WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HCOA Pty Ltd, Molescan Australia Pty Ltd v. The Trustee for the Terantica Trust / Terry Lockitch
Case No. DAU2013-0003
1. The Parties
The Complainants are HCOA Pty Ltd and Molescan Australia Pty Ltd both of Melbourne, Victoria, Australia, represented by Kliger Partners, Australia.
The Respondent is The Trustee for the Terantica Trust / Terry Lockitch, of Brisbane and Chermside Centre, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <molescan.com.au> is registered with NetRegistry Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2013. On February 26, 2013, the Center transmitted by email to NetRegistry Pty Ltd a request for registrar verification in connection with the disputed domain name. On March 4, 2013, NetRegistry Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 March 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2013. The Respondent did not submit any formal response; however the Respondent did provide a communication via email on March 12, 2013. The Center advised the Respondent that he had until March 25, 2013 to submit a Response, but no further correspondence was received from the Respondent. Accordingly, the Center notified the parties that it was proceeding to Panel Appointment on March 26, 2013.
The Center appointed Andrew F. Christie as the sole panelist in this matter on April 4, 2013. 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 first Complainant is HCOA Pty Ltd, a company incorporated in Australia. The second Complainant is Molescan Australia Pty Ltd, a company incorporated in Australia. Both Complainants are wholly owned by Healthcare of Australia Holdings Pty Ltd, and the ultimate holding company of each is CT HSP GP (Dutch) B.V as General Partner For CT Healthscope Holdings L.P. They are both companies within the “Healthscope” group, Healthscope being Australia’s largest provider of integrated healthcare. The first Complainant is the registered owner of the trademarks on which the Complaint is based, and the second Complainant is an authorized user of these trademarks and the former registrant of the disputed domain name.
The disputed domain name was originally registered in connection with the “Molescan” skin cancer screening business in or around 2003 and, prior to the Respondent obtaining registration, had been registered to the second Complainant for over three years. Due to an administrative error or oversight on behalf of the second Complainant, the registration of the disputed domain name in the name of the second Complainant lapsed in December 2012. Subsequently the Respondent registered the disputed domain name in early January 2013.
Once the Complainants became aware of the lapsing of the registration, a representative of Healthscope (on behalf of the second Complainant) identified Terry Lockitch as the individual behind the new registrant, and emailed him on January 10, 2013, explaining the error that had occurred in allowing the domain name registration to lapse. Further email correspondence occurred between the two parties concerning the proposed use of the disputed domain name by Mr. Lockitch, and the possibility of the Complainant purchasing the disputed domain name. On February 1, 2013, the Complainants’ legal representative sent a letter of demand to Mr. Lockitch, to which Mr. Lockitch responded. A response to this reply was sent by the Complainants to the Respondent on February 6, 2013.
The first Complainant is the owner of three Australian trademark registrations containing the characters “molescan”: (i) trademark no. 959950, being a device mark consisting of the text “MoleSCAN” in a rectangle with horizontal stripes, registered from July 1, 2003; (ii) trademark no. 1128472, being a word mark consisting of the text “MoleSCAN Trusted Name in Skin Cancer”, registered from August 9, 2006; and (iii) trademark no. 1128475, being a device mark consisting of the text “MoleSCAN Trusted Name in Skin Cancer” in a rectangle with horizontal stripes, registered from August 9, 2006. These trademarks (hereafter referred to as the “MOLESCAN trademarks”) have been used in connection with the provision of services by the Complainants relating to the diagnosis of skin cancers.
The “Molescan” business was founded in 1995 by a medical doctor, Dr. Patrick. In 2004 the second Complainant was incorporated, with the first Complainant being its sole shareholder. The second Complainant has traded under and by reference to the name “Molescan” since 2004. Since 2009 the second Complainant has been part of the Healthscope Group, and now carries on the business and is the authorized user of the registered trademarks of the first Complainant.
There are currently approximately 15 clinics in operation in Australia trading under or by reference to “Molescan”, providing services in the nature of cancer risk assessments, testing and treatments to the Australian public. The brand appears on signage at each clinic. Over the last four financial years the average revenue from the “Molescan” business has been in excess of AUD 3.5 million per annum. Since July 2009 an average of approximately 10,000 patients per month have visited a Molescan clinic in Australia.
Prior to the disputed domain name being acquired by the Respondent, the “Molescan” business was heavily promoted through the second Complainant’s website at “www.molescan.com.au”. This was a resource for patients wanting to locate clinics and find out about skin cancer issues, and was an important communication tool between actual and prospective patients and the clinics.
The disputed domain name was registered by the Respondent on January 6, 2013, having previously been registered in connection with the “Molescan” skin cancer screening business in or around 2003, and to the second Complainant for over three years prior to its registration lapsing in December 2012. It currently resolves to a page stating “molescan.com.au is a parked domain”. The Respondent, Mr. Lockitch, has stated in an email to the Complainants that “the domain is to be used as a monetized site. We could sell but it would need to be worthwhile”. When asked to suggest a figure, the Respondent replied: “The estimated value of the domain in equivalent cost-per-click advertising is around $2,200 per month.”
5. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to the first Complainant’s registered trademarks because: (i) the common and dominant element of each of the marks is the invented word “molescan”; and (ii) the graphic elements that appear in two of the registered trademarks should largely be discounted when assessing confusing similarity, as they are minor stylisations, are not especially prominent, and the word “molescan” is distinctive and dominant in all the registered trademarks. In addition, the Complainants contend that they have substantial common law rights in respect of the trademark MOLESCAN (by itself) through use. Whilst a revised version of the logo portion of the trademark has been developed over the past year or so, the invented word “molescan” has been the dominant and persistent theme of the brand over time.
The Complainants contend that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) it does not trade in any goods or services under or by reference to MOLESCAN or any similar name; (ii) it has not been commonly known by the disputed domain name; (iii) it has acquired no trademark rights in respect of the name comprising or corresponding the disputed domain name; (iv) “molescan” is not a name that one would naturally adopt without intending to recall the Complainants; (v) it is not 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 at issue; (vi) even if the Respondent contends that “molescan” constitutes a generic word (which the Complainants strenuously deny) this would not automatically result in the Respondent having a legitimate right or interest; (vii) to date it has “parked” the disputed domain name knowing it infringes the trademark of another; (viii) it has expressed an intention to monetize the disputed domain name using it for pay-by-click advertising; (ix) for several years the disputed domain name was used by the Complainants in connection with the “Molescan” business; and (x) it registered the disputed domain name contrary to auDA’s Domain Name Eligibility and Allocation Policy Rules because they require the registrant to have a “close and substantial connection” with the domain name and, in particular, that “the domain name must not be, or incorporate, an entity name or … brand name in existence at the time the domain name was registered” and “this condition is intended to ensure that domain monetization is not used as a cover for cybersquatting…”.
The Complainants contend that the Respondent has registered and/or is using the disputed domain name in bad faith because: (i) it has offered no explanation as to why the disputed domain name was chosen and no legitimate reason is apparent, thereby inferring that it hopes to capitalize on the reputation of the Complainants; (ii) it is not necessary to wait until the Respondent makes further use of the disputed domain name to find bad faith use and, indeed, it is imperative the disputed domain name be transferred forthwith to the second Complainant so that confusion can be avoided; (iii) the Respondent has indicated a willingness to sell the disputed domain name to the Complainants for a sum in excess of the out-of-pocket expenses incurred in registering it, and has stated that it anticipates receiving significant revenue from the proposed monetized site using the disputed domain name; (iv) it has attracted viewers for commercial gain by confusion; and (v) it has never denied its awareness of the Complainants’ trademark rights prior to registering the disputed domain name, and in any event, a basic Google and trademark search would have revealed the existence of the “Molescan” business and the use and registration of the trademark by the respective Complainants.
On March 12, 2013, the Respondent through Terry Lockitch transmitted by email to the Center a list of comments relating to the Complaint which included the following: (i) the Respondent is not sure if it is required to respond to the matter; (ii) the Respondent is within its rights under Australian domain name law to develop the disputed domain name as a monetized website; (iii) the Complainant does not have exclusive use rights over the words “mole scan” in Australia; (iv) the Respondent disbelieves the Complainants’ contention that in correspondence between the two parties they deliberately downplayed the importance to them of recovering the disputed domain name for fear of revealing the true value to their business; (v) if the Respondent was looking to extort money from the Complainants it would have accepted their offer of $500; (vi) the site and mail functions of the website to which the disputed domain name resolved when operated by the Complainants were inactive for a month prior to the disputed domain name being acquired by the Respondent; (vii) the Complainants cannot claim sole and exclusive use of the term “mole scan” because the Australian trademark authorities will not allow plain English words, in general use, to be registered as a trademark; (viii) the Respondent has no intention of using any of “their 3 trademarked IP”; (ix) “molescan” is not an invented word; rather, it is a combination of two very common words that are often used together; (x) it is not possible under Australian trademark law to discount the graphic elements of the trademarks; and (xi) monetization is a legitimate right under Australian domain name law and the Respondent has licensed numerous other skin and medical care related domain names in accordance with this right.
6. Procedural Issues concerning Multiple Complainants
Two issues arise for preliminary consideration: (i) whether the filing of the Complaint in the name of more than one party is proper; and (ii) to whom the disputed domain name should be transferred in the event that the Complaint succeeds.
A. Filing complaint in the name of multiple Complainants
The Policy and the Rules do not make express provision permitting consolidation of multiple complainants. However, the Policy and the Rules do not expressly prohibit consolidation of multiple complainants. As discussed by this Panel in some detail in National Dial A Word Registry Pty Ltd and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021, it is appropriate for a complaint to be brought by multiple complainants where the multiple complainants have a common grievance against the respondent. Multiple complainants may have a common grievance against the respondent in a number of instances. One clear instance is where the multiple complainants have a common legal interest in a relevant right or rights that are allegedly affected by the respondent’s conduct. The present case is such an instance.
The first Complainant is the owner of the registered trademarks on which the Complaint is based, the second Complainant is an authorized user of these trademarks and is the former registrant of the disputed domain name, and both Complainants are wholly owned by the same corporate parent. It is clear that both Complainants have a common legal interest in the trademarks allegedly affected by the Respondent’s registration of the disputed domain name. It follows, therefore, that the filing of the Complaint in the names of the two Complainants is proper.
B. Order of transfer where more than one Complainant
The practice of domain name registration is generally that only one entity is listed as the registrant of a domain name. Where a complaint is brought under the Policy by multiple complainants, the remedy sought by the complainants is transfer of the disputed domain name, and the complaint succeeds, the issue arises as to which of the complainants the panel should order the transfer of the disputed domain name. As this Panel discussed in some detail in “Dr. Martens” International Trading GmbH, “Dr. Maertens” Marketing GmbH v. Posers/Philip Cox, WIPO Case No. D2011-1142 (the “Dr Martens case”), as a matter of principle a panel should only order transfer of a disputed domain name to a complainant which, in its individual capacity, has an entitlement to the trademark(s) on which the complaint in relation to that domain name was based. In a case brought by multiple complainants where more than one of the complainants has entitlement to the trademark(s) on which the complaint is based, the decision about to which of the complainants the domain name should be transferred should be decided by the complainants, not the panel.
In this case, both the first Complainant (as owner) and the second Complainant (as authorized user) have an entitlement to the trademarks on which this Complaint is based. Applying the principles set out in the Dr Martens case, in the event that this Complaint is successful this Panel will order transfer of the disputed domain name to the party elected by the Complainants to receive it – that being the second Complainant.
7. Discussion and Findings
A. Identical or Confusingly Similar
As is stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.11, as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark. However, design elements in a trademark may be relevant to the decision in certain circumstances – such as where, for example, they form an especially prominent or distinctive part of the trademark overall.
Two of the first Complainant’s trademark registrations are for device marks (i.e. for trademarks containing both text and design elements). In both cases, the trademark consists of or contains the text “MoleSCAN” in a rectangle with horizontal stripes. The design elements of these two trademarks do not form an especially prominent or distinctive part of the overall trademark – thus, it is not inappropriate to disregard them when assessing the similarity of the disputed domain name to the first Complainant’s trademarks.
The disputed domain name comprises the whole of the textual component of the first Complainant’s registered Australian trademark no. 959950. In this Panel’s opinion, the disputed domain name is confusingly similar to this trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainants, and has not been authorized by the first Complainant to use any of its trademarks containing the text “MoleSCAN”. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainants shows that the disputed domain name is being “parked”. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
The Respondent has asserted that it intends using the disputed domain name for a monetized site, which it anticipates will generate pay-per-click revenue of approximately AUD 2,200 per month. Schedule C of the .auDA Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs (the “.auDA Eligibility Rules”) states: “A domain name may … be registered in the com.au 2LD … for the purpose of domain monetization … provided that the following conditions are met: … the domain name must not be, or incorporate, an entity name, personal name or brand name in existence at the time the domain name was registered”. As discussed above, the disputed domain name contains the textual component of trademarks registered by the first Complainant prior to the Respondent’s registration of the disputed domain name. This Panel finds the Respondent’s intended use of the disputed domain name is not one permitted by the .auDA Eligibility Rules. It follows that the Respondent cannot have rights or legitimate interests in the disputed domain name founded on this intended use.
Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered or Subsequently Used in Bad Faith
The disputed domain name was registered by the Respondent in January 2013. Prior to that time, the disputed domain name had been registered to the second Complainant and was used to resolve to a website promoting the goods and services of the Complainants. The evidence on the record provided by the Complainants with respect to the use of the first Complainant’s trademarks, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy this Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the first Complainant’s MOLESCAN trademarks and knew that it had no rights or legitimate interests in the disputed domain name. Furthermore, the Respondent has stated that it intends to use the disputed domain name to resolve to a monetized site, which it anticipates will generate pay-per-click revenue of approximately AUD 2,200 per month. In its email correspondence with a representative of the Complainants, the Respondent infers that it would consider selling the disputed domain name to the Complainants for a figure in line with its expected monthly earnings, which is far higher than its out-of-pocket costs directly related to the disputed domain name.
These admissions by the Respondent are evidence that it registered the disputed domain name either primarily for the purpose of selling, renting, or otherwise transferring it to the Complainants for valuable consideration in excess of documented out-of-pocket costs, or for the purpose of using it to attract, for commercial gain, Internet users to a website by creating confusion with the first Complainant’s MOLESCAN trademarks. For all these reasons, this Panel is satisfied that the disputed domain name has been registered and is being used in bad faith.
D. Complainant’s Eligibility
The Complainants have requested transfer of the disputed domain name to the second Complainant. Given that the second Complainant is an authorized user of the first Complainant’s MOLESCAN trademarks and that the second Complainant’s company name contains the text “Molescan”, it appears that the second Complainant satisfies the eligibility requirements for registration of the disputed domain name.
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 <molescan.com.au> be transferred to the second Complainant, Molescan Australia Pty Ltd.
Andrew F. Christie
Date: April 18, 2013