WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The John Hopkins Health System Corporation, The John Hopkins University v. Domain Administrator Case No. D2008-1958 1. The Parties
The Complainants are The John Hopkins Health System Corporation and The John Hopkins University, both Baltimore, Maryland, United States of America, represented by Vorys, Sater, Seymour and Pease, LLP, United States of America.
The Respondent is Domain Administrator, Hong Kong, SAR 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 19, 2008. On December 23, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 23, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 12, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 13, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 9, 2009.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 18, 2009. 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
1. The John Hopkins University was founded in 1876 in Baltimore, Maryland, United States of America.
2. The University's School of Medicine was established in 1893 and the John Hopkins Hospital opened in 1889.
3. Today the University is a leading institution in the teaching of medicine and the training of doctors.
4. The Complainants jointly own the trade mark JOHN HOPKINS which has been registered in a number of jurisdictions.
5. The Complainants jointly claim unregistered trade mark rights in the words JOHN HOPKINS MEDICINE through use and reputation.
6. The Complainants have not authorised the Respondent to use either trade mark, nor to register any domain name incorporating either trade mark.
7. The Respondent is a domain name proxy service company.
8. The disputed domain name was registered on September 6, 2003.
9. A portal website corresponding with the disputed domain name carries links to medical and health care services unconnected with the Complainants.
10. The Complainants petition the Panel to order transfer of the disputed domain name from the Respondent to the Complainants. 5. Parties' Contentions A. Complainants
The Complainants assert trade mark rights and state that the disputed domain name is legally identical to the common law trade mark JOHN HOPKINS MEDICINE and confusingly similar to the registered trade mark JOHN HOPKINS.
The Complainants allege that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainants allege that the Respondent registered and used the disputed domain name in bad faith.
The detail of the Complaint is included where necessary in Part 6 of this Decision. B. Respondent
The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, a 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 and is being used in bad faith. A. Identical or Confusingly Similar
On the evidence, there is no doubt that the Complainants have trade mark rights in the words JOHN HOPKINS acquired through both use1 and registration2.
Moreover, applying the principles developed under the Policy which now have wide support, the disputed domain name is confusingly similar to the Complainants' trade mark JOHN HOPKINS. In particular, the gTLD is a trivial; in context with this trade mark, the word “medicine” is descriptive and non-distinctive; and the omission of spaces between the words is inconsequential3.
The Panel accordingly finds that the Complainants have satisfied the first element of the Policy on the basis of rights in the trade mark JOHN HOPKINS and so there is no need to consider what unregistered rights might exist in the trade mark JOHN HOPKINS MEDICINE. B. Rights or Legitimate Interests
There is no evidence that the Complainants were aware of, or could have reasonably discovered, the identity of the beneficial owner of the disputed domain name. The current consensus of opinion of other panels applying the Policy is that in these circumstances it was appropriate for the Complainants to have proceeded against the proxy service company as the nominated Respondent4.
The Complainants have the burden to establish that the Respondent has no rights or legitimate interests in the domain name. Nevertheless, it is well settled that the Complainants need only make out a prima facie case, after which the onus shifts to the Respondent to demonstrate rights or legitimate interests5.
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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.
The WhoIs data does not support any argument that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has any trade mark rights in the name, registered or not. The Complainants have stated there to be no relationship between them and the Respondent.
The Respondent does not appear to be using, nor has it presented evidence of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent appears to be using the disputed domain name to re-direct Internet users to commercial websites that promote the goods of competitors in the same business as the Complainants. It is established by former decisions under the Policy that such action is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the domain name6.
The Panel finds that the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent in failing to reply has not discharged the onus which fell to it as a result.
The Panel finds that the Respondent has no rights or legitimate interests in the domain name and so the Complainants have satisfied the second limb of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(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.
What is noteworthy about paragraphs 4(b)(i)-(iv) of the Policy is that they are cases of both registration and use in bad faith. The Complainants have, inter alia, relied specifically on paragraph 4(b)(iv) of the Policy and it is logical to first test the Respondent's actions against that aspect of the Policy.
The Panel has already found the domain name to be confusingly similar to the trade mark JOHN HOPKINS. The Panel finds that the likelihood of confusion as to source is therefore highly likely.
Paragraph 4(b)(iv) also requires an intention for commercial gain. What is required is a finding that it is more likely than not such an intention existed; absolute proof is not required and the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory7.
The links in question are principally to medical and healthcare services unconnected with the Complainants' services. The Complainants allege that the Respondent was most likely benefitting from pay-per-click revenue resulting from the likely confusion.
On the facts, the Panel finds it more likely than not that the Respondent had the requisite intention for commercial gain. It is abundantly clear that use of a domain name in this same manner is very frequently for commercial gain8.
The Panel finds that the Complainants have shown the Respondent's use of the disputed domain name falls under paragraph 4(b)(iv) of the Policy and was therefore used and registered in bad faith.
Accordingly, the Panel finds that the Complainants have satisfied the third and final limb 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 Complainants.
Debrett G. Lyons
Sole Panelist
Dated: February 27, 2009
1 The University has been responsible for many of the great breakthroughs in modern medicine. Over the years, nineteen of its scientists have been Nobel Prize winners.
2 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Case No. FA705262 (“Complainant's registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Case No. FA174052 (finding that the complainant's registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant's rights in the mark for purposes of Policy paragraph 4(a)(i)).
3 See Vin Diesel v. LMN a/k/a L.M. Nordell, NAF Case No. FA804924 finding to be identical to complainant's mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (‘gTLD') ‘.com' [is] insufficient to differentiate the disputed domain name from Complainant's VIN DIESEL mark under Policy 4(a)(i)”.
4 See, for example, Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886 (March 10, 2008); see also Baylor University v. Domains By Proxy Inc., a/k/a Mark Felton a/k/a Thomas Bassett a/k/a William Bunn a/k/a Fertility Specialists of Dallas a/k/a Becky Chatham a/k/a Amanda Scott a/k/a Nathan Flaga a/k/a Lisa Payne a/k/a Victor Weir III, NAF Case No. FA1145651 (May 26, 2008).
5 See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. 741828; AOL LLC v. Jordan Gerberg, NAF Case No. FA780200.
6 See, for example, Bank of America Corporation v. Azra Khan, NAF Case No. FA124515 (finding that the respondent's diversionary use of the domain name to was not a bona fide offering of goods or services, was not noncommercial use, and was not fair use); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
7 See Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the complaint.”).
8 See The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (finding that redirecting users to the website “www.” was for commercial gain and was bad faith registration and use); Ticketmaster Corporation v. Amjad Kausar, WIPO Case No. D2002-1018 (holding that “[t]he Respondent is clearly acting in bad faith by using the Complainant's mark to profit in the form of commissions by linking of the T Affiliate Program”); Yahoo! Inc. v. DFI Inc., NAF Case No. FA147313 (holding that, because respondent participated in an affiliate program whereby it earned a commission for each user redirected from its infringing site, its ultimate goal was commercial gain and thus it was using the name in bad faith); and Showboat, Inc. v. Azra Khan, NAF Case No. FA125227 (redirecting users for a commission is using a confusingly similar domain name for commercial benefit, which is evidence of bad faith).
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