WIPO Domain Name Decision D2008-1008 for sansumclinic.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sansum Clinic v. S / c/o Whois Identity Shield

Case No. D2008-1008

 

1. The Parties

The Complainant is Sansum Clinic, Santa Barbara, California, United States of America, represented by Arnold & Porter, United States of America.

The Respondent is S /, c/o Whois Identity Shield, Vancouver, British Columbia, Canada.

 

2. The Domain Name and Registrar

The disputed domain name, (the “Domain Name”), is registered with Nameview Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 4, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response indicating the registrant as “Sansum – Santa Barbara Medical” and providing contact details in Santa Barbara, California, United States of America.

In response to a notification by the Center that there had been an apparent change in registrant data, the Complainant filed an amendment to the Complaint on July 15, 2008. The Complainant also confirmed that they had no control over the Domain Name. The amendment to the Complaint contains powerful evidence to show that following service of the original complaint on the Respondent and the Registrar, the Registrar changed the registrant information on its database to identify the Complainant as the registrant of the Domain Name.

The Center verified that the Complaint together with the amendment to 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 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 7, 2008.

The Center appointed Tony Willoughby as the sole panelist in this matter on August 14, 2008. 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 unchallenged evidence of the Complainant, which appears to the Panel to be borne out by the exhibits to the Complaint is as follows:

The Complainant has for over 85 years provided medical services in Santa Barbara, United States of America, under and by reference to names incorporating the words “Sansum” and “Clinic”, including more recently the name, “Sansum Clinic”.

The Complainant was once the registered proprietor of United States federal registration No. 2185868 (since cancelled) for the word mark SANSUM MEDICAL CLINIC registered on September 1, 1998 for various medical services and claiming first use in 1971. It is currently the proprietor of two United States federal service mark applications for SANSUM CLINIC for medical and other services. Those applications were filed on July 25, 2006 and were published for opposition on May 20, 2008.

The Domain Name was registered on July 16, 2003.

At date of filing of the Complaint the Domain Name was connected to a website, featuring the heading “Welcome to Sansum Clinic” and a click-through service to websites of third parties, some of which offered services similar to those of the Complainant. Following filing of the Complaint, the website was changed to one featuring links to the Complainant's websites including its website connected to its domain name, .

 

5. Parties' Contentions

A. Complainant

The Complainant contends that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

 

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i) The Domain Name is identical or confusingly similar to a trade mark 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 in bad faith and is being used in bad faith.

From section 3 above, it will be noted that following filing of this Complaint, the Registrar permitted/effected a change to the Whois database for the Domain Name, which in the Panel's view should never have been made. The change made was to alter the name of the Respondent (true identity presumably protected by the Registrar's identity shield) to that of the Complainant, without releasing control of the Domain Name to the Complainant. As previous panels have observed, such changes “undoubtedly complicate and in some cases may frustrate proceedings.” DHL Operations B.V. and Deutsche Post AG v. Kathy McCarty,WIPO Case No. D2007-1431, see also Shon Harris v. c/o Whois Identity Shield,WIPO Case No. D2007-0997. Simultaneously (see section 4 above), the website to which the Domain Name was connected was changed from one featuring links to third parties to one featuring links to the Complainant's websites.

The Panel treats the proper Respondent as being the listed registrant of the Domain Name at the time the Complaint was initiated, the entity identified in the heading to this decision, whose name was originally protected by the Registrar's identity shield and who has now seemingly assumed the name of the Complainant.

B. Identical or Confusingly Similar

The Complaint talks of the Complainant having federal trade mark registrations of the word mark, SANSUM CLINIC, but the exhibit to which the Panel is referred provides details of applications, which have been published for opposition. The Complaint also shows that about 10 years ago the Complainant was the registered proprietor of a federal registration for the mark, SANSUM MEDICAL CLINIC, but that registration was subsequently cancelled.

Nonetheless the Complainant has produced sufficient evidence to satisfy the Panel that the Complainant has common law rights in respect of the Domain Name. Moreover, the nature of the websites to which the Respondent has connected the Domain Name has been such that the Respondent is in no position to deny such rights. To put it another way, the content of the Respondent's websites could only have been created in the knowledge that “Sansum Clinic” identifies the services of the Complainant.

The Domain Name comprises the Complainant's trade mark or service mark, SANSUM CLINIC, and the generic domain suffix, which may be ignored when assessing identity and confusing similarity.

The Panel finds that the Domain Name is identical to a trade mark or service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent has not filed a formal Response to the Complaint. It has, however, reacted to the Complainant by putting the Domain Name into the name of the Complainant. While that is not conclusive of the Respondent not having any rights or legitimate interests in respect of the Domain Name, the Panel finds it a powerful indicator.

At date of filing of the Complaint the Domain Name was connected to a website, featuring the heading “Welcome to Sansum Clinic” and a click-through service to websites of third parties, some of which offered services similar to those of the Complainant. Following filing of the Complaint, the website was changed to one featuring links to the Complainant's websites including its website connected to its domain name, .

“Sansum Clinic” is a unique and specific name identifying the Complainant. As indicated above, the Panel is in no doubt that the Respondent has at all times been fully aware of that fact. In other words, the Respondent knew the name to be the name of the Complainant when it registered the Domain Name in 2003.

The Panel finds that the Complainant has made out a strong case under this head and that the Respondent has a case to answer. In the absence of any answer the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered and Used in Bad Faith

To select for a domain name a name, which is, to the knowledge of the registrant, unique to the Complainant and to which the registrant has no rights or legitimate interests will almost always constitute an abuse under the Policy.

Here, the Complainant alleges that the Respondent will have been earning revenue from the links originally featured on the website to which the Domain Name was connected. In the absence of a Response, the Panel finds that probable.

Given the Panel's finding that the name “Sansum Clinic” is exclusively referable to the Complainant, Internet users visiting the Respondent's website are very likely to be doing so in the hope and expectation that they will be visiting a site of the Complainant. Accordingly, any commercial gain derived from those visitors to the Respondent's website will have been achieved on the back of a deceit.

The Panel finds that the Respondent can have had no justifiable reason for selecting the Complainant's name for the Domain Name and using it as it has. The Panel finds that the Respondent's purpose all along has been to profit on the back of the Complainant's trade mark rights and by deceiving Internet users.

The behaviour of the Respondent and the Registrar on the filing of the original Complaint as described above does nothing to dispel the Panel's conviction that the Respondent's intentions have been abusive from the outset.

The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.

 

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.

Tony Willoughby
Sole Panelist

Dated: August 28, 2008

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