WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Joe David Graedon v. Modern Limited - Cayman Web Development
Case No. D2003-0640
1. The Parties
The Complainant is Joe David Graedon, Durham, North Carolina, of United States of America, represented by J. Dickson Phillips, Daniels, Daniels & Verdonik of United States of America.
The Respondent is Modern Limited - Cayman Web Development, George Town, Cayman Islands, of United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is registered with Address Creation.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2003. On August 15, 2003, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On August 15, 2003, Address Creation 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 administrative, billing, and technical contact. On August 19, 2003, the Complainant sent an e-mail to the Center requesting the possibility to amend its Complaint. On August 20, 2003, the Center replied that in this case, the appropriate procedure would be for the Complainant to request a suspension for 30 days. On August 20, 2003, the Complainant requested a 30-day suspension in order to submit an amended Complaint. On August 21, 2003, the Center granted the requested suspension and informed both the parties and the registrar that the proceedings were suspended until September 20, 2003. On September 12 and 15, 2003, (e-mail and hard copy), the Complainant filed an amended Complaint. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 September 16, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default October 7, 2003.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on October 10, 2003. 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 the holder of the following trademarks:
- THE PEOPLE�S PHARMACY, registered on August 8, 1995 (U.S. Registration n� 1,910,019) for syndicated newspaper columns concerning health and drug information, and a series of books concerning health and drug information in class 16 of the Nice Classification (U.S. Cl. 38); this trademark was first used in commerce on July 23, 1976.
- THE PEOPLE�S PHARMACY, registered on August 8, 1995 (U.S. Registration n� 1,910,531) for entertainment services, namely the rendition of an on-going radio program dealing with health and drug related information in class 41 of the Nice Classification (U.S. Cl. 107); this trademark was first used in commerce on October 30, 1976.
The Complainant and his wife, Dr. Teresa Graedon, are the co-authors of a newspaper column under the trademark "THE PEOPLE�S PHARMACY". This trademark is also used for a radio program which is available to approximately 5 million households served by over 425 stations throughout the United States. The Complainant and his wife have also written several books which display the trademark "THE PEOPLE�S PHARMACY".
From 1998 to 2001, Complainant used the website under the domain name to provide his services and promote his books, articles, and radio program.
During that period, the domain name was registered by a company with which the Complainant had contracted to assist in creating his website. When the subject domain name registration expired, Complainant attempted to acquire the domain name in his own name (the registrant having gone into bankruptcy), but it was instead acquired by the Respondent�s predecessor. The domain name was then transferred to the Respondent. The Respondent�s domain name points to a website which is a mere collection of links to other websites.
5. Parties� Contentions
A. Complainant
1. Identical or Confusingly Similar
The Complainant asserts that the mark "THE PEOPLE�S PHARMACY" is widely known and indicates a common source for the high quality, objective and carefully researched health and pharmaceutical-related information which he provides.
The Complainant affirms that the domain name is identical or confusingly similar to his trademarks.
2. Rights or Legitimate Interests
Considering the fact that the Respondent is a well-known cybersquatter according to the Complainant, and that none of the circumstances described in Policy, paragraph 4(c) applies, the Complainant contends that the Respondent has no rights or legitimate interests in the domain name.
3. Registered and Used in Bad Faith
The Complainants asserts that the Respondent registered and used the domain name in bad faith for the following reasons:
- the domain name is essentially identical to its trademarks;
- the Respondent uses the goodwill associated with the Complainant�s trademarks;
- the Respondent registered thousands of domain names identical or similar to the names and marks of famous people and businesses.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[�] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
According to Policy, paragraph 4(a)(i), the Complainant has to prove that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant is the holder of two registered trademarks in the United States which consist of the words "THE PEOPLE�S PHARMACY". He has therefore established his rights in these marks.
Though not identical, there is no doubt that the domain name is confusingly similar to the Complainant�s trademarks. The mere differences between the domain name and the Complainant�s trademarks are the omission of the article "the" and of the apostrophe on the one hand, and the addition of the gTLD ".com" on the other hand.
However, none of these differences have such an influence upon the overall impression that it would exclude the likelihood of confusion between the domain name and the Complainant�s trademarks. As already stated in several cases, the gTLD is a technically necessary element of a domain name; therefore, it should not be considered in determining the question of identity or confusing similarity of the disputed domain name to a mark of Complainant (see for instance: Tengizchevroil v. Hardinvestments Limited, WIPO Case No. D2002-0061). As far as the omissions of the article "the" and the apostrophe are concerned, the public is unlikely to retain in mind the difference of the article or apostrophe if it sees Respondent�s domain name after seeing Complainant�s trademarks and vice versa (see: DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181). This is all the more obvious in the present case as the Complainant clearly demonstrates that actual confusions did occur among the public.
Accordingly, the Panel finds that Policy, paragraph 4(a) (i) has been satisfied.
B. Rights or Legitimate Interests
According to Policy, paragraph 4(b) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name.
In Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, the Panel stated: "Where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion."
In this case, the Respondent does not bring any evidence that would demonstrate any legitimate interest or right in the domain name as he did not proceed. More specifically, the Respondent does not demonstrate that:
(i) before any notice to him of the dispute, he used or made 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; or
(ii) he is commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) he is 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.
Besides, the fact that the Respondent has already been part of several proceedings under the UDRP, that he did not proceed in any of these cases (see: Georgia Boot LLC v. Modern Limited - Cayman Web Development, National Arbitration Forum Case No. FA0303000149173; The Sportsman�s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305), and that he is the current holder of several domain names which consist of the names of famous people or businesses (, , , , ) prove that he does not have any rights or legitimate interests in the domain name.
For this reason, the Panel admits the Complainant�s contentions and considers Policy, paragraph 4 (a)(ii) to be fulfilled.
C. Registered and Used in Bad Faith
For a Complainant to succeed, the Panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4 (a)(iii)).
The Respondent�s domain name points to a website which is a mere collection of links to other websites. As the Complainant correctly points out, this website is obviously merely a vehicle for generating advertising revenue. By using the domain name, the Respondent therefore has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's trademarks. Policy, paragraph 4 (b)(iv) is therefore satisfied.
From the evidence submitted to the Panel, it is evident that the Respondent is continuing its infringing behavior of registering famous marks in domain names and subsequently attempting to induce the rightful owner to purchase the domain name registration. Policy, paragraph 4 (b)(i) is also satisfied.
Finally, considering the fact that the Respondent registered famous marks in domain names which are all pointing to the same collection of links, there is little doubt that the Respondent was aware of the existence of the previous website used by the Complainant under the domain name from 1998 to 2001. Thus, one has to conclude that the Respondent registered the domain name in order to prevent the Complainant from reflecting his trademarks in a corresponding domain name. Policy, paragraph 4 (b)(ii) is satisfied as well.
The Panel finds that Policy, paragraph 4 (a)(iii) has been satisfied.
7. Decision
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 be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Dated: October 15, 2003
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