WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
IntegraMed America, Inc. v. Texas International Property Associates
Case No. D2007-0975
1. The Parties
The Complainant is IntegraMed America, Inc., Purchase, New York, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 3, 2007. On July 5, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On July 23, 2007, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 25, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2007. The Response was filed with the Center on August 14, 2007.1 Complainant filed a Reply to the Response on August 29, 2007.2
The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on October 4, 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
Complainant is a public company that offers various support services to medical practices in the United States of America that specialize in the diagnosis and treatment of infertility. Complainant also distributes pharmaceutical products and offers financing and infertility treatments to patients directly. Complainant’s network of fertility clinics consists of over 100 infertility specialists in 29 major medical centers throughout the U.S.
Among the services provided by Complainant are comprehensive business services rendered to independent physician group practices and hospital-based providers of infertility and assisted reproductive technology services, each of which may designate itself as “Reproductive Science Center” medical practices affiliated with Complainant. Complainant first offered its “Reproductive Science Center” services in 1995, and since that time has spent approximately $38 million on the promotion of infertility treatment services offered by its affiliated practices.
Complainant owns a United States Principal Register trademark registration (No. 2,956,956) for the mark REPRODUCTIVE SCIENCE CENTER, as used in connection with “business management and consultation for clinical facilities and physician practices, which provide assisted reproductive technology and/or fertility services to infertile couples seeking to achieve pregnancy”. Complainant also owns a United States Supplemental Register trademark registration (No. 2,164,846) for the mark REPRODUCTIVE SCIENCE CENTER, as used in connection with the above-referenced services, as well as in connection with “medical counseling, medical laboratory services, medical research and medical testing provided to clinical facilities and physician practices which provide assisted reproductive technology and/or fertility services to infertile couples seeking to achieve pregnancy”. See Complaint, Exhibit 3.3 Complainant also owns registrations for the domain names , , , and . See Complaint, Exhibit 5.
5. Parties’ Contentions
A. Complainant
Complainant asserts that it is the owner of the “well-established” and exclusive rights in the REPRODUCTIVE SCIENCE CENTER mark and that the domain name is identical to Complainant’s mark.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant notes that its use of and Principal Register registration covering the REPRODUCTIVE SCIENCE CENTER mark predate Respondent’s registration of the disputed domain name. It also maintains that Respondent is not commonly known by the domain name and is not making a legitimate noncommercial or fair use of the name. Upon information and belief, Complainant asserts that Respondent operates a pay-per-click site at “www.”, from which it derives substantial revenue based upon the number of times visitors click on links to various third-party websites contained on Respondent’s site and based upon pop-up ads for third-party websites and products that are generated by such site.
Complainant argues that Respondent registered the domain name in bad faith in that it unfairly attempted to capitalize on the goodwill of Complainant’s mark. Complainant notes that its REPRODUCTIVE SCIENCE CENTER mark has been used for approximately 12 years and has been the subject of significant media and advertising exposure in the United States of America.
Complainant also maintains that Respondent is using the domain name in bad faith. Complainant cites a number of ICANN panel decisions which have held that the use of a domain name to manage a website displaying links to third-party websites constitutes bad faith registration and use. Complainant further argues that Respondent’s use and registration of the domain name is meant to take advantage of the confusing similarity between the domain name and Complainant’s REPRODUCTIVE SCIENCE CENTER mark. More specifically, Complainant asserts, Respondent’s use of its domain name for an online directory that features links and pop-up ads for third-party businesses is likely to confuse consumers into believing that Respondent and the third-party businesses featured are affiliated with or endorsed by Complainant, or that Respondent’s use of the domain name is authorized by Complainant.
Furthermore, Complainant argues, Respondent’s use and registration of the domain name disrupts Complainant’s business by depriving it of the right to host a website at the “www.” to provide information concerning its REPRODUCTIVE SCIENCE CENTER services and/or the medical facilities taking advantage of those services.
Finally, upon information and belief, Complainant contends that Respondent has registered a large number of top-level domain names that incorporate the trademarks of third parties and that have been the subject of approximately 20 proceedings brought by trademark owners against Respondent under the Policy in April and May 2007 alone. See Complaint, Exhibit 12.
B. Respondent
In its Response, Respondent argues that it has rights or legitimate interests in the domain name. It indicates that the links in question are provided pursuant to Google terms and are triggered by search requests entered by computer users. There is no intent to target Complainant, Respondent contends. It maintains that it has no control over what terms advertisers bid on at Google and what terms appear on its site.
Respondent argues that it registered the disputed domain name because it believed it was a descriptive term to which no party has exclusive rights. Respondent states that it believed the disputed domain name was a good name for sponsored listings by any of the thousands or separate companies and individuals who use “reproductive” or “science” or “center” in a generic and/or descriptive sense on the Internet.
According to Respondent, “[h]aving demonstrated that Complainant’s alleged mark is generic and/or merely descriptive it must follow that Respondent did not register, and is not using, the disputed domain name in bad faith”. Respondent further states that where a mark is a common term with substantial third party use, as is the case here, a complainant must present evidence that demonstrates that the respondent specifically intended to confuse consumers. “There is no such proof here”, Respondent asserts.
C. Complainant’s Reply
In its Reply, Complainant notes that the third parties appearing in the search results on the pay-per-click search portal operated by Respondent at “www.” do not use any combination of the words “reproductive”, “science”, and/or “center” in a fair or descriptive way. In fact, Complainant points out, the majority of these third parties are not using any of these words. The third-party sites in question link primarily to male enhancement-related products. See Reply, Exhibit A.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the mark REPRODUCTIVE SCIENCE CENTER. The addition in the domain name of the generic top-level domain “.com” has no effect in assessing identity of a domain name and a mark. See VAT Holding AG v. ,WIPO Case No. D2000-0607 ( identical to VAT mark).
The Panel further finds that Complainant has rights in the mark REPRODUCTIVE SCIENCE CENTER. The evidence indicates that Complainant owns a Principal Register registration for the mark REPRODUCTIVE SCIENCE CENTER. The registration certificate indicates that the registration was issued under Section 2(f) of the U.S. trademark law, 15 U.S.C. �1052(f), thus signifying that, in the opinion of the United States Patent and Trademark Office, the mark has acquired the necessary degree of distinctiveness to be protectable. Under U.S. trademark law, a mark that is the subject of a Principal Register registration is presumptively valid.4 See 15 U.S.C. �1057(b). Many ICANN panel decisions hold that ownership of a registered mark satisfies the requirement of having rights in a mark. See, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thiagem Global Marketing Ltd. v. Sanchai Aree,WIPO Case No. D2002-0358. While Respondent contends that REPRODUCTIVE SCIENCE CENTER is a descriptive term to which no party has exclusive rights, it has presented no evidence in support of such a position.
B. Rights or Legitimate Interests
The Panel rules that Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. The evidence indicates that Respondent uses a domain name identical to that of Complainant’s mark merely to operate a pay-per-click site that displays sponsored links to third-party sites. As such, the Panel finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services and that such use does not constitute a legitimate noncommercial or fair use under the Policy. See Universal City Studios v. G.A.B. Enters,WIPO Case No. D2000-0416 (no bona fide use of “field of dreams” to sell baseball memorabilia when use would cause confusion with complainant’s FIELD OF DREAMS mark); The Benevolink Corp. v. Texas International Property Associates, WIPO Case No. D2007-0404. There also is no evidence that Respondent is commonly known by the domain name.
Respondent contends that it has a legitimate interest in the disputed domain name because it uses the term “reproductivesciencecenter” in its primary descriptive sense, i.e., is making “fair use” of the domain name. However, the evidence indicates that the disputed domain name is used in connection with a website that, for the most part, deals with male sexual enhancement products, as opposed to reproductive technology. Moreover, to fall under the “fair use” provision of the Policy, the evidence must establish that Respondent is using the domain name “without intent for commercial gain to misleadingly divert consumers…”. Given that the evidence suggests that Respondent earns income based on the number of times Internet users clink on links to the third-party sites found at Respondent’s site, it is clear that Respondent is not making a “fair use” of the domain name, within the meaning of paragraph 4(c)(iii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and is being used in bad faith. The evidence establishes that, by using the domain name in issue, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site, within the meaning of paragraph 4(b)(iv) of the Policy. The disputed domain name incorporates in full Complainant’s registered mark, which has been used for approximately 12 years and has been the subject of significant advertising and promotion in connection with fertility services. See, e.g., Allianz of America Corp. v. Bond, NAF Case No. FA 680624 (finding bad faith registration and use where respondent was diverting Internet users searching for complainant to its own website and likely profiting from click-through fees); Dollar Rent A Car Inc. v. Albert Jackson, NAF Case No. FA 187421 (finding bad faith where respondent operates pay-per-click website using domain name that incorporates complainant’s mark). While Respondent contends that it “has created a good faith business that is valuable to Internet users seeking to locate providers of goods and services, through reference to common, well-known, generic, descriptive, and geographically descriptive terms”, the evidence indicates that the disputed site is not concerned with reproductive science.
The evidence also supports a determination that Respondent registered the domain name in order to prevent Complainant from reflecting the REPRODUCTIVE SCIENCE CENTER mark in a corresponding domain name and that Respondent has engaged in a pattern of such conduct. As noted above, Exhibit 12 to the Complaint indicates that Respondent has been the subject of about 20 UDRP proceedings in the months of April and May 2007 alone. In each case, the domain name in dispute was ordered transferred from Respondent. Thus, paragraph 4(b)(ii) of the Policy also supports a determination that the domain name was registered and is being used in bad faith.
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.
Jeffrey M. Samuels
Sole Panelist
Dated: October 18, 2007
1 In an email dated September 18, 2007, Complainant’s counsel noted that Respondent had not filed hard copies of its Response to the Center, in violation of ICANN Rule 5(b) and the Center’s Supplemental Rule 3(c). Exercising its discretion, the Panel will consider the arguments and evidence set forth in the Response in deciding this matter.
2 The Center’s Supplemental Rules do not provide for the filing of a Reply. If a Complainant wishes to file a Reply, the better practice is to request permission from the Panel. Exercising its discretion, the Panel will consider the arguments and evidence set forth in Complainant’s Reply.
3 In paragraph 13 of its Complaint, Complainant indicates that both of its registrations are on the Principal Register. As Respondent points out in its Response and as Complainant concedes in its Reply, Registration No. 2,164,846 is on the Supplemental Register.
4 As noted above, Complainant also owns a Supplemental Register registration for REPRODUCTIVE SCIENCE CENTER. A term registered on the Supplemental Register is not presumptively valid. See 15 U.S.C. �1094.
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