WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
eM, Inc. v. Sjafy Lim
Case No. DTV2001-0003
1. The Parties
Complainant is eM, Inc., a Delaware corporation located in St. Petersburg, Florida, United States of America.
Respondent is Sjafy Lim, an individual located in LaVerne, California, United States of America.
2. The Domain Name and Registrar
The domain name at issue is ("Domain Names"):
The registrar is the .tv Corporation.
3. Procedural History
This action is subject to the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules"), which have been adopted for the .tv domain.
The complaint was submitted on January 26, 2001. The response was submitted on March 24, 2001.
On April 4, 2001, the WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as Panelist.
4. Factual Background
Complainant began using the EMEDICINE mark in June 1997. It is the owner by assignment of federal trademark registrations relating to the mark: namely Reg. No. 2,187,823, dated September 8, 1998, for EMEDICINE in connection with "providing multiple-user access to a global information network for online viewing and editing of educational texts;" and 2,369,912, dated July 25, 2000, of a logo containing "emedicine" in connection with downloadable electronic medical publications and computer services involving a database that permits the creation of educational text books. The later registration disclaims exclusive rights in "medicine." It appears that Complainant is primarily engaged in the business activity of maintaining medical publications on-line, is not affiliated with a medical clinic and does not provide medical services.
Respondent is an accountant in La Verne, California. She registered the Domain Name for a medical clinic owned and operated by a group of physicians include her husband Dr. Paul Lim. The medical clinic had an existing web site at and planned to transfer the content of that site to the new Domain Name. That has not occurred because of this dispute.
On September 20, 2000, Respondent received an unsolicited offer from Complainant to transfer the Domain Name for $200. She advised Complainant of her intent to use the domain name in connection with her husband's medical clinic and made a counteroffer to transfer the Domain Name for $11,000. This proceeding followed.
5. Parties� Contentions
Complainant contends that the Domain Names are confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Names, and that Respondent has registered and used the Domain Names in bad faith by offering to sell it for profit.
Respondent denies Complainant's claims, and more specifically contends that there is no confusion between Complainant's trademark and its Domain Name due to different geographic locations and dissimilarity in services. Respondent contends that she has a legitimate interest in the Domain Name because she has made demonstrable plans to use it in connection with a clinic. Finally, she contends that her offer to sell for $11,000 was solicited by Complainant and does not show bad faith.
6. Discussion
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
Prior decisions under the Policy indicate that this element of a UDRP claim is based on comparison of the mark and domain name alone, without regard to the manner of actual use. I agree with that approach and will follow it here. Differences in the goods and services of the parties may be relevant on the other elements of the claim.
Complainant's registrations prove ownership of prior rights in the mark EMEDICINE, which is identical to the Domain Name. Therefore, I find that Complainant has met the requirements of Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
Here, Respondent has not yet used the Domain Name for a bona fide offering of goods or services. While she claims to have a demonstrable plan to do so, she has not submitted evidence sufficient to prove that claim. There is no evidence supporting Respondent on any of the other factors relevant to this determination. Accordingly, I find that Respondent lacks any right or legitimate interest in the Domain Name.
Respondent asserts that her husband as a medical doctor has a legitimate interest in using the term "medicine." While that may be the case, that interest does not necessarily equate with a legitimate interest in using the term "emedicine." Although the "e" prefix has commonly become known as an abbreviation for "electronic" or "ecommerce", the record presented by Respondent is not sufficient to support a finding that "emedicine" has become a generic term which must be used by doctors to conduct business on the Internet.
C. Bad Faith Registration and Use
Given the suggestive character of the Domain Name, it is an apt selection for an Internet site used in connection with a medical clinic. Based on that fact and the additional evidence that Complainant's use is dissimilar in type and geographically remote, it appears that Respondent registered the Domain Name with a bona fide intent to use the name in a manner that was not calculated to trade on any rights of Complainant. That bona fide intent, without evidence of a demonstrable plan, may not be sufficient to create any right or legitimate interest recognized under the Policy, but it is relevant in evaluating bad faith.
There is no evidence here that Respondent has engaged in a pattern of speculative domain name registration or that her claimed reason for registering the mark is a sham. The parties do not appear to be competitors. Further, it does not appear that Respondent deliberately selected the Domain Name to attract Internet users to its site based on confusion with Complainant's mark. Indeed, there is no evidence in the record to show any public use or awareness of Complainant's mark, and it is in any event unlikely that Respondent would reap any benefit from misleading Complainant's potential customers to a web site for a geographically remote medical clinic.
The only possible basis for a finding of bad faith is based on Respondent's offer to sell the Domain Name for $11,000. Under the Policy, bad faith registration and use can be found when the registrant seeks to profit from the sale of a domain name in which it has no legitimate interest. Policy 4(b)(i).
Similar circumstances were considered in the prior decision William Grant & Sons Limited v. Daniel Scotto, ICANN Case No. D2000-1656 (WIPO, March 18, 2001), which stated:
"Certainly, bad faith is appropriately found when a registrant initiates contact with an owner of rights in a corresponding mark seeking to profit from the sale of a domain name in which the registrant has no right or legitimate interest. Bad faith can also be found when the registrant lacks any legitimate interest and waits passively for contact from the rights holder before demanding a premium for sale of the domain name.
The situation is less clear when the registrant has a legitimate right or interest in the Domain Name and is contacted by a party with a conflicting claim. In such cases, it is not necessarily bad faith for the registrant to offer to surrender rights at a premium to resolve the dispute over the Domain Name. In other words, the mere fact that a party offers to sell a Domain Name for a premium is not conclusive proof of bad faith. The specific circumstances of the offer must be considered.
In this case there is nothing to indicate that it was Respondent's intention to squat on the name of another in hopes that he could extract an offer for payment. There is also nothing to indicate that his explanation for selecting the Domain Name is a sham. His registration of other domain names has been adequately explained. Given that Respondent demonstrated a bona fide intent to use the Domain Name for a legitimate, non-infringing purpose, I find that his offer to surrender his rights in the domain name for a premium does not establish bad faith use and registration."
Similarly here, Complainant initiated the negotiations over the purchase price. Respondent had a bona fide intent to use the Domain Name for what is arguably a non-infringing purpose. The intended use does not appear to be a sham. Under these circumstances, Respondent's offer to surrender her Domain Name for $11,000 does not establishes bad faith use and registration.
Accordingly, I find that Complainant has not met its burden under Paragraph 4(a)(iii) of the Policy.
7. Decision
I conclude that Complainant has failed to prove bad faith registration and use of the Domain Name, . Therefore, Complainant's request for transfer is denied.
Mark V. B. Partridge
Sole Panelist
Dated: April 5, 2001
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