WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Varian Medical Systems, Inc. v. WholeBody Imaging, LLC
Case No. D2004-0425
1. The Parties
The Complainant is Varian Medical Systems, Inc., Palo Alto, California, of United States of America, represented by Tomlinson Zisko, LLP, of Palo Alto, California, United States of America.
The Respondent is WholeBody Imaging, LLC, of Fort Lauderdale, Florida and Laguna Beach, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June�9,�2004. On June�10,�2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On June�15,�2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the 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 June�16,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July�6,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July�9,�2004.
The Center appointed Michael A. Albert as the sole panelist in this matter on July�19,�2004. 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
Complainant is the manufacturer and designer of medical equipment, including radiological apparatus used in the irradiation and treatment of cancerous tumors, and related imaging devices and software.
Complainant is the holder of two trademarks registered with the United States Patent and Trademark Office for SEE & TREAT CANCER CARE, one issued March�11,�2003, and the other February�10,�2004, both claiming a date of first use in commerce of February�28,�2000. Complainant also holds a U.S. federal registration issued on June�10,�2003, for the mark SEE & TREAT, claiming the same first date of commercial use. Copies of the certificates of registration were attached to the Complaint. Complainant has also provided evidence of trademark registrations or applications filed in more than 30 countries and European Union for the SEE & TREAT and the SEE & TREAT CANCER CARE marks.
5. Parties’ Contentions
A. Complainant
Complainant contends that:
- it is one of the leading suppliers of cancer radiation equipment in the world;
- its SEE & TREAT CANCER CARE mark is used in connection with state of the art imaging capabilities such as computed tomography (CT) and radiation treatment systems;
- it has spent over $250,000 promoting these marks;
- Respondent causes the Domain Name to resolve to a website at which Complainant’s copyrighted pictures and text are featured, and which falsely represents that this copyrighted material is being used with Complainant’s permission, whereas Complainant has in fact objected to its use and demanded that Respondent remove the material from its website;
- Respondent’s website also features Complainant’s SEE & TREAT CANCER CARE trademark and design;
- Respondent has registered the corporate names “Southern California See & Treat Cancer Care Centers” in Nevada and Florida, and formerly used that name to identify itself on its website until Complainant demanded that it cease the use of such name. Respondent has failed to remove certain uses of the marks from the website;
- Respondent uses the website to entice Internet users to invest in shares in a limited partnership controlled by Respondent which purports to develop cancer treatment centers;
- Respondent is not licensed by Complainant to use its marks or to suggest an affiliation between the two entities;
- Respondent failed to comply with a cease-and-desist letter from Complainant demanding that Respondent cease using the website, the copyrighted materials, the Domain Name, the above-referenced corporate names, or the trademarks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel finds as follows:
A. Identical or Confusingly Similar
The Domain Name is confusingly similar to Complainant’s marks.
Complainant owns federally-registered trademark rights in the marks SEE & TREAT and SEE & TREAT CANCER CARE. These registrations, as well as the first commercial use underlying them, all pre-date Respondent’s registration of the Domain Name.
The Domain Name is precisely identical to one of Complainant’s marks, save for the addition of the generic word “centers,” the conversion of the ampersand (“&”) to the word “and,” and the addition of the top-level domain “.com,” none of which obviate confusion.
In comparing Complainant’s marks to the Domain Name, it is well established that the generic top-level domain, in this case “.com,” must be excluded from consideration as being a generic or functional component of the Domain Name. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000). Likewise, it is well established that converting a symbol such as an ampersand to its corresponding word (“and”) does not obviate confusion. See, e.g., AT&T Corp. v. WorldclassM, Case No. D2000-0553 (WIPO, July�28,�2000) (“[A]n ampersand is not a valid character in a domain name and its absence is not sufficient to prevent the [domain name] in dispute from being confusingly similar to Complainant’s marks.”). Finally, “[i]t is well established that the addition of a single, generic term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between a trademark and a domain name.” Buy Owner International, Inc. v. John Frank, Case No. D2002-0407 (WIPO, July�23,�2002). Here, since Complainant’s marks are used in connection with cancer care centers, Respondent’s addition of the word “centers” to Complainant’s mark in forming the Domain Name serves only to enhance rather than minimize the likelihood of confusion.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the Domain Name. It is not licensed to use Complainant’s marks. There is no evidence that it is using the Domain Name for a noncommercial purposes such as commentary or criticism. On the contrary, it appears to be using the Domain Name in a commercial manner calculated to suggest affiliation with Complainant or sponsorship of Respondent’s offerings by Complainant.
In light of the striking similarity between the Domain Name and the marks, and the express references to Complainant appearing in the content of the website to which the Domain Name resolves, it is clear that Respondent adopted the Domain Name with actual knowledge of the Complainant’s use. Moreover, it had constructive notice of such use by virtue of Complainant’s federal registrations. See 15 U.S.C. �1072. In sum, Respondent has no rights or legitimate interests in the Domain Name. By its default, Respondent has not even attempted to offer any evidence suggesting that it has any such rights or legitimate interests.
C. Registered and Used in Bad Faith
Complainant has also met its third hurdle of establishing that Respondent registered and is using the Domain Name in bad faith.
Paragraph 4(b)(iv) of the Policy offers, as one illustrative category of bad faith, the use of a domain name in an effort to attract, for commercial gain, Internet users to a website through confusion as to source, affiliation, or endorsement. As Complainant’s unrebutted evidence shows, Respondent has been using its confusingly similar domain name to attract Internet users to a website that offers goods or services related to those which Complainant provides. Respondent furthers that confusion by including Complainant’s copyrighted materials on the website without authorization, and by further falsely stating that the materials are used “by permission,” both of which have the effect of falsely suggesting that Respondent’s goods or services are endorsed by Complainant.
In short, Respondent is using Complainant’s trademarks in its Domain Name in order to attract web traffic to its site, for commercial gain, by creating a likelihood of confusion as to Complainant’s sponsorship, affiliation, or endorsement of Respondent’s offerings, in violation of Paragraph 4(b)(iv) 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 be transferred to the Complainant.
Michael A. Albert
Sole Panelist
Date: August�2,�2004
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