The Complainant is Doctor Pablo Clavel Laria, Spain, represented by Audiconsultores, Spain.
The Respondent is Christophe Stanic / Christophe Stann, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2020. On May 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar 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 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on May 21, 2020. On May 22, 2020, the Respondent sent an email communication to the Center. On May 22, 2020, the Center informed the Parties of the possibility of suspending the proceeding to implement a settlement agreement between the Parties. On May 27, 2020, the Complainant submitted a request for suspension and, on the same day, the Center confirmed that the proceeding was suspended until June 26, 2020. On June 24, 2020, the Center sent an email reminder to the Parties regarding the end date of the suspension. The suspension of the proceeding was subsequently extended until July 26, 2020 further to the Complainant’s request. On July 15, 2020, the Complainant requested for the proceeding to be reinstituted. On July 15, 2020, the Respondent sent an email communication. The proceeding was reinstituted as of July 17, 2020. On July 17, 2020, the Complainant requested the addition of the third-level 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” 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 22, 2020. On July 23, 2020, the Respondent sent an email communication to the Center. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondent did not submit any formal response. Accordingly, on August 12, 2020, the Center informed the Parties that it will proceed to Panel Appointment. The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 20, 2020. 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, Doctor Pablo Clavel Laria, is a well-known neurosurgeon and the sole director of the Spanish company Instituo Clavel, S.L.P. (the “Company”) and Chairman of the Board of the Spanish foundation, Fundacion Privada Doctor Clavel (the “Foundation”). The Complainant is the owner of the trademark registration for the IC INSTITUTO CLAVEL mark in Spain (Trademark Registration No. M3561512(5), registered on January 1, 2016) (the “Spanish Mark”). The Foundation also owns the trademark registration for the FC FUNDACION DOCTOR CLAVEL mark in the European Union (Trademark Registration No. 014202857, registered on February 8, 2016) (the “EU Mark”). The Company and Foundation respectively own and operate the domain names The Respondent had created the Disputed Domain Name with the intention of publishing his opinions regarding the medical treatment he had received under Doctor Pablo Clavel’s supervision. The Respondent registered the Disputed Domain Name on April 14, 2020. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarized as follows: (a) the Disputed Domain Name wholly incorporates the Complainant’s full name along with his professional title, which are protected by the Spanish Mark and EU Mark (registered by the Foundation and of which the Complainant has the power of representation as the Chairman of the Board). The Disputed Domain Name is identical or confusingly similar to the Spanish Mark and EU Mark in which the Complainant has rights; (b) the Complainant’s personal name is protected as a trade mark and the Complainant enjoys a reputation worldwide. The Respondent was not commonly known by the Disputed Domain Name and the Complainant has never authorised or given permission to the Respondent to use the Complainant’s name in the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interests in the Disputed Domain Name; and (c) the only intention of the Respondent in registering the Disputed Domain Name was to attract Internet users to the website and damage the Complainant and Foundation’s image and reputation to the indirect benefit of other competitors in the healthcare industry, which supports the fact that the Respondent is acting in bad faith. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar At the outset, it is well established that a personal name not registered or otherwise protected as a trademark does not normally provide standing for a complainant to file a UDRP case. A complainant has an obligation to prove his trademark rights, and such a burden of proof is unaffected by how famous the complainant may be. See section 1.5.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). However, in cases where a personal name is being used as a trademark-like and distinctive identifier, in trade or commerce, of the complainant’s goods or services, the complainant may be able to prove unregistered or common law rights in that name for the purposes of filing a UDRP case (see section 1.3 of the WIPO Overview 3.0). Unfortunately, in the case of the Complainant, the Panel was not provided with any supporting documents establishing strong unregistered or common law rights in the Complainant’s name. The Panel finds that the Complainant’s personal name fails to provide standing for filing a UDRP case. However, the Panel accepts that the Complainant has rights in the Spanish Mark and that he has rights in the EU Mark through the Foundation, of which the Complainant has the power of representation, It is well established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview 3.0. As design elements in a trademark registration would be incapable of representation in domain names, any design elements in the Spanish Mark and EU Mark will be disregarded for purposes of assessing identity or confusing similarity (see section 1.10 of the WIPO Overview 3.0). Where at least a dominant feature of a trademark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that trademark (see section 1.7 of the WIPO Overview 3.0). The dominant feature of the Spanish Mark and EU Mark appears to be the word “CLAVEL”, as the words “INSTITUTO (INSTITUTE in English)”, “FUNDACION (FOUNDATION in English) and “DOCTOR” in the respective marks are dictionary words, and “IC” and “FC” are merely acronyms. The Disputed Domain Name incorporates the word “CLAVEL” with the addition of the words “doctor” and “pablo”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question (see section 1.8 of the WIPO Overview 3.0). The inclusion of the words “doctor” and “pablo” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. The Panel finds that the Disputed Domain Name is confusingly similar to the Spanish Mark and EU Mark as it replicates the dominant element of the marks, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the Spanish Mark and EU Mark, and that there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the Spanish Mark and EU Mark. The Panel is of the view that a prima facie case has been made and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a formal Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. Therefore, it cannot be said that such use by the Respondent constitutes a bona fide offering of goods or services. There is also no evidence that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that it has become known by the Disputed Domain Name. Although in some circumstances the use of a domain name for fair use such as operating a criticism or “complaints” site would support a respondent’s rights or legitimate interests, no evidence has been provided to prove that the Respondent’s criticism or complaint is genuinely fair, non-commercial, and not misleading or false. While the Respondent claimed that he wanted to share “his story online”, he has not submitted evidence in this regard. Furthermore, where the domain name is not identical to the complainant’s trademark, but comprises the mark plus a derogatory term (e.g., Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith A domain name is registered and used in bad faith if an inference can be drawn that the respondent in question intends to take advantage of the significance of domain name at issue as a trademark held by the complainant. The Disputed Domain Name was allegedly registered by the Respondent for the purpose of sharing his unpleasant experience with the Complainant. However, the fact that the Respondent did not file a response to the Complainant’s contentions or provided any supporting evidence, has cast doubt on the Respondent’s intention in registering the Disputed Domain Name and the veracity of the Respondent’s allegations against the Complainant (whatever these allegations might be). It is clear that the Disputed Domain Name was registered with knowledge of the Complainant’s associated entities, trademarks and reputation. An inference can therefore be drawn that the Respondent registered and sought to use the Disputed Domain Name to take advantage of its significance as a trademark owned by the Complainant. Accordingly, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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 Gabriela Kennedy
Sole Panelist
Date: September 3, 2020
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