The Complainant is The Estate of Doris J. Rapp / Hershal Fryd, United States of America (“United States”), represented by Dessaules Law Group, United States.
The Respondent is Rui Barroso, Malta.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2021. On September 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2021, 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 September 27, 2021, 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 September 27, 2021.
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 September 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 20, 2021. The Respondent sent an informal email communication on October 2, 2021. The Center sent a possible settlement email to the Parties on October 6, 2021. The Complainant requested on October 22, 2021, to have the proceeding suspended in order to proceed with settlement discussions. The Center sent a Notification of Suspension to the Parties on October 25, 2021. The Center reinstituted the proceeding on January 4, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 17, 2022. 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 BackgroundDr Doris J Rapp was a medical specialist, having been a board certified Environmental Medical Specialist and Pediatric Allergist in the United States. Amongst other things, Dr Rapp founded the Practical Allergy Foundation and the Environmental Medical Research Foundation. Dr Rapp was also a President of the American Academy of Environmental Medicine and a Clinical Assistant Professor of Pediatrics at the State University of New York in Buffalo.
During the course of her career, Dr Rapp published 10 books including “Is this Your Child?” which was ranked as a New York Times Best Seller. Dr Rapp’s views have received attention in numerous television appearances and media articles. This included being featured on the Oprah Winfrey Show, Larry King Live, the Montel Williams Show, the Maury Povich Show, the Debra Duncan Show and several appearances on the Phil Donahue Show.
In later years, Dr Rapp became afflicted with Alzheimer’s Disease. Ultimately, Dr Rapp died on May 14, 2021.
For many years, Dr Rapp had promoted her views including offering for sale her books from a website to which the disputed domain name resolved.
In the later stages of her Alzheimer’s Disease, however, the disputed domain name was allowed to lapse in April 2020.
In May 2020, the Respondent acquired the disputed domain name for USD 590 through an auction process from Dropcatcher.com.
It appears that shortly before the Respondent acquired the disputed domain name, the disputed domain name had started resolving to a new website. This website was further updated in April 2021; that is, after the Respondent had acquired the disputed domain name. The website in question purported to offer for sale Dr Rapp’s books and videos and otherwise purported to be the website of Dr Rapp.
Following complaint by the second Complainant, the executor of Dr Rapp’s will and beneficiary under it, the website has been suspended by the Registrar. The Respondent continues to be the registrant of the disputed domain name.
5. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant does not hold any registered trademarks. However, the Policy is not limited only to the protection of registered trademarks and rights in unregistered trademarks may suffice. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.1.
While the Complaint has not included evidence of a number of matters typically relied on to prove entitlement to an unregistered trademark (see e.g. WIPO Overview 3.0, section 1.2), there is sufficient evidence in the present case given the publication of numerous books and the media appearances in particular to find that the Complainant as the successor in title to Dr Rapp has established there is a protectable unregistered trademark right arising from the reputation in Dr Rapp’s name, as used in commerce, for the purposes of the Policy. See e.g. Jeanette Winterson v. Mark HogarthWIPO Case No. D2000-0235.
The fact that the Respondent has used the disputed domain name to offer for sale Dr Rapp’s books and videos further supports the Panel’s consideration that Dr Rapp’s name has achieved significance as a source identifier in commerce for her books and videos.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” gTLD, the disputed domain name is effectively Dr Rapp’s professional name, or at least a shortened form of it of the kind very typical and commonly used for less formal situations.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark 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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Respondent registered the disputed domain name long after through the Complainant (through Dr Rapp) began using its trademark.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
These considerations are sufficient to establish the required prima facie case.
In his email to the Center on October 2, 2021, the Respondent states that he bought the disputed domain name at auction with an intention to create a website which is not ready yet.
Bearing in mind that more than 18 months have passed since the Respondent acquired the disputed domain name, the Panel cannot accept this claim. See e.g. WIPO Overview 3.0, section 2.2. Other than the bare assertion of intention:
(a) there is no indication at all about the nature of the proposed website;
(b) there is no evidence at all to indicate what the business plan is or what steps, if any, have been taken to develop the proposed website;
(c) there is no evidence of particular difficulties which have obstructed development of the proposed website; and
(d) there is no explanation about why the Respondent chose the disputed domain name.
Most importantly, the Respondent’s claim does not address at all that the website was (until it was suspended) purporting to be the website of Dr Rapp herself throughout the Respondent’s registration.
The Panel notes that the website appears to have been reinstated before the Respondent was successful in the auction for the disputed domain name. However, the Respondent has maintained it in operation for many months after securing the disputed domain name and apparently updated it in April 2021 – almost one year after the auction.
Accordingly, the Respondent has not rebutted the Complainant’s prima facie case and so the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad FaithUnder the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey LtdWIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, the Respondent appears to have obtained the disputed domain name through a drop-catching auction. In any event, at the time the Respondent became the successful bidder at auction the disputed domain name resolved to a website purporting to be the Complainant’s website. It can be readily inferred that the Respondent would have seen that website and appreciated that Dr Rapp was a person with a recognised profile and publishing business associated with her medical interests.
As the Respondent’s claim to have acquired the disputed domain name in connection with a yet to be developed website – the nature of which is wholly unspecified – has been rejected and the disputed domain name it has resolved to a website purporting to offer for sale Dr Rapp’s publications and products both before the Respondent became the registrant and throughout the Respondent’s control of the disputed domain name, it appears likely that the Respondent secured the registration to take advantage of the Complainant’s name and reputation. Accordingly, the Panel finds that the disputed domain name has been registered in bad faith.
The use of the disputed domain name in connection with a website purporting to be the website of Dr Rapp, without permission from Dr Rapp or her estate, is likely to mislead members of the public into thinking they are dealing with Dr Rapp or someone with her authority. As that is false, the Panel also finds the disputed domain name is being used in bad faith.
Accordingly, the Complainant has established all three requirements under the Policy.
6. DecisionFor 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,
Warwick A. Rothnie
Sole Panelist
Date: January 31, 2022