WIPO Domain Name Decision D2006-0625 for shoulderdoc.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Shoulderdoc Limited v. Vertical Axis, Inc

Case No. D2006-0625

1. The Parties

The Complainant is Shoulderdoc Limited, Manchester Sports Medicine Clinic, Manchester, United Kingdom of Great Britain and Northern Ireland, represented by Pannone LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Vertical Axis, Inc, Yongin-si, Gyeonggi-do, Republic of Korea, represented by ESQ Law Firm, United States of America.

2. The Domain Name and Registrar

The disputed domain name is registered with Nameview Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2006. On May 19, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue. On May 23, 2006, Nameview Inc. 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. Nameview Inc. also confirmed that the language of the registration agreement is English.

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 June 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June�27,�2006. With the consent of the Complainant, however, the Center extended this to July�11,�2006. The Response was filed with the Center July�8,�2006.

The Center appointed Warwick A. Rothnie, Matthew S. Harris and David E. Sorkin as panelists in this matter on August�28,�2006. The Panel finds that it was properly constituted. Each member of 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 was incorporated on October 14, 2004, to carry on the business previously conducted by Mr. Lennard Funk. Mr. Funk is a consultant shoulder and upper limb surgeon and honorary lecturer at Salford Royal Hospital. On November�16,�2001, Mr. Funk acquired the domain name (the “UK domain name”). From that date, the UK domain name resolved to a website which provided, and continues to provide, a range of services relating to all manner of shoulder and elbow complaints including news, research articles and links to shoulder surgeons, therapists etc. According to the Complainant, its website attracts up to 48,000 hits a day.

The Complainant also distributes educational and informational brochures at sports medicine clinics. An example of one such brochure is included in Annex 6 to the Complaint. In this brochure the term “” appears prominently with a device element.

The Respondent registered the disputed domain name when its registration by another party expired. It is not clear from the papers if this was in March�2005 or May�2006. On the basis of the Respondent’s claims, it would appear to have been registered in March 2005 as that is the date the whois records show it was created. The Complainant does not claim that it was the prior registrant of the disputed domain name. The disputed domain name currently resolves to a website which:

(a) has a series of links under the heading “Related Searches” for “Shoulder pain”, “Shoulder Surgery”, “Shoulder Injury”, “Frozen shoulder” etc. and

(b) has a series of links under the heading “Sponsored Results for SHOULDER PAIN” for “TMJ/TMD Relief-Shoulder Pain”, “Heal Shoulder Pain Forever – Guaranteed”, “So, Palm Orthopedics for Shoulder Pain”, “Get a Real-Ease Neck, Shoulder relaxer” and “Shoulder Pain Clinic in Florida”.

As discussed below, however, it appears that the website in its current form is not the form in which the Respondent has always used it.

5. Discussion and Findings

Paragraph 15(a) of the Rules directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:

(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 has been registered and is being used in bad faith.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

In this case, the materials submitted as part of Annex 3 and Annex 6 to the Complaint show that the Complainant has used the term “S” (emphasised in this way) on its website and in its brochure, usually with an associated device element, but certainly not always. Even where used in proximity to the device element, the “word” component is sufficiently emphasised, prominent and differentiated that the public would be likely to treat it as a sign identifying the origin of the services provided from the site; that is, as a trademark or badge of origin. There are also some usages on the website of “Shoulderdoc” without the TLD, such as “Search Shoulderdoc” and “New to ShoulderDoc”.

While the Complaint does not include the usual measures of reputation and goodwill, such as sales revenues and advertising expenditures, the Complaint does provide credible evidence that the Complainant’s website has been receiving significant numbers of “hits” or traffic to its site.

In light of that evidence and the form of usage discussed above, a majority of the Panel finds that the Complainant is likely to have generated sufficient reputation and goodwill in the name , at least, to have acquired common law rights in a mark in England and Wales. These rights are sufficient to constitute trademark rights under the Policy. One member of the Panel would decline to reach a finding on this question, on the ground that the Panel’s finding as to bad faith is dispositive of the present matter.

The question of resemblance for the purposes of the Policy requires a comparison of the domain name to the trademark in which the Complainant has proved rights. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: See for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No.�D2001-0489; IKB Deutsche Industriebank AG v Bob Larkin, WIPO Case No.�D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c) of the Policy.

The common element between the disputed domain name and the Complainant’s trademark rights is the term “shoulderdoc”. This is the minor form in which the Complainant uses its trademark. On the materials before the Panel, it is more commonly used with “.”. The differences between the disputed domain name and the main way in which the Complainant uses its trademark are the inclusion of the gTLD .com in the disputed domain name and “.” in the trademark. Neither of these respective components is distinctive and can be disregarded for the purpose of comparison. It is of course possible that the two could be used by quite different entities which operate in different territories. “.com” however is international in scope and it is very common for entities to register domain names containing their trademarks in gTLDs as well as applicable ccTLDs. Accordingly, on a straightforward comparison, a majority of the Panel finds that the disputed domain name is identical or confusingly similar to the shoulderrdoc. trademark in which the Complainant has proved rights.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

“(i) before any notice to you of the dispute, your use of, or demonstrable 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(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.”

These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

The Complainant contends that it has not licensed or otherwise permitted the Respondent to use the term “Shoulderdoc” as part of the disputed domain name or otherwise. The Respondent does not dispute this.

The Complainant further contends that:

(a) the Respondent is not using the disputed domain name in connection with a bona fide offering for goods or services;

(b) the Respondent is not, and has not been, commonly known by the name Shoulderdoc; and

(c) the Respondent is not making a legitimate non-commercial or fair use of the domain name.

As to the lack of bona fide offering of goods, the Complainant contends that the disputed domain name resolves to a website which merely includes a search engine facility and a portal to other websites. It does not provide goods and services (other than the search engine facility and links to other sites). There is no direct or indirect reference to “shoulderdoc” other than ‘Welcome to ’. No medical or educational reference material is provided from the Respondent’s website. Indeed, the Complaint alleges that a majority of the links on the site lead to sites selling commercial products unrelated to shoulder problems including wedding, travel, finance etc.

In addition, going to the absence of legitimate non-commercial or fair use, the Complainant claims that the Respondent has registered the disputed domain name primarily with the intention of generating an income or commission by misleadingly diverting consumers intending to access the Complainant’s website. The Complainant invokes its arguments under the “registration and use in bad faith” limb in support of this allegation.

The Respondent does not claim to have been known as, or used, “Shoulderdoc” prior to registering the domain name. Nor does it claim any licence or permission from the Complainant. It contends that it does not need any licence or permission.

It contends that the disputed domain name consists of a generic or descriptive term. It claims that it registered the domain name simply because it was descriptive, without any knowledge of the Complainant or its trademark. In support of its claim that the term “shoulderdoc” is descriptive, the Respondent has submitted several pages of a Google search for “shoulder doc” which includes “hits” for, amongst other things, “Dr.�Michael Kioschos, shoulder doc”, “Dr. Allen Deutsch – ‘Houston’s Shoulder Doc” and various forum threads where participants have referred to “shoulder doc”s. The Respondent also refers to a number of dispute resolution decisions which it says establish the proposition that a domain name which consists of a generic term in and of itself establishes the registrants rights and legitimate interests.

First, the Panel notes that the cases in which that proposition is advanced tend to involve websites which make available goods or services of the kind covered by the descriptive term. See e.g. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031, Dial-A-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764, HP Hood LLC v. NAF No. 313566 (November�9,�2004), Vernons Pools Limited v. Vertical Axis, Inc. WIPO Case No. D2003-0041.

Here, the disputed domain name does appear now to be used in relation to the subject matter of which it is descriptive, however, as Annex 8 to the Complaint shows that was not the case shortly before the dispute was initiated. The Respondent’s positive claim that its website provides only sponsored links related to shoulder pain is not wholly consistent with the materials included in Annex 8. It does not explain why the website’s first link, as shown in Annex 8, is to “Surgery” then followed by “Shoulder” and then a range of other categories. Nor does it adequately explain why the links under “Shoulder” were to “Weight Loss Surgery”, “Financing for Cosmetic Surgery” and other services unrelated to shoulder pain.

Secondly, the Panel considers that the proposition for which the Respondent contends is more accurately stated in Jet Marques v. Vertical Axis, Inc. WIPO Case No. D2006-0250 in which the following passage from section 2.2 of the Center’s Overview of WIPO Panel Views on Selected UDRP Questions was adopted as correct:

“If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.”

That summary places appropriate emphasis on whether or not the Respondent has sought to take advantage of the Complainant’s rights; that is, whether or not the Respondent has acted in bad faith. Moreover, the Complainant’s key arguments attacking the Respondent’s rights or legitimate interests to use the disputed domain name are heavily dependent on the Complainant’s allegations of bad faith and the inference of an intention to trade on the Complainant’s goodwill which the Complainant invites the Panel to draw.

In these circumstances, the critical question is whether or not the Complainant has made out its allegation of bad faith. In the end, as in Jet Marques v Vertical Axis, Inc. WIPO Case No. D2006-0250, the Panel is clear in its view that the Complainant has failed to discharge its burden on that question in view of the limited nature of UDRP proceedings. The Panel explains its reasons for that view in section 5.C below. In view of that conclusion, it is not necessary in the particular circumstances of this case to make a finding under paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) 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; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Complainant alleges that the Respondent has registered the disputed domain name and used it to divert Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. It repeats the allegations already discussed under “No rights or legitimate interests” and invites the Panel to infer that the Respondent was aware of the Complainant’s trademark rights when the Respondent registered the disputed domain name as a result of the extent of the Complainant’s goodwill, the distinctiveness of its trademark and the sophistication of the Respondent in using the Internet. In connection with this last point, the Complainant points out that the Respondent has been the subject of at least five domain name disputes and, in each of them, it used the domain name in the same way as in the present case; that is, to point to a search engine facility.

The fact that the Respondent is a sophisticated user of the Internet can be accepted. It does not, however, conclusively establish registration and use of the disputed domain name in bad faith. What is necessary in this case is some link showing that the Respondent had knowledge of the Complainant or its activities particularly having regard to the relative weakness of the Complainant’s mark. Given the vast scale of the Internet, “sophistication” as a user will often not be enough to supply this, nor has the Complainant succeeded in proving that the Respondent possessed such knowledge.

So far as the reference to previous domain name disputes is concerned, and as the Respondent points out, the Complaint was denied in three of the five disputes relied on by the Complainant. That is not to say that the Respondent’s evidence here is not without its difficulties as, for example, discussed in relation to Paragraph 4(a)(ii) above. Therefore, the Panel has approached the Respondent’s assertions and evidence with a degree of skepticism. Nevertheless, it is one thing to be skeptical about the Respondent’s evidence and quite another to draw an inference from UDRP cases in which the Respondent has been previously involved where there have been mixed outcomes.

The Panel considers that the central question in the particular circumstances of this case is whether was registered with knowledge of the Complainant’s rights in the “shoulderdoc” name.

The Respondent flatly denies any knowledge of the Complainant or its trademark. Given the descriptive nature of the term “shoulder doc”, as already discussed, that claim is not inherently implausible. The present situation is quite different to cases like Telstra Corporation Limited v Nuclear Marshmallows WIPO Case No. D2000-0003 where the Panel found that a claim that the domain name there in issue, , could have been registered without knowledge of the complainant’s trademark not just implausible, but incredible. In this case, however, the Panel has considered the Respondent’s denial of any knowledge of the Complainant and the other relevant evidence, including the relative lack of distinctiveness of Complainant’s mark, and finds that the Complainant has not established that the disputed domain name was registered and is being used in bad faith.

The Panel therefore finds that the Complainant in this case has not proved the third element of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Warwick A. Rothnie
Presiding Panelist

Matthew S. Harris
Panelist

David E. Sorkin
Panelist

Dated: September 8, 2006

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