The Complainant is ZocDoc, Inc. of New York, New York, United States of America, represented by Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP, United States of America.
The Respondent is Zocdoct of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2011. On May 12, 2011, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On May 13, 2011, Melbourne IT Ltd. 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 Complainant on May 13, 2011 providing the registrant and contact information disclosed by the Registrar, providing the name and contact information of the Registrar with which the domain name was registered at the time the Complaint was filed and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 16, 2011.
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 May 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2011.
The Center appointed David Perkins as the sole panelist in this matter on June 16, 2011. 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
The Complainant is a Delaware Corporation, formed in 2007. It is headquartered in New York, with operations in Chicago, Dallas, Los Angeles, San Francisco and Washington DC. The Complainant provides a free online service that allows patients to locate and book appointments with doctors and dentists. Since July 2007 the Complainant has used the “ZocDoc” mark in association with its online patient booking service. Since the inception of its business the Complainant has registered thousands of doctors and booked tens of thousands of appointments,
In 2010 the Complainant was voted by Crain’s Business New York as “the Best Place to Work in New York City”. Also, in 2010 the Complainant was voted by Forbes as “the Best Small Business in America”. The Complainant’s “ZocDoc” trademarks
The Complainant has the following registered trademarks:
Country
Reg. No.
Trademark
Class(es)
Date of Application / Registration
United States of America
3,408,771
ZocDoc
44
August 3, 2007 - Filed
April 8, 2008 - Registered
Germany
30 2009 000
955
ZocDoc
44
January 9, 2009 - Filed
May 12, 2009- Registered
Australia
1,372,546
ZocDoc
44
July 16, 2010 - Filed
October 18, 2010 - Registered
The Complainant’s ZocDoc domain name
The Complainant registered the domain name on April 20, 2007.
The Complainant has raised $ 20 million in venture capital from established investors, which include The Founders Fund: Kholsa Ventures and Jeff Becos, the Founder and Chief Executive Officer of A. The Complainant says that a significant portion of its operating capital is spent on improving its online presence to attract medical providers and patients to its service. Respondent
In the absence of a Response, nothing is known of the Respondent, except that the disputed domain name was registered on September 28, 2010 to an address in Berlin, Germany.
The disputed domain name resolves to a generic landing page. That page carries a number of “sponsored listings”. It also provides an Enquiry Form, which includes as one entry “Offering Amount ($)”. The Form contains at the foot the following:
“Legal Disclaimer: The form does not constitute an offer to sell this domain, and the owner of this domain is not otherwise stating any intention to sell the domain. By hereby submitting a request for information and/or an offer you are acting as the sole initiator of a possible transaction between you and this domain.” 5. Parties’ Contentions Complainant Identical or Confusingly Similar
The Complainant’s case is that the disputed domain is confusingly similar to its “ZocDoc” trademark. It incorporates the entirety of that mark with the addition of the letter “t”. “Doc” is a well-known colloquial use and abbreviation for “doctor”, and the addition of “t” is the next logical letter, for a user to type. Further, inclusion of the additional letter “t” is, the Complainant says, an example of typo-piracy. This is a practice where bad faith operators deliberately misspell a domain name / trademark in the hope of attracting search engines to their site in conjunction with searches for the trademark owner’s website. In this respect, the Complainant cites Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd,WIPO Case No. D2011-0005. In that case the Complainant owned the registered trademark “Poker Strategy” and the disputed domain names consisted of the following misspellings, namely ; ; ; and . Held the disputed domain names were confusingly similar to the Complaint’s “PokerStrategy” and “P” trademarks.
Further, the Complainant says that the confusing similarity of the disputed domain name with its “ZocDoc” trademark will lead Internet users to believe that the Respondent is affiliated with and/or authorized to provide the services associated with the Complainant. In that respect, the Complaint cites two decisions under the Policy. First, Hermes International v. Yuanyuan Deng / Deng Yuan,WIPO Case No. D2011-0001 where the disputed domain name was held to be confusing similar to the Complainant’s well known “Hermes” trademark. Second, Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505 was applied in the above Hermes decision. The disputed domain name was held to be confusing similar to the Complainant’s “Britannia” trademark. The addition of the other words of the disputed domain name did not avoid a finding of confusing similarity where, as in that case, the disputed domain name incorporated the Complainant’s “Britannia” trademark in its entirety. Rights or Legitimate Interests
The Complainant’s case is that there is nothing to demonstrate that the Respondent can bring itself within any of the circumstances set out in paragraph 4(c) of the Policy to show rights to or legitimate interests in the disputed name. Further the Complainant has neither licensed nor otherwise authorized the Respondent to use its “ZocDoc” trademark. Finally, the Complainant says that the Respondent has failed to provide evidence of use of the disputed domain name for a purpose other than infringing the “ZocDoc” trademark. Registered and Used in bad Faith
The Complainant points to the fact that the disputed domain name was registered in September 2010, over 3 years after the original “ZocDoc” US trademark application was filed, and also after both the German and Australian trademark applications were filed and the German trademark granted. The Respondent’s address is in Germany and the Registrar of the disputed domain name is in Australia. The Complainant suggests that the stimulus for the Respondent to register the disputed domain name could well have been the press cover generated in the second half of 2010 following the Complainant’s most recent round of financing. Finding that ; and were already registered by the Complainant, the Respondent then registered the closest domain name - the disputed domain name - which would must likely attract confused users.
The Complainant also points to the Respondent concealing its identity in the WhoIs as an indicia of bad faith, citing Anachusa Ltd. v. Ashantiplc Limited / Ashantiplc Ltd,WIPO Case No. D2011-0005.
However, the Complainant’s principal case on registration and use in bad faith is that the circumstances of paragraph 4(b)(iv) of the Policy apply on the facts of this case. This is because, the Complainant says, the slight misspelling of its “ZocDoc” trademark by the additional of the letter “t” is clearly a deliberate attempt by the Respondent to attract Internet users by creating a likelihood of confusion with the “ZocDoc” mark as to affiliation / authorisation with the Complainant’s business. Here, the Complaint cites Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-M,WIPO Case No. D2005-0837. The Complainant was the proprietor of the Kelley Blue Book guides to automobile prices in the United States. The disputed domain name was , which resolved to a website promoting new and used car values and other automotive information, the very products and services with which consumers had (since 1926) associated the Complainant’s trademark. Held, the Complaint satisfied the requirements of both paragraph 4(b)(iii) and paragraph 4(b)(iv) of the Policy.
The Complainant also asserts that this is a case where the Respondent either knew, or should have known, of the “ZocDoc” trademark and/or the Complainant’s business conducted under and by reference to that trademark. The mark “ZocDoc” is not a word in the English language. It is an invented mark and by the date when the disputed domain name was registered (18 September 2010), the Complainant had been trading in the United States for over 3 years and was very well established - as to which, see ”Factual Background” above. In this respect, the Complaint cites Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763. The Complainant was the largest Department Store Group in Australia and was the proprietor of the trademark MYER. The disputed domain name , resolved to the Respondent’s website which contained company information and comments as to the financial performance of the Complainant’s parent company, Coles Myer Limited. The website also carried a disclaimer. Held, that while the Respondent had every right to express his own views, he had no entitlement to use another’s trademark. The Respondent clearly well knew the “Myer” name and mark and, on the facts of that case, the Panel found bad faith registration and use under paragraph 4(b)(ii) of the Policy. Respondent
As noted, no Response has been filed, 6. Discussion and Findings
The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interest in the domain name in issue.
The Policy paragraph 4(b) sets out circumstances which, again 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.
As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy. Identical or Confusingly Similar
The Complainant is the registered proprietor of the “ZocDoc” trademark. The disputed domain name, which incorporates that trademark in its entirety, with the additional letter “t”, is clearly confusingly similar to that trademark. Accordingly, the Complaint meets the requirements of paragraph 4(a)(i) of the Policy. Rights or Legitimate Interest
No Response has been filed. Further, there is nothing on the papers before the Panel to indicate that the Respondent could have demonstrated rights or legitimate interests to the dispute domain name under paragraph 4(c) of the Policy. Consequently, the Complaint satisfies paragraph 4(a)(ii) of the Policy. Registered and Used in Bad Faith
Given the unusual spelling of the Complainant’s “ZocDoc” trademark and the near identicality of the disputed domain name with that trademark, the likelihood is that - as the Complainant contends - the disputed domain name was registered in full knowledge of the registered trademark with intent to use that domain name in the circumstances set out in paragraph 4(b)(iv) of the Policy. Other factors, albeit not determinative of bad faith in themselves, are the Respondent’s apparent concealment of identity in the WhoIs record and the Enquiry Form on the website to which the disputed domain name resolves. In the circumstances, the Panel has no hesitation in finding that the Complaint meets the requirements of paragraph 4(a)(iii) of the Policy.
However, the Panel does not accept that the Complainant has demonstrated the facts required by paragraph 4(b)(ii) of the Policy since there is no evidence of ”a pattern of conduct”. Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 is also distinguished for that reason. 7. Decision
For 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.
David Perkins
Sole Panelist
Dated: June 21, 2011
Full & Egal Universal Law Academy