The Complainant is Singapore Funds Corporation Pte. Ltd. of Singapore, Singapore, represented by Alder IP, Australia.
The Respondent is Vikrant Jain, Neuron Solutions Inc. of East Moline, Illinois, United States of America ("United States"), self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2018. On July 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 27, 2018.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2018. The Response was filed with the Center on August 20, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on September 3, 2018. 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 the Australian trademark registration No. 1825206 for the word and device mark , filed on February 10, 2017, in class 9, and registered on September 14, 2017; the Australian trademark application No. 1939505 for the device mark , (where the portion in Chinese characters means "Medcallz Every Patent Every Doctor"), filed on July 9, 2018, in class 9; and the International trademark No. 1365917 for the word and device mark , registered on July 10, 2017, in class 9, designating China, Singapore, the United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), and the United States.
The Complainant operates a website at "", where it publishes its registered figurative trademark MEDCALLZ and device and promotes IT solutions for the tracking and monitoring of patients in home and healthcare environments, including through dedicated mobile applications.
The disputed domain name was registered on March 24, 2017 and is pointed to a registrar parking page with commercial links. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is substantially identical and confusingly similar to the trademark MEDCALLZ in which it has rights.
The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name because:
i) the Respondent is not using, and does not plan to use, the disputed domain name in connection with a trademark associated with the disputed domain name;
ii) the Respondent registered the disputed domain name immediately after discussions with the Complainant and in order to extort money from it;
iii) the Respondent is not commonly known by the name encompassed in the disputed domain name and has no trademark applications or registrations for MEDCALLZ;
iv) the Respondent is not using the disputed domain name as it is merely redirecting it to a holding site available at "".
The Complainant asserts that the Respondent registered the disputed domain name in bad faith, after entering commercial and confidential business discussions with the Complainant as to the provision of software development services by the Respondent. The Complainant states that such discussions took place on March 23, 2017, one day before the disputed domain name was registered without the Complainant's approval or consent. The Complainant informs the Panel that it never entered a contract for services with the Respondent and that the Respondent subsequently contacted the Complainant and demanded a payment of USD 10,000, via the Skype communication software, for transferring the disputed domain name to the Complainant.
The Complainant points out that the Respondent registered the disputed domain name for the purpose of selling it to the Complainant at an exorbitantly high price or, alternatively, to force the Complainant to use the services of the Respondent in respect of software design and coding. The Complainant further states that the Respondent registered the disputed domain name to prevent the Complainant from registering the disputed domain name, and to interfere with the Complainant's business. B. Respondent
The Respondent states that it has been providing software and mobile application services and product developments since 2010 and that it has registered 305 domain names so far that are relevant to its products and service lines.
The Respondent also states that it has developed its own product of telemedicine over two years ago and is using it to demonstrate its skills in health care industry. In relation to this field, the Respondent registered, amongst others, the disputed domain name and the domain names and .
The Respondent further asserts that it is receiving lots of requests for health care products especially in the field of telemedicine solutions and that its team is providing lots of demo versions of its services to clients around the world.
As to the contacts with the Complainant before the start of this proceeding, the Respondent argues that: i) the Complainant's CEO might have contacted the Respondent for health care product development and might have taken demos and credentials; ii) the Respondent searched in its mailbox but found no reference to MEDCALLZ as part of the information provided about the Complainant's business; iii) the Respondent did not receive any kind of non-disclosure agreement or contract in which the disputed domain name or the "Medcallz" business name was mentioned; iv) the Complainant did not provide the Skype communication details and the Skype ID through which the demand of USD 10,000 was placed nor any evidence that the Respondent might have signed a non-disclosure agreement with the Complainant.
The Respondent also alleges that it registered the disputed domain name purely "for B to B business", that in the past two years it has invested close of USD 150,000 in the development of telemedicine B to B solutions that it is planning to launch under the mark MEDCALLZ, and that it already created a "logo and branding with all the brochure content", as shown in an annex to the Response.
The Respondent denies that it offered the disputed domain name for sale to the Complainant and states that it is willing to launch its website in India for the first time in the coming four to six months.
The Respondent further states that the Complainant's app is not available in app stores. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As outlined in section 4 above, the Complainant has provided evidence of ownership of several trademark registrations for figurative marks consisting of the denominative portion "MEDCALLZ every patient. every doctor" and device elements.
As stated in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing". In addition, "the applicable Top Level Domain ("TLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).
The Panel finds that MEDCALLZ is the dominant portion of the Complainant's trademarks cited above and notes that such denominative element is entirely reproduced in the disputed domain name with the mere addition of the generic Top-Level domain ".com", which can be disregarded being a mere technical requirement of registration.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks in which it has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to rebut this e.g., by demonstrating rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondent and the Complainant has not authorized the Respondent to register or use its trademarks or the disputed domain name.
In addition, there is no evidence that the Respondent might have been commonly known by the disputed domain name or have acquired rights in respect of the disputed domain name.
The Complainant stated that it was in contact with the Respondent to evaluate a possible business cooperation the day before the disputed domain name was registered and that the Respondent offered to transfer the disputed domain name to the Complainant for USD 10,000. A Statutory Declaration of the Complainant's CEO has been submitted as annex 4 to the Complaint to substantiate such allegations.
The Respondent has not denied that it had conversations with the Complainant. However, it stated that it found no correspondence regarding MEDCALLZ in its mailbox and that anyway the Complainant did not provide additional evidence, besides the CEO's declaration, of the alleged contacts occurred between the Parties as well as of the asserted Respondent's request of USD 10,000 for transferring the disputed domain name to the Complainant.
The Respondent also stated that it registered the disputed domain name for use in connection with its business and that it invested around USD 150,000 in the development of telemedicine B to B solutions that it claims to be planning to launch under the name MEDCALLZ. To support such statements, the Respondent submitted a leaflet named "Medcallz Press Kit", showing examples of use of a MEDCALLZ logo and describing a (Respondent's) white-label telemedicine solution integrated with iOS and Android applications.
As indicated above, the Respondent registered additional domain names, and , to promote its software applications in the field of telemedicine.
Based on the records, the Panel finds that, on balance, the Respondent has not submitted convincing evidence to demonstrate a right or legitimate interest in the disputed domain name. Indeed, the leaflet provided by the Respondent does not contain any indication of the date and thus it cannot be excluded that it was produced by the Respondent only after having received the Center's notification of the Complaint. Moreover, the Respondent has not provided any additional documents to substantiate the actual investments of such a substantial sum that it claimed to have made in connection with its project related to the disputed domain name and is using both the disputed domain name and the additional domain names related to telemedicine that it owns in connection with mere parking pages with commercial links.
In view of the above and of the correspondence of the disputed domain name with the dominant element of the Complainant's prior registered trademarks, the Panel finds that the Respondent has not demonstrated that, before having received notice of the dispute, it has been using the disputed domain name in connection with a bona fide offering of goods or services or with a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademarks.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel notes that the disputed domain name, identical to the core of the Complainant's trademarks, was registered few weeks after the first trademark application of the Complainant was filed.
Moreover, as highlighted above, the Complainant submitted a Statutory Declaration in which it stated under penalty of perjury that, the day before the disputed domain name was registered, the Complainant's CEO had confidential business discussions with the Respondent as to the possible provision of software development services that, however, did not lead to an actual collaboration between the Parties.
Although the Complainant has not provided additional documents, such as exchanges of correspondence, concerning these contacts with the Respondent, the Panel notes that the Respondent has not denied that it was, in fact, in contact with the Complainant.
The Panel further notes the view that, the selection of the disputed domain name supposedly for use in connection with Respondent's telemedicine application substantially identical with the one developed by the Complainant does not very likely amount to a mere coincidence. Moreover, even if the Parties had not been in prior contact, the Respondent, who is operating in the field of software applications and is thus certainly familiar with the Internet, could have easily conducted online searches and become aware of the Complainant's trademark and project at the time of registration.
Furthermore, as highlighted above, the Respondent has failed to submit convincing evidence to demonstrate that it registered the disputed domain name and selected independently the term MEDCALLZ to identify its project without intention to trade off the Complainant's trademark rights.
As to the use of the disputed domain name, the Respondent has been pointing it to a parking page with commercial links. The Respondent has provided examples of its supposed intended use of the domain name in connection with its telemedicine software but has not submitted any additional – let alone compelling – evidence to demonstrate that it actually engaged in the development of such project before receiving notice of the dispute.
Therefore, the Panel finds that, by registering and using the disputed domain name, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of its website and the service promoted therein according to paragraph 4(b)(iv) of the Policy.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name was registered and is being used by the Respondent in bad faith. 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 disputed domain name be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: September 18, 2018
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