ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Karolinska Universitetssjukhuset v. Muhammad Awais Case No. D2023-2473 1. The Parties The Complainant is Karolinska Universitetssjukhuset, Sweden, represented by SILKA AB, Sweden. The Respondent is Muhammad Awais, Pakistan. 2. The Domain Name and Registrar The disputed domain name
(the "Domain Name") is registered with Sav.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 7, 2023. On June 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 8, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 9, 2023, 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 June 12, 2023. 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 June 19, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2023. The Respondent sent email communications on June 12, and June 19, 2023. The Center sent an email to the Parties on June 19, 2023, informing them about the possibility to suspend the proceeding for settlement discussions. The Complainant requested a suspension of the proceeding on June 20, 2023, and the Center proceeded with Notification of Suspension on the same day. On July 13, 2023, the Complainant requested to have the proceeding reinstituted since the settlement page 2 discussion was not successful. The Center reinstituted the proceeding and informed the Parties of its commencement of Panel appointment process on July 13, 2023. The Center appointed Nicholas Smith as the sole panelist in this matter on July 17, 2023. 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 a Swedish company, founded in 2004 (as a result of a merger between two longstanding hospitals in Sweden) that operates one of Sweden's premier health facilities. The Complainant employs 15,400 individuals, conducts over 50,000 operations and receives over 1.3 million outpatient visits annually. Amongst its many health services, the Complainant offers psychiatry research and treatment services. The Complainant is (along with its affiliated entity the Karolinska Institutet) the co-owner of trade marks in various jurisdictions for the word mark KAROLINSKA (the "KAROLINSKA Mark"), including United Kingdom Registration No. UK00903886661, registered August 30, 2005 for a variety of medical goods and services. The Domain Name was registered on Janurary 7, 2023. The Domain Name currently resolves to a website of a third-party entity in Sweden that is unconnected with the Complainant, the Respondent or any descriptive meaning of the Domain Name. 5. Parties' Contentions A. Complainant The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant's KAROLINSKA Mark; (ii) that the Respondent has no rights nor any 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 Complainant is the owner of the KAROLINSKA Mark, having registered the KAROLINSKA Mark in the United Kingdom and other jurisdictions. The Domain Name is confusingly similar to the KAROLINSKA Mark, merely adding the Swedish word "psykiatri" (meaning "psychiatry") to the wholly incorporated KAROLINSKA Mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Complainant has not granted any license or authorization for the Respondent to use the KAROLINSKA Mark nor is the Respondent commonly known by the Domain Name. The Respondent does not use the Domain Name for a bona fide purpose or legitimate noncommercial purpose. Rather the Respondent is using the Domain Name to divert Internet users to a third-party website pending use in a misleading manner. Given the reputation of the Complainant and the KAROLINSKA Mark in the field of medicine in Sweden and the nature of the Domain Name, the Respondent must have been aware of the Complainant at the time it registered the Domain Name. The Domain Name is being held pending use that will undoubtedly take advantage of any confusion between the Domain Name and the Complainant's KAROLINSKA Mark. page 3 B. Respondent The Respondent did not formally reply to the Complainant's contentions. Neither of the Respondent's e-mails to the Center (on June 12 and June 19, 2023) addressed the contentions in the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trademark or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant's trademark or service mark. The Complainant (along with its affiliated entity the Karolinska Institutet) is the co-owner of the KAROLINSKA Mark, having registrations for the KAROLINSKA Mark as a trade mark in the United Kingdom and European Union. Where multiple related parties have rights in the relevant mark on which a UDRP complaint is based, a UDRP complaint may be brought by any one party, on behalf of the other interested parties; see section 1.4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). The Domain Name consists of the KAROLINSKA Mark with the addition of the Swedish word "psykiatri" (meaning "psychiatry"). Other UDRP panels have repeatedly held that where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element; see section 1.8 of the WIPO Overview 3.0. The Panel finds that the Domain Name is confusingly similar to the Complainant's KAROLINSKA Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: "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 your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (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 Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the KAROLINSKA Mark or a mark similar to the KAROLINSKA Mark. There is no evidence page 4 that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name to resolve to a third party commercial website unrelated to the Complainant, the Respondent or any dictionary meaning of the Domain Name does not amount to use for a bona fide offering of goods and services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, 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: (i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location. (Policy, paragraph 4(b)). The Panel finds that the Respondent, on the balance of probabilities, was aware of the Complainant and its reputation in the KAROLINSKA Mark at the time the Respondent registered the Domain Name. The Complainant's KAROLINSKA Mark is well-known in the field of medicine in Sweden, having been in use for over 15 years, including in respect of psychiatry services. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register the Domain Name that wholly incorporates the KAROLINSKA Mark and the Swedish word "psykiatri", unless there was an awareness of and an intention to create a likelihood of confusion with and the Complainant and its KAROLINSKA Mark. In these circumstances, the Respondent's conduct in registering the Domain Name when it was aware of the Complainant's rights and lacked rights or legitimate interests of its own amounts to registration in bad faith. As discussed under section 6.B, the Panel is unpersuaded that the redirection of the Domain Name to an unrelated third-party website, or any other aspect of the Respondent's conduct, provides a basis to infer that the Respondent's has registered or used the Domain Name in good faith. Rather, the Panel is prepared to infer, based on the conduct of the Respondent, including the nature of the Domain Name, consisting of the well-known KAROLINSKA mark and a word describing the services the Complainant offers, and the failure by the Respondent to provide any explanation of its conduct, that the Domain Name is most likely presently being held pending use as website or email address that will make reference to the Complainant in an illicit or unapproved manner for the Respondent's commercial gain. As such, the Panel finds that the use of the Domain Name to resolve to the third-party website amounts to use of the Domain Name in bad faith. page 5 Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 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. /Nicholas Smith/ Nicholas Smith Sole Panelist Date: July 28, 2023
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