusophone spelling of the country Brazil).
The Complaint states that previous UDRP Panels have found that the addition of a geographical term to a trademark is insufficient in itself to avoid finding confusing similarity under the first element of the UDRP.
The Complainant states that it has not licensed or otherwise authorized the Respondent to use its trademark. The Complainant further adds that the Respondent has never been known in Brazil with such name.
The Complainant states that previous UDRP Panels have found that the incorporation of a trademark into a domain name by a registrant having no plausible explanation for doing so is an indication of bad faith registration. Furthermore, the disputed domain name currently resolves to a parking page and has no formal use.
The Complainant additionally states that the Respondent use of the graphical elements on its website is dangerously similar to the MEDISANITAS logo, found on the website "www.medisanitasbrasil.com" owned by the Complainant, hence creating a likelihood of confusion with the Complainant's trademark.
Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered the disputed domain name in bad faith. The Complainant requests that the Panel order transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy stipulates that the Complainant must prove the following three elements in order to be successful in its action:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the trademark MEDISANITAS. The disputed domain name consists of the term "medisanitas", with the addition of the geographical term "Brasil". As indicated by the Complainant, previous UDRP Panels have found that the mere addition of a geographical indication to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark, since the Internet user seeks the trademark and not an indication of a country. Furthermore, the Internet user will simply consider the geographical factor as such, a place locator.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP Panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name. The present Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.
The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark and that the Respondent has no prior rights or legitimate interests in the domain name.
Furthermore, the Panel finds that the Respondent is neither commonly known by the name "medisanitas" or "medisanitas Brazil" nor in any way affiliated with Complainant, nor authorized or licensed in any other way to use the MEDISANITAS trademark.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
Firstly, "medisanitas" is not a common term in any language. It has no official meaning in any language, to the knowledge of this Panel. Therefore, one can assume that it is a coined word. Consequently, as mentioned by the Complainant, it is unlikely that Respondent was unaware of Complainant when the disputed domain name was registered. Furthermore the Panel finds that it is impossible to conclude that Respondent did not have the Complainant's trademark in mind when registering the disputed domain name, especially when reviewing the screenshots provided in the Complaint in which one can clearly identify a logo extremely similar if not identical to that registered and used by the Complainant. Not only did the Respondent reproduce the Complainant's trademark but also its graphics and logos used in Complainants website. In light of the above, the Panel has no hesitation in finding that the disputed domain name was registered in bad faith.
In addition to the above, the fact that the Respondent's website referred to health and medical matters, as shown in the screenshots provided in the Complaint, indicates that the Respondent had perfect knowledge of the Complainant's existence and the services it provided. It cannot be a mere coincidence that the website at the disputed domain name offered the same services as those of the Complainant.
In view of the above, it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <medisanitasbrasil.net> be transferred to the Complainant.
Date: September 15, 2014