WIPO Domain Name Decision D2001-0146 for emedicine.org

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

eM, Inc. v. Noble Scientific

Case No. D2001-0146

1. The Parties

The Complainant is: eM, Inc., a Delaware corporation with principal place of business at 875 Pasadena Ave. S., St. Petersburg, Florida 36707, U.S.A. Complainant is represented in this proceeding by Anne S. Mason, Esq., Mason & Associates, P.A., 17757 U.S. Hwy 19 N., Suite 500, Clearwater, Florida 33764, U.S.A.

The Respondent is: Noble Scientific, a company whose administrative contact and owner is Dr. Tony R. Reid, a medical doctor and professor at Stanford University, whose address is P.O. Box 7433, Menlo Park, California 94025, U.S.A. The Respondent is represented by Jeffrey D. Harty, Esq. and John D. Goodhue, Esq., Zarley, McKee, Thomte, Voorhees & Sease PLC, 801 Grand Avenue, Suite 3200, Des Moines, Iowa 50309-2721, U.S.A.

2. The Domain Name and Registrar

The domain name in dispute is:

The registrar for the disputed domain name is Network Solutions, Inc. (NSI), located at 595 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).

The Complaint was filed on January 26, 2001. On February 2, 2001, the Center requested that the registrar, NSI, conduct a check to determine the registrant for the disputed domain name . On February 5, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, Noble Scientific, with administrative contact Dr. Tony R. Reid.

On February 22, 2001, the Center informed the Complainant of certain deficiencies in the Complaint relating to submitting to jurisdiction at the Respondent's location and courtesy copies to the Respondent (NSI 4.0 Service Agreement and the Rules 2b and 3b(xii)). On March 19, 2001, the Complainant submitted a satisfactory Complaint amendment in hard copy.

On March 21, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center on April 9, 2001 electronically and, on April 10, 2001, in hard copy.

The Administrative Panel submitted a Declaration of Impartiality and Independence on May 7, 2001, and the Center then appointed the panel on May 11, 2001. The Panel finds the Center has followed the Policy and the Rules in administering this Case.

This Decision is due by May 25, 2001.

4. Factual Background

The Complainant is in the business of "internet-based multiple-user medical publications." The Complainant's service allows many specialists to contribute to medical textbooks on-line and constantly update them. The Complainant states it has been using the "EMEDICINE" mark in this regard since June 1997.

The Respondent is a company owned and run by the medical doctor and professor at Stanford University, Dr. Tony R. Reid. Respondent registered the disputed domain name on March 2, 1999. Although the Respondent does not yet have a functioning website at the disputed domain name, it has laid plans to use it for the electronic exchange of medical case histories among doctors.

The parties exchanged correspondence toward the end of 2000 with the Complainant asserting trademark infringement and the Respondent denying it. The Complainant now seeks the domain name's transfer in this proceeding.

5. The Parties' Contentions

Complainant's Contentions:

- The Respondent is the unauthorized owner of the domain name , which is confusingly similar to Complainant's U.S. trademark.

- While using the domain name, Respondent has attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's marks as to the source of the products or services offered at the website.

- The Respondent is not engaging in fair use, and Complainant knows of no legitimate, non-commercial use of the domain name by the Respondent.

- As the original user of the mark, the Complainant has superior rights in it, particularly as it pertains to medical publishing.

- Complainant seeks transfer of the disputed domain name to the Complainant.

Respondent's Contentions:

- The Complainant's mark is a generic and descriptive term. "Emedicine" is a generic term and is a short form of the term "electronic medicine."

- Complainant's use and registration of the term "emedicine" does not exclude all other uses of the term.

- The Respondent does not believe the Complainant's EMEDICINE trademarks are valid, and on April 9, 2001, in conjunction with this proceeding filed to have them cancelled by the United States Patent and Trademark Office (Response Appendix F) .

- The Complainant has not provided any factual basis for use of its marks outside of the narrow area of online medical reference books. This is not as broad as medical publishing and is certainly far narrower than providing and sharing information concerning medicine using electronic means.

- The Respondent has legitimate rights and interests in the disputed domain name. The Respondent's website is intended to be a forum for the electronic exchange of medical case histories. The Respondent has made significant preparations for operating its website.

- There is no commercial angle to Respondent's website operation.

- Respondent had no knowledge of the Complainant's domain name before registering the disputed domain name .

- The sophistication of the expected users of Complainant's and Respondent's websites makes public confusion unlikely; the Complainant's and Respondent's services are different.

- The Complainant should be found guilty of attempting reverse domain name hijacking.

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain name transferred, the Complainant must prove the following (the Policy 4(a):

(i) the domain name is 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 domain name; and

(iii) the domain name was registered and is being used in bad faith.

Identical or Confusingly Similar

The Complainant has produced exemplary copies of two "EMEDICINE" service mark/trademark registrations it owns on the principal register of the Patent and Trademark Office of the United States of America. They are service mark no. 2,187, 823 dated September 8, 1998 in int. class 42 for "providing multiple-user access to a global information network for on-line viewing and editing of educational texts"; and no. 2,369,912 dated July 25, 2000, trademark and service mark in int. classes 9 and 42 for "downloadable electronic publications in the nature of medical reference books in the fields of emergency medicine, dermatology, ophthalmology, pediatrics..." (Complaint Exhibits B and C).

The Respondent's domain name is identical to the service and trademark in which the Complainant has shown it has rights.

The Panel notes that the Respondent has argued, tellingly, that "emedicine" is at best a descriptive term and may well already be generic. The Respondent has offered in evidence a decision of the United States Trademark Trial and Appeals Board (November 29, 2000) denying the registration of "efashion" as a trademark.. There the Board decided that "efashion" was merely descriptive. The Board went on to note: "In trying to understand this situation, we would make the point that, with each passing day, the Internet becomes more pervasive in American daily life. Many Internet words, such as "e-mail" and "e-commerce," have made their way into the general language." (The Response, and In re S Inc., Serial No. 75/459,910, Paper No. 10, p.10 (TTAB November 29, 2000)). (cf. Scholastic Inc. v. Applied Software Solutions, Inc., WIPO/ICANN Case No. D2000-1629, March 15, 2001, involving the domain name )

The Panel is receptive to Respondent's arguments, but notes that the Policy only requires that the Complainant meet the test of showing it has trademark or service mark rights in the disputed domain name. The Complainant's ownership of a still-valid United States principal registry trademark is sufficient evidence for the Panel under 4a(i) of the Policy.

The Respondent has pending a petition to the United States Patent and Trademark office to cancel the Complainant's EMEDICINE trademark registrations for invalidity as descriptive and generic (Response Appendix F). If the Respondent had already succeeded in convincing the United States Patent and Trademark Office or a court of competent jurisdiction that EMEDICINE can not be a valid trademark because it assertedly is descriptive or generic, the situation would be different. As this Case now stands, however, the Panel is not prepared to second guess a valid United States principal register trademark.

The Panel finds the Complainant has satisfied its burden of proof under this section.

Rights or Legitimate Interests

The Complainant has stated the Respondent has not been authorized to use its EMEDICINE mark in a corresponding domain name.

The Respondent has shown, however, that it has used the disputed domain name to make preparations to launch a website that would be a point of exchange for medical case histories among doctors. The Respondent has provided copies of this website in progress at Appendix C. Also, the Respondent's owner's position as a medical doctor, professor and researcher at Stanford University lends credence to the Respondent's claims that it has the means to execute such a project. The Respondent has also stressed that the site is to be noncommercial and all evidence on record supports this contention.

In effect, the Respondent is seeking to come under the fair use provision of the Policy at 4c(iii):

"you are making a legitimate noncommercial or fair use of the domain name , without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

The Panel finds the Respondent is making a non-commercial fair use of the disputed domain name and that this is a legitimate right or interest under the Policy. The Panel also finds there is no need to proceed to a discussion of bad faith since the Complainant has failed to show the Respondent has no rights or legitimate interests in the disputed domain name .

Reverse Domain Name Hijacking

The Respondent has alleged the Complainant has engaged in reverse domain name hijacking. The Respondent attempts to substantiate this contention by stating the Complainant failed to investigate the Respondent's use of the domain name and did not bring to the Panel's attention facts regarding Respondent's fair use of the domain name which were in the Complainant's possession at the time the Complaint was filed.

The Policy and Rules speak to the issue of reverse domain name hijacking at Rule 15(e):

If, after considering the submissions, the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

In the Panel's view, most of what Complainant now knows about the Respondent's intended use of the disputed domain name has come to light in this proceeding. The Respondent's website , admittedly an ambitious undertaking, is as yet incomplete and non-functioning. In addition, the Respondent cites its November 2, 2000 letter in response to the Complainant's letter alleging trademark infringement (Response, paras 13, 17, 18, and Appendix E) as evidence the Complainant knew about Respondent's plans for the disputed domain name at the time Complainant initiated this proceeding. In fact, on November 2, 2000, the Respondent basically wrote: "I obtained this (domain name) with the intent of creating a site for communication between my scientists and physicians." The Respondent attached no documentation for this contention, used no letterhead, and offered no other proof of source or intentions. Under the circumstances, the Panel can understand the Complainant might well have been skeptical of who the Respondent was and what its plans were. This proceeding has clarified these issues but, in the Panel's view, at the time Complainant filed the Complaint, it had legitimate grounds for bringing the Complaint under the Policy and the Rules.

The Panel does not find the Complainant brought this Complaint in a bad faith attempt at reverse domain name hijacking.

7. Decision

The Panel declines to find, as Respondent contends, that the Complainant filed this Complaint in a bad faith attempt at reverse domain name hijacking. Instead, the Panel finds the Complainant had legitimate grounds for challenging the Respondent's domain name registration.

The Panel has found that the Respondent registered a domain name identical to a trademark and a service mark in which the Complainant demonstrated rights. However, the Panel also has found that the Respondent was making a fair, non-commercial use of the domain name permitted under the Policy at 4c(iii). Thus, the Complainant has not met its burden of showing the Respondent has no rights or legitimate interests in the disputed domain name.

Therefore, pursuant to the Policy 4(i) and the Rules at Paragraph 15, the Panel declines to order transfer of the disputed domain name, , and the Complaint is dismissed.

Dennis A. Foster
Sole Panelist

May 25, 2001

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