WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Briggs Medical Service Company Inc. v. Milan Kovac
Case No. D2011-2193
1. The Parties
The Complainant is Briggs Medical Service Company Inc. of West Des Moines, Iowa, United States of America, represented by Dickinson Mackaman Tyler & Hagen, PC, United States of America.
The Respondent is Milan Kovac of Bratislava, Slovakia.
2. The Domain Name And Registrar
The disputed domain name <briggshealthcare.com> (“Domain Name”) is registered with Hebei Guoji Maoyi (Shanghai) LTD aka Hebei International Trading (Shanghai) Co., Ltd dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2011. On December 19, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a first amended Complaint on December 30, 2011. In response to a request for further amendment by the Center, the Complainant filed a second amended Complaint on January 4, 2012. On December 28, 2011, the Center transmitted an email communication to the parties in both English and Slovak regarding the language of the proceeding. On December 30, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 26, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2012.
The Center appointed Olga Zalomiy as the sole panelist in this matter on February 8, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Based on the written evidence submitted by the Parties, the Panel finds the following to be the facts of this case:
The Complainant is a United States company that offers medical and healthcare goods and services.
The Complainant owns several registrations in the BRIGGS trademark, including United States registrations: No. 1059210 dated February 15, 1977 for use in connection with “pressure sensitive tapes and labels; paper stationery-namely, envelopes and writing paper; telephone indexes in booklet form; printed record forms, charts, file folders and file envelopes for medical patient records; card holders and paper dividers for cards used for visible index filings; and electrocardiograph paper rolls and cardboard mountings therefore”; No. 2107151 dated October 21, 1997 for use in connection with “pressure sensitive tapes and labels; paper stationery, namely, envelopes and writing papers; telephone indexes in booklet form; printed record forms, charts, file folders and file envelopes for medical patient records; card holders and paper dividers for cards used for visible index filings; and electrocardiograph paper rolls and cardboard mountings therefore”; No. 2177437 dated July 28, 1998 for use in connection with “recorded video tapes, computer discs, and CD-ROM discs featuring training, education, and recordkeeping in the field of health care”; and No. 2294521 dated November 23, 1999 for use in connection with “mail order catalog services featuring medical supplies”.
The Complainant filed an application for registration of the BRIGGS HEALTHCARE mark with the United States Patent and Trademark Office (“USPTO”) in May of 2011 and started using the mark in commerce in October of 2011.
The Respondent is Milan Kovac, a natural person who resides in Slovakia. The Domain Name <briggshealthcare.com> was registered on July 17, 2006 using Privacy Protect service. The Respondent updated the WhoIs record on July 19, 2011. The Domain Name redirects to the website “www.searchreinvented.com”, which appears to be a pay-per-click service page.
Milan Kovac has been the respondent in twelve previously decided UDRP cases and is the respondent in several other pending cases. Panels in all twelve of the previously decided cases found that the Respondent registered and used the disputed domain names in bad faith.
5. Parties’ Contentions
A. Complainant
The Complainant alleges that it is a small company that has been in existence for over 60 years, developing, supplying and offering a variety of durable medical and healthcare goods and services throughout the world. The Complainant further alleges that it has a number of registered trademarks and service marks in the United States, Australia, Brazil, Canada, Europe, Hong Kong (China), Israel and South Africa.
The Complainant claims that the Domain Name is identical or confusingly similar to its registered trademark BRIGGS due to the Domain Name’s similarity in sight, sound and connotation to the registered BRIGGS marks. The Complainant draws the Panel’s attention to its application for registration of the BRIGGS HEALTHCARE trademark filed with the USPTO in 2011. The Complainant points out that the USPTO required a disclaimer of the term “healthcare” because the term merely describes the Complainant’s services (i.e. in the healthcare field). In the Complainant’s opinion, this means that the dominant portion of the mark is BRIGGS. According to the Complainant, the trademark BRIGGS HEALTHCARE carries with it the goodwill garnered from the co-owned marks which have been used as early as 1961 in conjunction with healthcare–related products.
Further, the Complainant states that the Domain Name is similar to the long registered U.S. trademarks and services marks of the Complainant. The Complainant alleges that the Domain Name incorporates the “Briggs” name and registered trademarks/service marks of the Complainant and includes the descriptive and qualifying term “healthcare.”
The Complainant claims that the Respondent has no rights or legitimate interests in the Domain Name. In Complainant’s view, the Respondent’s use of the Domain Name is not a legitimate noncommercial use. The Complainant claims that the website “www.briggshealthcare.com” is nothing more than a collection site for links unrelated to “healthcare,” which happen to have in common the term “Briggs,” such as engine parts, luggage, mowers, a high school, and even the Meyers Briggs psychological test. The Complainant further alleges that recently the Respondent’s website showed prominent presence and references to healthcare products.
The Complainant alleges that it took additional branding initiatives incorporating the BRIGGS mark into “Briggs Healthcare.” According to the Complainant, the BRIGGS HEALTHCARE mark represents its longstanding substantial goodwill in the healthcare field. To further its branding, the Complainant filed a service mark application for BRIGGS HEALTHCARE mark with the USPTO that was approved for publication in the USPTO Official Gazette in the end of December of 2011.
The Complainant claims it has not found that the Respondent owns any “Briggs” trademarks or trade names. Further, the Complainant alleges it has given no license or authorization of any kind to the Respondent to use the trademarks.
The Complainant asserts that the Domain Name was registered and is being used in bad faith. In the Complainant’s view, the fact that the Domain Name directs to a website that is nothing more than a hosting site for unrelated “briggs” products supports finding of bad faith. The Complainant claims that the Domain Name was registered and is being used primarily for the purpose of confusing and misleading the public. The Complainant alleges that the use of a privacy shield in the present case as well as the Respondent’s use of privacy shields in previous UDRP cases indicates bad faith.
The Complainant requests that the Domain Name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion And Findings
6.1. Language of the Proceeding
Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement “subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. In adopting a language other than that of the registration agreement, the Panel must exercise discretion in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs.1
Because the language of the registration agreement is Slovak and there is no agreement between the parties as to the use of a different language in this proceeding, the language of the proceeding would typically be Slovak. However, the Complainant submitted its Complaint in English and requested that English be the language of the proceeding. In support of its request the Complainant states that the Respondent has a history of registering domain names which corresponds to English language brands, often involving a combination of the brand name and other elements which form a coherent combination, and the Respondent’s “choice of the Domain Name <briggshealthcare.com>” suggests that the Respondent has a good command of the English language. The Respondent did not object to, or comment on, that request.
The Panel finds that the Complainant presented sufficient evidence to conclude that the Respondent will not be prejudiced if this proceeding is conducted in English. First, it appears that the Respondent understands English. The content of the Respondent’s website at the Domain Name is in English with no alternative language options. The choice of the Domain Name that constitutes a coherent phrase in English also supports this conclusion. Second, the Respondent’s website at the Domain Name contains a collection of links which redirect to other English-language websites. Third, the Center notified the Respondent of the Complaint and communicated all other case-related matters to the Respondent in both Slovak and English languages. Therefore, even if the Respondent is not proficient in English, he had a fair chance to learn about his right to object to the language of the proceeding, but failed to do so. Fourth, the Respondent was a party to at least nine UDRP proceedings, all of which were conducted in English. Finally, to force the Complainant to translate the Complaint and accompanying documents into Slovak will result in significant delay and expense.
Because of the Respondent’s apparent ability to understand the English language, the absence of any objection to English as the language of the proceeding and the objective of the UDRP to provide for a cost-effective mechanism, the Panel finds English to be an appropriate language for this proceeding.
6.2. Analysis of the Complaint
Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements in its case: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
If a respondent fails to respond to the complaint, “the respondent’s default does not automatically result in a decision in favor of the complainant.”2 “Although a panel may draw appropriate inferences from a respondent’s default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.”3
A. Identical or Confusingly Similar
To satisfy the first element of the Policy, a domain name must be identical or confusingly similar to a trademark in which a complainant has rights.
The Panel finds that the Complainant has rights in the BRIGGS trademark for the purposes of the Policy. Under paragraph 1.1 of the WIPO Overview 2.0, if the complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant has provided as evidence, copies of several trademark registrations in the BRIGGS trademark, including United States registrations: No. 1059210 dated February 15, 1977; No. 2107151 dated October 21, 1997; No. 2177437 dated July 28, 1998; and No. 2294521 dated November 23, 1999.
The Panel, however, does not find that the Complainant presented sufficient evidence to show that it has rights in the unregistered mark BRIGGS HEALTHCARE for the purpose of the Policy. It is a consensus view of the WIPO UDRP panelists that “the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.”4 Here, the Complainant concedes that it does not have registered trademark rights in the mark BRIGGS HEALTHCARE and admits its application was published for opposition in the USPTO Official Gazette on December 27, 2011. The Complainant claims that it filed for registration of the BRIGGS HEALTHCARE service mark on May 24, 2011.
The Complainant also claims that it undertook “additional branding initiatives incorporating the ‘Briggs’ mark into the ‘Briggs Healthcare’ brand.” In support of its claim, the Complainant submitted a printout from its website which prominently displays the stylized words “Briggs Healthcare.” The Panel finds that this evidence falls short of showing that “Briggs Healthcare” has become a “distinctive identifier associated with the complainant or its goods or services” because the Complainant’s application for registration of the BRIGGS HEALTHCARE mark reveals that the Complainant started using the mark in commerce on October 3, 2011. The Panel finds the Complainant presented insufficient evidence to conclude that in two months of use of the BRIGGS HEALTHCARE mark, the Complainant built a reputation sufficient to be considered a source identifier for healthcare services.
Because the Panel finds that the Complainant owns rights only in the registered trademark BRIGGS, this is the mark the Panel will compare with the Domain Name to determine whether they are confusingly similar. The test for confusing similarity should be a comparison between the mark and the domain name, which involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.5 The Panel finds the Domain Name is confusingly similar with the BRIGGS mark because the Domain Name incorporates the Complainant’s trademark in its entirety.6 It is a consensus view among UDRP panelists that the addition of merely generic or descriptive wording to a complainant’s trademark, where the mark constitutes the dominant part of the domain name, is insufficient to avoid a finding of confusing similarity.7 In this case, the addition of the generic word “healthcare” to the Complainant’s trademark is insufficient to avoid a finding of confusing similarity. It is also well-established that the addition of the top-level domain suffix “.com” or its equivalent would usually be disregarded under the confusing similarity test, as it is a technical requirement of registration.8
The Complainant has proven that the Domain Name is confusingly similar to the BRIGGS trademark in which the Complainant has rights, the first element of paragraph 4(a) of the UDRP has been satisfied.
B. Rights or Legitimate Interests
To establish the second element required by paragraph 4(a) of the Policy, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name. “Panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent.”9 Therefore, to satisfy this requirement, the Complainant may make out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.10
Paragraph 4(c) of the Policy provides an open list of circumstances which demonstrate rights or legitimate interests of a respondent in a domain name. The Panel finds that the Complainant presented a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name for three reasons. First, the Respondent did not use the Domain Name in connection with a bona fide offering of goods or services. Second, the Respondent used the Domain Name for commercial gain and to misleadingly divert Internet users to its website. Third, it appears that the Respondent has not been commonly known by the Domain Name.
The Panel finds it unlikely that the Respondent used the Domain Name in connection with bona fide offering of goods or services. The Complainant submitted screenshots of the Respondent’s website “www.briggshealthcare.com,” screenshots of the Respondent’s website received from WayBackMachine and screenshots of “searchreinvented.com,” which is the website linked to the Respondent’s website. The evidence shows that until recently, the “www.briggshealthcare.com” website contained a collection of links offering various “Briggs” products (such as Briggs & Stratton11, and Briggs & Riley12) unrelated to the Complainant’s goods. Within the last month or so, the Respondent changed the content of its website. Currently, the website features several tabs relating to medical equipment and supplies. The tabs are named “medical supplies,” “medical charts,” “medical forms” and etc. Each of those tabs redirects a user to “searchreinvented.com,” which is a pay-per-click website containing advertising of various medical products.
It is a consensus view among UDRP panelists that the “use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services.”13 “[W]here such links are based on trademark value, UDRP panels have tended to consider such practices generally as unfair use resulting in misleading diversion.”14 Here, the evidence shows that the links displayed on the Respondent’s website were clearly based on the value of the BRIGGS mark because the links displayed on the Respondent’s website directed to websites offering for sale various goods belonging to several different owners of trademarks involving the word “briggs.”
While, the Complainant attributes the recent change in the Respondent’s website content to its letter to the Registrar concerning its rights in the BRIGGS mark, the Complainant provides no evidence to support that assertion. Regardless of the Respondent’s motives in changing the content of its website, its earlier use does not appear to constitute a “bona fide offering of goods and services” in the meaning of the Policy. Because the Respondent’s website contains no information to the contrary it is more likely than not the Respondent was not a legitimate reseller or authorized licensee of any of the BRIGGS trademarks owners. Nor does the Respondent’s use of the Domain Name constitute a legitimate noncommercial use of the Domain Name under the Policy, because it is likely that the Respondent receives remuneration for displaying third-party advertising.
Furthermore, there is no indication that the Respondent has been commonly known by the Domain Name. While the word “Briggs” is a common surname in the Unites States and is used by number of companies in the United States in connection with their goods or services that is not the case in Slovakia. Further, the Respondent’s name is different from the Domain Name. Moreover, the submitted screenshots of the website to which the Domain Name redirects, show that the website contains no information about its owner. Without such information, one cannot be “commonly known” by the Domain Name. Finally, the Respondent’s use of a privacy shield to hide its identity, is another indication that it is not commonly known by the Domain Name.
Therefore, the Panel finds that the Complainant has established a prima facie case. Without contrary evidence from the Respondent, this Panel finds that the second element of the paragraph 4(a) of the UDRP has been established.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires a finding that both the registration and use of the Domain Name were in bad faith. It is well-established that “the requirements of Paragraph 4(a) of the Policy are conjunctive, thus Complainant bears the burden of proof on each. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. If any required element is not established, the Complaint must fail. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (denying transfer of the domain name because the complainant failed to prove bad faith registration).”15
The Panel finds that it is more likely than not that the Respondent registered the Domain Name in bad faith. Based on the record of the case, it is more likely than not that the Respondent is familiar with trademarks well-known in the United States. Five out of twelve decided cases against the Respondent, concern United States trademark owners.16 In addition, the panel in the American Automobile Association, Inc., v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069 in which Milan Kovac was disclosed by the registrar to be the proper registrant of the disputed domain names, the panel came to the conclusion that the respondent Milan Kovac was more likely than not to be related to, if not the same person, as Isaac Goldstein, “an individual who is clearly well-acquainted with trade marks that are famous in the US and in the habit of hijacking / incorporating the same as domain names (see L.A. Fitness Intl’l, LLC v. Isaac Goldstein, WIPO Case No. DCO2010-0007, in respect of the mark LA FITNESS and General Motors LLC v. Isaac Goldstein, WIPO Case No. D2010-0450, in respect of the mark CHEVY CAPRICE).” Similar to the panel’s finding in American Automobile Association, supra, this Panel finds that here bad faith registration may be inferred from the Respondent’s “history and pattern of bad faith registration of domain names incorporating the trade marks of third party complainants, as determined by various UDRP panelists in numerous domain name proceedings.”17
In addition, because the Panel concludes that the Respondent is familiar with trademarks that are well-known in the United States, the Panel finds that it is more likely than not that the Domain Name was registered primarily for the purpose of confusing and misleading the public as to the affiliation of the Domain Name with the BRIGGS and BRIGGS HEALTHCARE trademarks. Because of the Complainant’s use of the BRIGGS trademark in the United States since 1961, which is 45 years earlier than the Respondent’s registration of the Domain Name, it is more likely than not that the Respondent knew about the Complainant’s BRIGGS trademark and registered the Domain Name to confuse Internet users looking for the Complainant’s products.
The Panel also finds that it is more likely than not that the Respondent used the Domain Name in bad faith.
The Complainant claims that the Domain Name was registered and is being used primarily for the purpose of confusing and misleading the public as to the affiliation of the Domain Name with its BRIGGS and BRIGGS HEALTHCARE marks and that the Respondent has been a subject of twelve UDRP proceedings concerning the registration of domain names containing trademarks of third parties. In the Panel’s view, the Complainant alleges that the Respondent’s behavior corresponds to the example of bad faith registration and use set forth in paragraph 4(b)(ii) of the Policy, which states the following: “you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” Because the Panel concluded that it is likely the Respondent knew about the Complainant’s trademark and because the Respondent has been a respondent in twelve decided WIPO UDRP cases and several pending cases, the Panel accepts the Complainant’s allegation and finds that present case corresponds to the situation described in paragraph 4(b)(ii) of the Policy. Furthermore, while it is a consensus view among UDRP panelists that the “use of privacy or proxy registration service is not in and of itself an indicator or bad faith,”18 the Panel finds that Respondent’s use of a privacy shield under the circumstances of this case, coupled with the circumstances of the previous cases involving the Respondent, is evidence of the Respondent’s bad faith.
Finally, it is a well-established view among UDRP panelists that “automatically” generated material appearing on a website connected to the disputed domain name supports a finding of bad faith use under paragraph 4(b)(iv) of the UDRP. “It would normally be sufficient to show that profit or “commercial gain” was made by a third party, such as by the operator of an advertising revenue arrangement applicable to the registrant, or a domain name parking service used by the registrant.”19 Based on the record, the Respondent used the website connected to the Domain Name to display third-party advertising various Briggs products and it is likely that the Respondent profited from that arrangement. As a result, the Panel finds that the Respondent used the Domain Name is bad faith.
Because the Panel finds that the Complainant proved the Respondent registered and used the Domain Name in bad faith, the Respondent satisfied the requirement of the third element 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 Domain Name <briggshealthcare.com> be transferred to the Complainant.
Olga Zalomiy
Sole Panelist
Dated: February 27, 2012
1 See, paragraphs 10(a) and 10(b) of the Rules; Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; See also Biotechnology and Biological Sciences Research Council v. Kim Jung Hak, WIPO Case No. D2009-1583.
2 See, paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 See, paragraph 4.6 of the WIPO Overview 2.0.
4 See, paragraph 1.7 of the WIPO Overview 2.0.
5 See, paragraph 1.2 of the WIPO Overview 2.0.
6 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
7 See, paragraph 1.9 of the WIPO Overview, 2.0.
8 See, paragraph 1.2 of the WIPO Overview, 2.0.
9 See, paragraph 2.1 of the WIPO Overview, 2.0.
10 See, paragraph 2.1 of the WIPO Overview 2.0.
11 Briggs & Stratton is a manufacturer of air-cooled gasoline engines for outdoor power equipment.
12 Briggs & Riley is a luggage manufacturer.
13 Paragraph 2.6 of the WIPO Overview, 2.0.
14 Id.
15 Iowa Family Policy Center v. Basic Rights Oregon, WIPO Case No. D2011-1846.
16 Pentair Pump Group, Inc. v. Milan Kovac / Privacy--Protect.org, WIPO Case No. D2011-2203 (concerning MYERS trademark);
Celgene Corporation v. Ourcelgene.com / Milan Kovac, WIPO Case No. D2011-2094 (in regard to CELGENE trademark);
Comerica Incorporated v. Milan Kovac, WIPO Case No. D2011-0894 (in regard to COMERICA trademark); Revlon Consumer Products Corporation v. Privacy-Protect.org / Milan Kovac, WIPO Case No. D2010-1806 (in regard to REVLON trademark); The American Automobile Association, Inc., v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069 (concerning AAA trademark).
17 The American Automobile Association, Inc., v. aaaaautoinsurance.com Privacy--Protect.org, aaa-netaccess.com Privacy--Protect.org, aaanetacceess.com Privacy--Protect.org, Isaac Goldstein, WIPO Case No. D2011-2069.
18 See, Paragraph 3.9 of the WIPO Overview, 2.0.
19 See, Paragraph 3.8 of WIPO Overview 2.0.