WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
MD On-line, Inc. v. Yenta Marketing, Inc.
Case No. D2014-1468
1. The Parties
Complainant is MD On-line, Inc. of Parsippany, New Jersey, United States of America (“U.S.”), represented by Mandelbaum Salsburg P.C.
Respondent is Yenta Marketing, Inc. of Roswell, Georgia, U.S., appearing on its own behalf.
2. The Domain Name and Registrar
The disputed domain name <mdonline.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also on August 27, 2014, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and providing 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 Respondent of the Complaint, and the proceeding commenced on September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014. The Response was filed with the Center on September 28, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 13, 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
Complainant provides background that it was founded in 1995 as a health care technology company working closely with providers, payers and others in the health care industry to increase electronic healthcare transactions between respective groups using Complainant’s suite of products.
Complainant registered the domain name <mdon-line.com> on May 15, 1996.
The Domain Name was initially registered on May 24, 1998 to an entity controlled by Elan Amram, the owner of Respondent Yenta Marketing. The WhoIs records submitted in this case show that the Domain Name was later registered to Respondent on April 23, 2013. The record and the parties reflect that communications between Elam Amram and Complainant or its representatives have taken place as early as 1998 and until June 2011. Both parties recognize and acknowledge these communications as relevant for evaluating the conduct of Respondent in this case.
5. Parties’ Contentions
Complainant states that for over 19 years its trade name, MD ONLINE, has become a familiar brand among doctors’ offices, medical professionals, hospitals, and others. With over 45,000 doctors and medical professionals, and over 2,000 payers and insurance providers, using products and services provided under the MD ONLINE brand, Complainant claims that it has significant recognition in the healthcare industry as being at the forefront of technology.
Complainant provides evidence that since its inception, it and its MD ONLINE brand of products have been recognized by numerous magazines and online trade journals as one of the best brands in the industry. For example, the following is a list of accolades received by Complainant:
- Fast Growing Technology Companies – Deloitte (August 2004, September 2005, January 2006)
- Top Fastest-Growing Companies in the Country – INC. Magazine (October 2004, August 2007, September 2010)
- “Best Overall Company of the Year” – American Business Awards (Finalist, May 2010)
- “Entrepreneur of the Year” – Ernst & Young (NJ, June 2010)
- “New Jersey’s Fastest Growing Company” – NJBIZ (November 2010)
- “Software/IT Company of the Year” – New Jersey Technology Council (December 2010)
- “Telesales Team of the Year” – Stevie Awards for Sales and Customer Service (February 2011)
- “Business of the Year” – NJBIZ (December 2011)
- “Innovator of the Year” at the Next Generation (NG) Healthcare Payers Summit (November 2012)
- Silver Award, 2013 Summit Creative Award competition, “Website Redesign” (June 2013)
- Winner in the 2013 PM360 Trailblazer Award in the Interactive Marketing category for the company’s vRep Interactive Sales Program (October 2013)
- Silver Award, 2014 Summit Creative Award competition, “Consumer Product Website” for the Bromfed DM website (June 2014)
Complainant states that it has been consistently using, growing and building its MD ONLINE brand since 1995, and has done so with success and widespread recognition of the value of its brand. Accordingly, Complainant maintains that it has common law rights in its MD ONLINE brand, and the brand has acquired a substantial level of distinctiveness across many technology sectors worldwide, including in the healthcare sector.
Complainant explains that in 1996, shortly after its formation, it sought to have an Internet presence and acquired the domain name <mdon-line.com>. As the Internet was relatively young, and the expression of being “online” was typically spelled “on-line,” Complainant acquired the domain name for this spelling. Over the following years, the expression “on-line” became less popular and was replaced by many as “ol,” evidenced by companies such as America Online promoting its brand as AOL and using the domain name <aol.com>. Accordingly, in 1997 Complainant allegedly acquired the rights to the domain name <mdol.com>.
Shortly thereafter, in early 1998, Complainant states that it was contacted by Respondent via email asking whether Complainant wanted to acquire the Domain Name, which Respondent had recently acquired. When Complainant expressed interest in the Domain Name, as the spelling MD ONLINE was quickly becoming associated with Complainant’s brand, Respondent demanded several hundred thousand dollars, which at the time was not feasible for Complainant. As these actions took place before the U.S. Anticybersquatting Consumer Protect Act was enacted, and before the UDRP was in place, Complainant did not save these communications as they were not relevant at that time.
(i) Identical or confusingly similar
Complainant contends that because it can demonstrate it has rights in the MD ONLINE mark and brand, which predate the registration date of the Domain Name, the inquiry under this first element shifts to determine whether the Domain Name is confusingly similar to Complainant’s MD ONLINE mark. According to Complainant, whether a domain name is confusingly similar to a trademark under the Policy is generally confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement matters. In addition, graphic elements of a mark need not be considered when assessing identity or confusing similarity. Rather, a domain name that wholly incorporates a registered mark is typically found to be confusingly similar because the adoption of the mark in the domain name is inherently likely to lead people to believe that the complainant is connected with the domain name.
Here, Complainant argues that the Domain Name, <mdonline.com>, is nearly identical, if not exactly so, to Complainant’s well-known MD ONLINE brand and trade name. With the exception of spacing (which is uncommon in domains, and usually only implemented through underscoring), and a hyphen (as Complainant’s legal name is MD On-Line, Inc.), the Domain Name is exactly the same as Complainant’s brand, which it has strived to protect. In light of the nearly identical terms, Complainant submits that the Domain Name is confusingly similar to its mark.
(ii) Rights or legitimate interests
Complainant submits it is well-settled that a complainant must make a prima facie case that a respondent does not have rights or legitimate interest in a domain name, and that a complainant can typically satisfy this burden with evidence demonstrating that the complainant has no connection with the respondent.
Complainant states that the circumstances here are similar, in that it has never licensed or authorized the use of its MD ONLINE mark to Respondent (or anyone associated with Respondent) in any manner, including as part of the Domain Name. Complainant has also never provided its consent to any party to register the Domain Name. In fact, prior to being contacted by Respondent regarding the Domain Name in 1998, Complainant would not have known that Respondent existed because Respondent was not the registered owner of the Domain Name. Moreover, Complainant states that it appears Respondent is in the business of acquiring domain names and attempting to sell them to their rightful owners, as evidenced by its actions taken in 1998. In addition, it appears Respondent is the owner of over 100+ domain names, none of which appear to have active content. Many of Respondent’s domain names, including the Domain Name in this case, are linked to “parking pages,” with content relative to their rightful owner’s business. As explained below, the Domain Name was provided as a parking page showing Complainant’s competitors’ links until communications between the parties in 2011.
Complainant argues that as it has met its burden of showing that Respondent has no affiliation to it, the burden shifts to Respondent to show:
(1) before any notice of the dispute, Respondent used, or made demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services; or
(2) it is has been commonly known by the Domain Name as an individual, business or other organization, even if Respondent has acquired no trademark or service mark rights; or
(3) it is making a legitimate noncommercial or fair use, without intending commercial gain, misleading diversion of consumers, or tarnishing the trademark at issue.
Complainant submits that it will be impossible for Respondent to demonstrate the existence of any of these circumstances. Respondent cannot show that it has used, or made demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services before it received notice of this dispute. Many UDRP decisions consider this a foundational requirement. In addition, it is well established that operating a link farm parking page while using a service mark in a domain name, and providing connection to services competitive with the service mark owner, does not establish rights or legitimate interests.
Accordingly, Complainant states that Respondent has done nothing but register a confusingly similar Domain Name, used it as a parking page for Complainant’s competitors and others, and has no other interest in the Domain Name whatsoever. Thus, Complainant submits that Respondent has no legitimate interest or rights in the Domain Name.
(iii) Registered and used in bad faith
Complainant states that the determination of “bad faith” is a two-part inquiry. That is, the Policy requires a complainant to prove use in bad faith as well as registration in bad faith. However, according to Complainant, this has been the subject of some reconsideration by panels adjudicating particular disputes under the Policy.
According to Complainant, in several decisions UDRP panels have reviewed the Policy’s language and previous decisions under the Policy to determine, in particular, whether the Policy’s requirement of registration and use in bad faith can be satisfied where the disputed domain name may have been registered in good faith but subsequently used in bad faith. Complainant urges that the Panel follow the analysis in these cases where, according to Complainant, the panels expressed the view that, based on a close reading of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder. Complainant also states that in these cases, paragraph 2 of the Policy was considered to provide support for this interpretation. Paragraph 2, entitled “Your Representations”, provides in part: “you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name infringes or violates someone else’s rights.” Complainant argues that this provision not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration, but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations. Thus, even though a party may register a domain name in good faith, if it uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be bad faith registration.
Complainant contends that in the present case, it is clear that the Domain Name was acquired in bad faith by Respondent, and subsequently used in bad faith to this day. Complainant learned of Respondent after a communication between the parties in 1998, where Respondent notified Complainant that it would sell the Domain Name to Complainant but only for several hundred thousand dollars. According to Complainant, because anti-cybersquatting laws were not in place at that time, Complainant did not save these communications – not realizing that one day a procedure would be in place to combat Respondent’s alleged tactics. All that can be provided as a basis of evidence are statements by Complainant recollecting actions taken nearly 15 years ago. However, in view of recent UDRP decisions, and in view of actual proof of bad faith use of the Domain Name by Respondent as recent as 2011, Complainant submits there is satisfactory evidence to show bad faith on the part of Respondent.
Specifically, Complainant states that on April 6, 2011, Complainant sent an email to Respondent asking if the Domain Name was still available for sale and how much Respondent was asking for. Within an hour Respondent replied “I have open offers in the 6 figures[,] make me an offer I can’t refuse.” In response, and in efforts to avoid legal proceedings, Complainant stated “I was honestly thinking in the 80 to 90k range but can act quickly.” Respondent countered that “I appreciate the offer, however I have offers open for twice as much.” Asking for clarity, Complainant asked “it would take $160,000 for you to agree to a deal?” However, such amount was not enough for Respondent, as the response was “I have a standing offer at $157K. I would close a deal at $185K without giving the other party the opportunity to counter it.” Complainant did not respond to Respondent until June 20, 2011, at which time Complainant stated “we are still interested in purchasing MDonline.com, but at a significantly reduced figure from our previous discussions.” In response, Respondent provided the following:
“I appreciate your interest in MDonline.com and as I had previously stated to you back in February this domain is not for sale at your offering price then nor now. In fact, I will not accept any offer below $200K at this time. Bill had made me an offer of $90k back in April at which time he had queried on a price of $160k, at which I had countered at $185k. He had informed me that he would return to me the following day with an answer, of which I have not heard from him since. If you would like to close a deal tomorrow we can do it at $200k cash or you may lease the domain for a minimum period of 5 years at $5k per month with a purchase option of $200k at the end of the 5 year term. I am sure you are well aware that domain name assets have increased dramatically since 2000 with year over year sales & price appreciation, and will only continue to increase in value annually.”
According to Complainant, after week had passed, Respondent sent a final email saying “I would like to inform you that MDonline.com is no longer available for sale. I appreciate your interest in the domain and hope mdol.com works out for you.”
Complainant states that based on this correspondence, it is clear that Respondent “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… for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” Despite the fact Complainant was willing to pay a significant amount (e.g., USD 90,000) for the Domain Name to save time and legal bills, Respondent attempted to extort even more. Complainant contends that Respondent’s attempts to mislead Complainant that it had competing offers for as much as USD 157,000 were false, as Respondent still owns the Domain Name and no third-party has acquired it over a year later.
Moreover, Complainant argues that because Respondent uses the Domain Name to resolve to a “parking page” for links to similar medical billing processing companies, Respondent has been using it to intentionally 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,” which is evidence of Respondent’s bad faith.
Complainant thus submits that it has met its burden of showing that Respondent registered and continues to use the Domain Name in bad faith. Even without evidence of the conversations held in 1998, Respondent’s attempts to sell the Domain Name to Complainant for a high amount (i.e., USD 200,000) as recently as 2011, is evidence that Respondent violated the implied “representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations,” as set forth in paragraph 2 of the Policy.
(i) Identical or confusingly similar
Respondent confirms that Complainant registered its domain name <mdon-line.com> on May 15, 1996 and that Respondent registered the Domain Name <mdonline.com> on May 24, 1998. Respondent asserts that Complainant’s domain name and Respondent’s Domain Name are based on terms commonly used within the medical industry, namely, “md” and “online.” There are thousands of commonly used abbreviations that incorporate “md” and “online”. Respondent claims that the Domain Name had not been registered previously by any entity and was available for anyone to reserve when Respondent registered it. Complainant had the opportunity to register the Domain Name prior to Respondent but chose not to.
Respondent states that Complainant has not filed for a trademark with the United States Patent and Trademark Office and Complainant’s alleged mark is not well known and was not well known in 1998 when Respondent registered the Domain Name. Respondent claims that Complainant did not have a trademark in its brand or common law rights in 1998 when the Domain Name was registered. According to Respondent, two years of operating between 1996 and 1998 does not establish “long and continuous use” of a mark or that Complainant’s mark was well known throughout the United States by May 1998. Additionally, Respondent had no actual, much less constructive, knowledge of Complainant’s mark at that time. Moreover, Complainant is currently using the mark, MDOL, as evidenced by the prominence of this mark on Complainant’s current web pages.
Respondent contends that the Domain Name and Complainant’s brand are not identical, as Complainant has incorporated a hyphen (-) in its mark to make it distinct and unique. Assuming a customer was confused, any possible confusion would be immediately dispelled by a comparison of the websites in question based on their look and feel.
(ii) Rights or legitimate interests
Respondent submits that it has legitimate rights in the Domain Name and requests that Complainant’s allegations be rejected. According to Respondent, it registered the Domain Name for the purpose of marketing a service utilizing the generic use of the terms “M.D.” (i.e., medical doctor) and “online” (used to describe an Internet or web presence). An email service providing the use of the Domain Name was allegedly developed and implemented in late 1999. Respondent claims there are currently considerations to incorporate a discounted medical service that provides coupons for consumers to use when searching for a medical provider within a directory format. Further, an account on Twitter @mdonline.com had allegedly been established prior to the filing of the Complaint by Complainant. Finally, a logo has allegedly been created that is unique and different from Complainant’s logo.
Respondent has been in the Internet industry since 1994 and own numerous domain names dating back to 1994 when Respondent operated an Internet service provider (ISP). Respondent acknowledges that it engages in the business of domain name sales. However, all of the domain names registered by Respondent are generic in nature and have been acquired for a specific purpose. Respondent states that everything is always for sale at an appropriate price, including Complainant’s business. Respondent submits that the sale of domain names comprising generic terms is a bona fide offering of goods or services. Respondent states that the Domain Name has been linked to a parking site with links, as are millions of other domain names offered for sale with no specific intention to confuse, divert, or mislead. At no time was there any communication, as implied by Complainant, requesting any changes be made to the use of the Domain Name.
Respondent thus contends that before it received any notice of this dispute, there is evidence of Respondent’s use of, and 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.
(iii) Registered and used in bad faith
Respondent contends that Complainant had every opportunity to register the Domain Name prior to Respondent and chose not to. In addition, Respondent asserts that it did not make the initial contact with Complainant to sell the Domain Name in 1998; instead, Complainant contacted Respondent. Respondent has provided a detailed chronological review of the email communications between the parties during the years 2010 and 2011. Respondent maintains that this evidence shows that Complainant had no interest in negotiating in good faith to purchase the Domain Name and that at no time was Respondent interested in selling the Domain Name for less than six figures.
Respondent indicates that a domain name broker contacted Respondent on behalf of Complainant in 2010. Respondent alleges that Complainant was on a domain name acquisition spree and looking to purchase numerous domain names relevant for the healthcare industry. The broker allegedly stated that he had additional offers out for the purchase of the domain names <physicianonline.com> and <doctoronline.com>. Respondent also states that the date of October 1997 provided by Complainant in this case for acquiring the domain name <mdol.com> is false. According to Respondent, on June 20, 2011 the broker contacted Respondent indicating that it had just acquired <mdol.com> for Complainant at a figure below USD 20,000 and inquiring whether Respondent was still interested in selling the Domain Name. Further communications took place between the parties. Respondent claims that, to the best of its recollection, at some point just prior to the June 27, 2011, it received phone call from Complainant seeking to persuade Respondent to sell the Domain Name or threatening that it would be taken away via a UDRP complaint. This threat lead to the final email from Respondent, dated June 27, 2011, informing Complainant that the Domain Name was no longer available for sale.
Respondent asserts that: (i) the Domain Name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name; (ii) the Domain Name was not registered in order to prevent Complainant from reflecting a trademark in a corresponding domain name and, in connection therewith, Respondent has not engaged in a pattern of such conduct; (iii) Complainant and Respondent are not competitors and the Domain Name was not registered by Respondent primarily to disrupt Complainant’s business; (iv) and the Domain Name was not registered by Respondent in an intentional attempt to attract for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Finally, Respondent requests the Panel make a finding of reverse domain name hijacking. Respondent claims that Complainant has shown a pattern of domain name acquisitions for some time, since at least the initial inquiry made by Complainant for purchase of the Domain Name. This is evidenced by the email from the domain name broker discussed above and the acquisition of <mdol.com>, along with the acquisition of 124 other domain names, by Complainant. Furthermore, Respondent emphasizes that Complainant’s claim that it acquired the domain name <mdol.com> in 1997 is false. The domain name was first registered to another entity and was acquired by Complainant in June 2011, as evidenced by both the email from the domain broker hired by Complainant and a WhoIs registry history.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has claimed common law rights in the name, MD ONLINE, which have allegedly been acquired through use of this brand in commerce since 1995. The evidence submitted in this case shows that Complainant has registered the domain names, <mdon-line.com> and <mdol.com>, and has used them in support of Complainant’s business operations in the healthcare industry, where Complainant has received extensive recognition. Further, the evidence shows that Complainant has used names, MD ON-LINE and MDOL, in its commercial dealings over this period. Respondent, on the other hand, emphasizes that Complainant has not registered a trademark for its name or brand and contends that Complainant has no common law rights in its name.
The Panel finds that Complainant has acquired common law rights in its MD ON-LINE and MDOL brands through its extensive use in healthcare industry. Further, the Panel finds that the Domain Name, <mdonline.com> is confusingly similar to Complainant’s MD ON-LINE mark. The Panel finds that the lack of a hyphen in the word “online” in the Domain Name <mdonline.com> is insufficient to distinguish this term from Complainant’s mark, MD ON-LINE. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), para. 1.2 (“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion”).
Accordingly, the Panel concludes that the Domain Name is confusingly similar to Complainant’s MD ON-LINE common law mark.
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 Domain Names. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that Complainant has presented a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. Complainant has demonstrated that Respondent is not commonly known by the Domain Name, nor made legitimate noncommercial or fair use of it. Respondent admits that it is offering the Domain Name for sale (at a high price), which is enough to show that there is no noncommercial or fair use. Complainant has also offered evidence to show that Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, but instead has offered it for sale in excess of Respondent’s out-of-pocket costs while linking it to a parking site with sponsored links to companies that are competitors of Complainant.
Respondent claims that it registered the Domain Name for the generic use of the terms “M.D.” and “online”. Respondent also claims that the Domain Name had an email service linked to it in 1999, that he has been contemplating other uses for the Domain Name, and that a Twitter account has established. However, Respondent has provided no evidence in support of these points. Respondent also admits that the Domain Name has been linked to a parking site, although he states that this is a common use for many other domain names.
The Panel considers that there is generally nothing per se illegitimate in selling or dealing in domain names or linking them to pay-per-click parking sites. However, if the parking site links to competitors of the complainant, as is the case here, or if there is an intention by reason of the sale or threatened sale of a domain name to take advantage of the third party’s rights and reputation in a trademark represented in that domain name, that is quite a different matter. In the circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Accordingly, Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. Here, the Panel finds that although the use of the Domain Name supports a finding of bad faith use, the record does not support a finding of bad faith registration.
Although Respondent stated that he registered the Domain Name for its generic and descriptive meaning, the Domain Name has resolved to a webpage featuring pay-per-click links, many of which refer to Complainant’s competitors. Thus, by targeting Complainant’s trademark subsequent to having registered the Domain Name for its descriptive meaning, Respondent has used the Domain Name for the bad faith purpose of attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s trademark. The Panel agrees with those UDRP panels that have found that a registrant cannot disclaim responsibility for the various links on a website linked to a disputed domain name where they are concerned either with the complainant or with the field of commercial activity in which the complainant operates. Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; see also WIPO Overview 2.0, paragraph 3.8 (panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content, such as in the case of advertising links appearing on an “automatically” generated basis). Moreover, Respondent has, by reason of the attempted sale of the Domain Name at an exorbitant price, including making statements to Complainant (or its representative) that the Domain Name is subject to multiple offers from third-parties, sought to take unfair advantage of Complainant’s rights in its MD ON-LINE mark.
However, there is a second fundamental issue in this case – whether the Domain Name was registered in bad faith. The Domain Name was initially registered by Respondent in May 1998, approximately 2 years after Complainant commenced operations and registered its <mdon-line.com> domain name. There is no evidence in the record that Respondent targeted Complainant when it registered the Domain Name, nor is there evidence that would require Respondent to have had constructive notice of a trademark owned by Complainant. The phrase “MD online” is descriptive and undistinctive, which supports Respondent’s claim that it registered the Domain Name for its generic meaning. Further, Respondent has stated, without contradiction, that it had no actual knowledge of Complainant at the time it registered the Domain Name. The Panel thus finds that there no sufficient evidence that Respondent targeted Complainant’s name or trademark when it registered the Domain Name. Further, there is no case to be made that Respondent, at the time of registration, registered the Domain Name with intent to sell it to Complainant, to disrupt Complainant’s business, or to prevent Complainant from registering its name or trademark in a domain name.
Complainant has urged, however, that the Panelist should follow the line of UDRP cases in which panels have interpreted the Policy so that bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder. As stated by the panel in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278, the fundamental question that arises for determination is whether the absence of bad faith intent by the respondent at the time of acquisition of the disputed domain name precludes the complainant from succeeding under the Policy, even though the respondent has subsequently used the domain name in bad faith? In this Panel’s view, the answer is that Complainant is, indeed, barred from recovering. The Panel is persuaded on this question by the analysis in the cases Validas, LLC v. SMVS Consultancy Private Limited, WIPO Case No. D2009-1413 and Torus Insurance Holdings Limited v. Torus Computer Resources, WIPO Case No. D2009-1455. In Validas, the panel noted the “laudable desire” of certain panels to provide a remedy in cases of good faith registration followed by bad faith use, as is the situation in this case. However, the Validas panel concluded that the only permissible way for a remedy to be provided in such circumstances would be for ICANN to amend the Policy, paragraph 4(a)(iii), by changing “and” into “or”. This Panel agrees with this conclusion. In particular, the Panel is of the view that the requirement for registration and use in bad faith was intended to be conjunctive – paragraph 4(a)(iii) of the Policy unequivocally requires proof of bad faith registration, as well as bad faith use. As noted in Torus and Validas, this view is confirmed by the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy.
The Panel is sympathetic to the concerns of Complainant. However, under the Policy as it now stands, the Panel finds that Complainant has failed to satisfy the third element.
D. Reverse Domain Name Hijacking
Respondent has requested that the Panel make a finding of Reverse Domain Name Hijacking against Complainant. The Panel rejects Respondent’s request as inappropriate, particularly in this case where, although Respondent may have registered the Domain Name innocently and without targeting Complainant and its common law mark, it has since used the Domain Name in bad faith, as described above.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: November 8, 2014