WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Medicover Holding (Cyprus) Limited v. Ruslan Chervak, TD Marketing Global Inc.
Case No. D2021-2087
1. The Parties
The Complainant is Medicover Holding (Cyprus) Limited, Cyprus, represented by Patpol Legal Piróg i Wspólnicy Sp. k., Poland.
The Respondent is Ruslan Chervak, TD Marketing Global Inc.1 , United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <first-egg-bank.com>, <firsteggbank.info>, <firsteggbank.net>, <1eggbank.com>, <1eggbank.info>, and <1eggbank.net> are all registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2021 regarding the disputed domain name <first-egg-bank.com> only. On July 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with that disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for that disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent an informal email communication on July 6, 2021, requesting a copy of the Complaint and copying its legal representative. The Complainant filed an amended Complaint including five additional disputed domain names on July 7, 2021.
On July 9, 2021, the Complainant confirmed its request to add five disputed domain names to the proceeding. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with these five disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for these five disputed domain names that differed from the corresponding named Respondent and contact information in the amended Complaint. The Center sent an email communication to the Complainant on July 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit a further amendment to the Complaint. The Complainant filed a further amended Complaint on July 16, 2021.
The Center verified that the Complaint together with the amended Complaint and the further amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. On August 18, 2021, due to an apparent issue with the notification, the Respondent was granted a five day period (e.g., through August 23, 2021) in which to indicate whether it wished to participate to this proceeding. On the same day, the Respondent’s legal representative acknowledged receipt of this email communication and indicated it would get back to the Center. No further email communication was received from the Respondent or its legal representative. The Center informed the Parties of its commencement of panel appointment process on August 26, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 31, 2021. 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 part of the Medicover Group of companies, founded in 1995, which provides healthcare and diagnostic services, including human egg donor services. The Complainant holds trademark registrations in multiple jurisdictions, the earliest of which is European Union trademark registration number 014966428 for a figurative trademark including the textual elements FIRST EGG BANK (the “FIRST EGG BANK mark”), registered on August 21, 2017 (based on an application filed on December 29, 2015), specifying egg cell bank services; medical services, namely in vitro fertilization, in class 44.
The Respondent is an individual, Ruslan Chervak, and a United States company, TD Marketing Global Inc. According to evidence provided by the Complainant, Mr. Chervak is listed on a business information website as the contact person of TD Marketing Global Inc., and he was formerly a senior manager of a Medicover Group company where he was responsible for its First Egg Bank services and website.
The disputed domain names were registered by the Respondent on January 31, 2014, except for the disputed domain name <1eggbank.com>, which was registered by the Respondent on April 16, 2014. According to the Complainant, all the disputed domain names were registered during the period of Mr. Chervak’s employment with a Medicover Group company.
The disputed domain name <first-egg-bank.com> was formerly used by the Complainant and the Medicover Group as their website for their First Egg Bank services. After Mr. Chervak ceased to be an employee of the Medicover Group in 2020, this disputed domain name continued to resolve to a website ostensibly for First Egg Bank, although neither the Complainant nor the Medicover Group controlled it. The website prominently displayed the Complainant’s FIRST EGG BANK figurative mark and described First Egg Bank as part of the Medicover fertility family but the contact email address displayed on the site actually belongs to an egg donor bank that is a competitor of the Complainant. Since the Complaint was filed, this disputed domain name has at times redirected to the website of that competitor egg donor bank.
The disputed domain names <firsteggbank.info> and <firsteggbank.net> redirect to the website of the same competitor egg donor bank to which the disputed domain name <first-egg-bank.com> has redirected at times.
The disputed domain names <1eggbank.info> and <1eggbank.net> resolve to parking pages hosted by the Registrar that display pay-per-click (“PPC”) links to other websites, mainly for egg and sperm donation services. The parking pages also display advertising for egg donor and fertility services.
The disputed domain name <1eggbank.com> does not resolve to any active website; rather, it is passively held.
5. Parties’ Contentions
A. Complainant
The disputed domain names are confusingly similar to the Complainant’s FIRST EGG BANK mark. The FIRST EGG BANK mark has for many years been used internationally by the Complainant and the Medicover Group for egg donor bank services and medical services, e.g., in vitro fertilization.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has never given its consent to registration of the disputed domain names on behalf of any other entity than a company being a part of the Medicover Group. The Complainant only became aware that it had no control over the disputed domain name <first-egg-bank.com> or the associated website after Mr. Chervak ceased to be an employee of the Medicover Group.
The disputed domain names were registered and are being used in bad faith. Given the nature of the Respondent’s position with the Medicover Group up to 2020, he was aware of the Complainant’s upcoming trademark rights when he registered the disputed domain names. The website to which the disputed domain name <first-egg-bank.com> formerly resolved displayed the Complainant’s FIRST EGG BANK mark and imitated the Complainant’s website. After the Complaint was filed, three disputed domain names began redirecting to the website of a competitor of the Complainant; two disputed domain names resolve to parking pages that display links to websites for competing businesses; and the other disputed domain name is passively held but forms part of a pattern of conduct.
B. Respondent
Apart from an informal email communication requesting a copy of the Complaint, and another email communication from its legal representative as mentioned in section 3. above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has 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
Based on the evidence presented, the Panel finds that the Complainant has rights in the FIRST EGG BANK figurative trademark.
Given that the figurative elements of the FIRST EGG BANK mark are incapable of representation in a domain name, these elements can be disregarded in the comparison between the disputed domain names and that mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.10.
The disputed domain names <first-egg-bank.com>, <firsteggbank.info>, and <firsteggbank.net> incorporate, as their respective operational elements, all the textual elements of the FIRST EGG BANK mark in the same order in which they appear in that mark. The first of these disputed domain names also includes hyphens separating the words, which does not prevent a finding of confusing similarity with the mark, as the textual elements of the mark remain clearly recognizable within it.
The disputed domain names <1eggbank.com>, <1eggbank.info>, and <1eggbank.net> contain the numeral “1”, followed by the other two textual elements of the FIRST EGG BANK mark, in the same order in which they appear in that mark. The Panel does not consider that the substitution of the numeral “1” for the corresponding ordinal number written as a word (“first”), avoids a finding of confusing similarity as the trademark remains clearly recognizable within these disputed domain names through the combination of the numeral and words.
The disputed domain names each include a generic Top-Level Domain (“gTLD”) suffix (either “.com”, “.info” or “.net”) which is a technical requirement of domain name registration. As such, a gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy. See WIPO Overview 3.0, section 1.11.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel will assess the existence of any rights or legitimate interests that the Respondent may have in light of the circumstances prevailing at the time of the filing of the Complaint. See WIPO Overview 3.0, section 2.11.
As regards the first and third circumstances set out above, all the disputed domain names are confusingly similar to the Complainant’s FIRST EGG BANK mark. At the time of filing the Complaint, one disputed domain name resolved to a website ostensibly for the Complainant’s services but with different contact details. This disputed domain name and two others have redirected or currently redirect to the website of a competitor of the Complainant offering identical services. Two other disputed domain names resolve to parking pages displaying PPC links and advertising for identical services to those offered by the Complainant. One disputed domain name is passively held. Although the words “egg bank” are descriptive of some of the services offered on these sites, the combinations “first egg bank” and “1 egg bank” do not appear to be so. It is clear from the Complaint that the Respondent, either as an individual or a company, is not currently authorized by the Complainant to use its FIRST EGG BANK trademark in a domain name or otherwise. Accordingly, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using any of the disputed domain names in connection with a bona fide offering of goods or services within the terms of paragraph 4(c)(iii) of the Policy. Nor does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain within the terms of paragraph 4(c)(iii) of the Policy.
As regards the second circumstance, the Respondent’s names are “Ruslan Chervak” and
“TD Marketing Global Inc.”, not the disputed domain names. There is no evidence indicating that the Respondent, as an individual, business or other organization, has been commonly known by the disputed domain names within the terms of paragraph 4(c)(ii) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. These circumstances are not exhaustive. The fourth circumstance is as follows:
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] web site or location.
As regards registration, the disputed domain names were registered in 2014, before the earliest registration of the Complainant’s FIRST EGG BANK mark in 2017. Although the Complainant alleges that it has used the FIRST EGG BANK mark for many years, it provides no evidence regarding use of that mark prior to its registration. It filed its earliest application for registration of the mark in late 2015. In circumstances such as these, where the Respondent registered the disputed domain names before the Complainant’s trademark rights accrued, UDRP panels do not normally find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1.
Nevertheless, the Complainant alleges that the Respondent individual, Mr. Chervak, was aware of the Complainant’s upcoming trademark rights when he registered the disputed domain names. That is a plausible submission, given his position as a senior manager of the Medicover Group with responsibility for its First Egg Bank services at the relevant times. Three disputed domain names are identical or basically identical to the textual elements of the Complainant’s eventual trademark, while the other three disputed domain names are identical to the textual elements of the trademark, but for the reflection of the word “first” as a numeral. This identity or near-identity does not appear coincidental, despite the descriptive nature of the words “egg bank”. The Respondent does not provide any other explanation for its choice of the disputed domain names. In these particular circumstances, the Panel finds it likely that the Respondent registered the disputed domain names in anticipation of the Complainant’s trademark rights. See WIPO Overview 3.0, section 3.8.2 and, for example, GFH Capital Limited v David Haigh, WIPO Case No. D2014-2148.
The question remains whether the Complainant consented to, or acquiesced in, the registration of the disputed domain names. Not only was the Respondent individual, Mr. Chervak, an employee of the Medicover Group at the relevant times but the Complainant and the Medicover Group also used one disputed domain name (<first-egg-bank.com>) in connection with their First Egg Bank website during Mr. Chervak’s employment. However, Mr. Chervak did not list the Complainant or another Medicover Group company as the registrant of the disputed domain names; rather, in each case he listed himself and TD Marketing Global Inc., a company for which he is the contact person. That company was unknown to the Complainant until the initiation of this dispute. The existence of the other five disputed domain names was also unknown to the Complainant until this proceeding. The Respondent individual, Mr. Chervak, does not assert that he acted with the Complainant’s authorization or that the Complainant knew the registrant details. In view of these circumstances, the Panel does not consider that the Complainant consented to, or acquiesced in, the registration of any of the disputed domain names in the names of the Respondent individual and company. Rather, the Panel considers these circumstances shed some light on the Respondent’s intention in registering the disputed domain names, and lead to a finding on the balance of probabilities that the disputed domain names were registered in bad faith.
As regards use, the disputed domain name <first-egg-bank.com> variously resolves to a website that is ostensibly the Complainant’s First Egg Bank website and displays the FIRST EGG BANK figurative trademark with the contact details of a competitor egg donor bank, while at other times it redirects to the website of that competitor egg donor bank. Although the Complainant acquiesced in the prior use of this disputed domain name with its own website during Mr. Chervak’s employment, it has not acquiesced in the Respondent’s current uses of this disputed domain name. The disputed domain names <firsteggbank.info> and <firsteggbank.net> redirect to the website of that same competitor egg donor bank. Each of these uses is for the commercial gain of that competitor of the Complainant. Meanwhile, the disputed domain names <1eggbank.info> and <1eggbank.net> resolve to parking pages that display PPC links to other websites, and advertising, for competitors of the Complainant. This use is for the commercial gain of the Respondent, if it is paid to direct traffic to those other websites, or of the operators of those other websites, or both. Accordingly, the Panel finds that, by using these five disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites or the website(s) of a competitor/competitors of the Complainant, 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 such other websites or of a service on the Respondent’s websites or such other websites within the terms of paragraph 4(b)(iv) of the Policy.
The Respondent makes only passive use of the disputed domain name <1eggbank.com> but this circumstance does not prevent a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, this disputed domain name was registered after the other five disputed domain names and it is identical to two of them, but for its gTLD suffix. In the Panel’s view, the most likely intended uses of this disputed domain name are those to which the other disputed domain names are already being actively put. The Respondent provides no explanation of any other potential use of this disputed domain name. In all these circumstances, the Panel considers it more likely than not that the Respondent is using this disputed domain name in bad faith as well.
Therefore, the Panel finds that all the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <first-egg-bank.com>, <firsteggbank.info>, <firsteggbank.net>, <1eggbank.com>, <1eggbank.info>, and <1eggbank.net> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: September 14, 2021
1 The original Complaint was filed against a privacy service but the Complainant amended the Complaint to replace the privacy service with the Registrar-confirmed underlying registrant.