WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Clinquest, Inc. v. MustN
Case No. D2006-1536
1. The Parties
The Complainant is Clinquest, Inc., Massachusetts, United States of America, represented by Edwards Angell Palmer & Dodge, LLP, United States of America.
The Respondent is MustN, Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2006. On December 5, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On December 8, 2006, Moniker Online Services, 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 December 12, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January�1,�2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 3, 2007.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on January�26, 2007. 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 owner of two U.S. registered trademarks that are comprised of the word ‘clinquest’ – (i) U.S. Trademark Registration No. 2,416,937 for CLINQUEST INC in respect of “product development consultation relating to pharmaceutical, biopharmaceutical and medical devices” and (ii) U.S. Trademark Registration No. 2,832,974 for CLINQUEST in respect of “product development business consulting and the performing of tasks related to product marketing for the pharmaceutical, biotechnology, diagnostics, medical device, and nutraceutical industries; product development consulting and the performing of tasks related to product marketing for the pharmaceutical, biotechnology, diagnostics, medical device, and nutraceutical industries.”
The Complainant has been using the marks CLINQUEST INC (& Design) and CLINQUEST (“CLINQUEST Marks”) since 1997, in respect of consulting services. The Complainant’s website, brochures and other promotional materials all bear one or both of the CLINQUEST Marks.
The Respondent has registered the disputed domain on July 29, 2001, with Moniker Online Services, LLC.
5. Parties’ Contentions
A. Complainant
Identical or Confusingly Similar
The Complainant contends that it has rights in the CLINQUEST marks by virtue of their U.S. trade mark registrations and use in respect of consulting services relating to pharmaceutical, biopharmaceutical and medical devices and that the disputed domain name is identical to the Complainant’s CLINQUEST trade mark and confusingly similar to the Complainant’s CLINQUEST logo trade mark.
Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is in the business of registering domain names which comprised of trade marks owned by established businesses, keeping these domain names at a site with indexed links and a search engine and attempting to sell the domain names for sum in excess of its registration fees. The Complainant contends that the Respondent (i) does not own any trade mark or service mark registrations encompassing CLINQUEST or the domain name nor any variations thereof; (ii) is not commonly known by CLINQUEST or the disputed domain name; (iii) has not made and is not making any bona fide offering of goods or services under the domain name; (iv) is not licensed, authorized or permitted in any other way to make use of the Complainant’s trade mark or apply to register a domain name comprised of the Complainant’s trade mark; and (v) is not making a legitimate noncommercial or fair use of the domain name. To the contrary, the Complainant asserts that the Respondent is using the domain name to misleadingly divert consumers to a generic, pay-per-click website with indexed links for commercial gain, which constitutes illegitimate activity. Furthermore, the Complainant contends that the CLINQUEST is a coined word, and is not a word that the Respondent would legitimately choose to include in its domain name unless it was interested in trading on the goodwill of the Complainant or planning to sell the rights in the domain name to the Complainant or some other party for an amount in excess of its registration costs. Finally, the Complainant contends that the Respondent’s pattern of behavior in registering domain names which comprise of trade marks of others demonstrates its lack of any legitimate interest in registering or using the disputed domain name.
Registered and Used in Bad Faith
The Complainant contends that the domain name was registered and is used in bad faith by the Respondent. The Complainant asserts that by using the domain name to direct internet users to a pay-per-click website, the Respondent intentionally diverts Internet users for commercial gain and this conducts disrupts the Complainant’s ability to conduct business on the Internet. The Complainant also asserts that the Respondent in registering and continuing to operate a pay-per-click website in association with the disputed domain name has caused confusion as to the nature and source of the Complainant’s business. Finally, the Complainant asserts that the Respondent has been named in at least 10 other UDRP actions. In each of these actions, the Panel has ruled that the disputed domain name be transferred to the complaining party. The Complainant contends that in view of the Respondent’s pattern of behavior and history of registering domain names which comprised of the trade marks of others, it could be inferred that the Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph�4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. the 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.
Paragraph�4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Pursuant to paragraph�15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph�14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs�4(a),�(b),�(c)), the Panel concludes as follows:
A. Identical or Confusingly Similar
The Complainant has produced evidence to demonstrate that it has trade mark rights in the U.S. registrations of the CLINQUEST service marks and has used the CLINQUEST marks, either the word CLINQUEST or with the logo since 1997, in its business of providing product development consultation services in relation to pharmaceutical, biopharmaceutical and medical devices. The Panel accepts the evidence adduced by the Complainant and finds that the Complainant has trademark rights in the CLINQUEST marks.
The disputed domain name comprises an exact reproduction of the Complainant’s trademark CLINQUEST with the addition of the TLD “.com”. In assessing the degree of similarity between the Complainants’ mark and the Respondent’s domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements.
The addition of a TLD to an otherwise identical replication of the Complainant’s trademark does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark. Many UDRP cases have held that the addition of the generic top level domain extension does not serve to distinguish the Respondent’s domain name from the Complainant’s trademark because “when a trademark is composed in whole or in part of a domain name, neither the beginning of the URL nor the TLD (.com) have any source indicating significance. Those designations are merely devises that every Internet site provider must use as a part of its address.” (See The Forward Association, Inc. v. Enterprises Unlimited, NAF Case FA 0008000095491, October�3,�2000.). Consequently, the addition of “.com” domain to the Complainant’s CLINQUEST marks does not distinguish the Respondent’s domain name from the Complainants’ CLINQUEST marks.
The Panel therefore finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Panel thus finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case of the Respondent’s lack of rights or legitimate interests to the Domain Name.
The Panel finds that the following circumstances are indicative of the Respondent’s lack of rights or legitimate interests in the disputed domain name:
(i) The Complainant’s CLINQUEST mark is a coined word with no descriptive significance to the goods or services sold under it. Therefore, the Respondent could not be taken to be using the CLINQUEST mark in a descriptive sense. Consequently, it is not one that traders would legitimately choose unless the purpose is to create an impression of an association with the Complainant.
(ii) The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word CLINQUEST in its business operations;
(iii) The Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and
(iv) The Respondent has not made and is not making any bona fide offering of goods or services under the disputed domain name.
According to paragraph�4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Respondent has not participated to this proceeding and has not provided evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. In accordance with the Rules paragraph�14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to show cause that it has rights or legitimate interests to the said domain name.
The Panel finds for the Complainant on the second part of the test.
C. Registered and Used in Bad Faith
Paragraph�4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s 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 Respondent’s website or location or of a product.
The Panel finds that the circumstances referred to in paragraph�4(b)(ii) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude the Respondent has registered and used the disputed domain name in bad faith.
There is evidence adduced before the Panel which demonstrates that the Respondent consistently engages in a pattern of behavior namely, registering domain names which comprised of others’ trade marks, uses these domain names to direct Internet users to a pay-per-click website with indexed links. No genuine goods or services are being offered by the Respondent on the website, which the domain names resolve onto. The Panel finds that there is substantiating evidence that the Respondent has registered the disputed domain name for less than honorable intentions. The Complainant has adduced evidence and proved that by using a confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website. Furthermore, the Respondent has through the use of this confusingly similar domain name created a likelihood of confusion with the Complainant’s mark and this constitutes a fraudulent misrepresentation to the public that its website is associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name, the conduct of the Respondent as far as the website on to which the domain name resolves and the history of the Respondent pattern of behavior are indicative of registration and usage of the disputed domain name in bad faith.
The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain name in bad faith.
The Panel finds for the Complainant on the third part of the test.
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.
Susanna H.S. Leong
Sole Panelist
Dated: February 9, 2007
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