Handa Medical Group, Inc. v. anthony oyogoa / Oluwa Clothing
Claim Number: FA1404001552182
Complainant is Handa Medical Group, Inc. (“Complainant”), represented by Mason Cole of Cole Sadkin, LLC, Illinois, USA. Respondent is anthony oyogoa / Oluwa Clothing (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2014; the National Arbitration Forum received payment on April 2, 2014.
On April 03, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@handamedicalgroup.com, postmaster@handamedical.org, postmaster@handamedicalgroup.org. Also on April 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based on the Complainant's common law rights in the trademark, "Handa Medical Group." “Handa Medical Group” has become a distinctive identifier for the Complainant, as evidenced by its advertising and recognition in the medical and educational communities. Handa Medical Group is self-associated with medical schools that provide not only programs in Medical Doctor (M.D.), but also in Bachelor of Medical Science (B.S.) and Master of Business Administration (MBA). Handa Medical Group is affiliated with well-known hospitals and clinics all over North America and through it, students are guided through the process of core and elective rotations in various states, some of which include New York, Washington, Kentucky, Florida, Michigan and Illinois, and many Canadian provinces such as Ontario, Quebec, and British Columbia.
In addition to providing post secondary education services, Complainant also provides consultations for students applying to residency on how to prepare the proper documentation to enhance their application process. Complainant provides assistance in helping applicants construct a strong personal statement as well as proof revision of any supplementary documentation; such as Letters of Recommendation, to ensure the application stands out among the rest. One-on-one counseling is also available to current and prospective students. Complainant’s staff is eager to answer any questions regarding different programs, the application process, and step-by-step assistance in regards to the United States and Canadian medical board examinations. Complainant assists in all aspects to assure students excel in their careers and are well prepared academically for their future.
Complainant has existed as “Handa Medical Group” since 2010. It registered HandaMedical.com on June 7, 2010, evidencing its long-standing internet presence and continued use of the name from 2010 through the present. It has Facebook page, evidencing its presence on social media.
Handa Medical Group has helped more than five hundred (500) students from approximately twenty-five (25) various medical schools, as well as Kaplan Medical. Complainant has contracts with both the All American Institute of Medical Sciences and Caribbean Medical University. Handa Medical Group is a very well-known and successful brand in the educational medical community, earning approximately one hundred thousand dollars ($100,000.00) in annual revenue through these schools and students.
Handa Medical Group’s presence in the medical community has been widespread and continuous since its inception. Handa Medical Group consistently hosts workshops for the medical community and often partners with Kaplan Medical, one of the most well-known names in the medical education field. Handa Medical Group hosted workshops in conjunction with two other groups, including Kaplan Medical, on April 28, 2012; June 16, 2012; August 11, 2012; and November 3, 2012. Similarly, Handa Medical Group teamed up with Kaplan Medical Group to present seminars to help students improve their chances to match with the residency of their choice. Handa Medical Group and Kaplan Medical teamed up for another seminar that focused on helping students with their CS exam on April 20, 2013. Handa Medical Group and Kaplan Medical also worked together to provide medical courses for USMLE Board exams (United States Medical Licensing Exam). On September 17, 2013, Handa Medical Group and Kaplan worked together to host a “residency fair” with the goal of providing medical students with guidance in matching with their desired residency programs. On February 20, 2014, Handa Medical Group, in conjunction with Kaplan Medical, hosted an open house celebration to discuss residency and matching issues and had a full day of events, food, and speakers.
In addition to all of the specific events listed above and the multitude of other events just like it, Handa Medical advertises regularly in the medical community for its services in general. Handa Medical Group also sponsors events, an example of which is the North American Culture Show. On July 23, 2011, Handa Medical Group also held a symposium on cardiovascular health, evidencing its presence in the medical community beyond even providing the education services it provides.
Handa Medical Group is also involved in the community through its volunteer efforts. For example, Handa Medical volunteered its medical services and raised donations for the Mother & Infant foundation. On October 23, 2012, the National Kidney Foundation sent the Handa Medical Group a thank you letter for donating its time by assisting in its free kidney screenings for the previous two months. Handa Medical Group was also recognized by Free the Children, a charity for which Handa Medical raised more than twenty-seven thousand dollars ($27,000.00) to be used to provide education, alternate income opportunities, healthcare awareneness, and sanitation of water for the community of Bagdad in Rajasthan, India. A video regarding this charitable work is available on YouTube at the following link: https://www.youtube.com/watch?v=A8Dh8lrXEBI.
The name “Handa Medical Group” has gained meaning and value in the medical community, through its advertising, work with approximately twenty-five (25) medical schools, and hundreds of students. Its presence on the internet as well as a sponsor of many events has helped create this meaning and value.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.]
The domain names are either identical or confusingly similar to the "Handa Medical Group" trademark in which Complainant has rights. Handamedicalgroup.com and handamedicalgroup.org are each the exact trademark, itself, with two variations of only the top-level domain. Handamedical.org uses two of the three most important words in the trademark, "Handa Medical Group" in its domain, excluding only the word "group."
[b.]
Respondent has absolutely no legitimate interest in respect of the domain names that are the subject of this Complaint. Respondent has no affiliation with the name "Handa Medical." It has no connection whatsoever with the Handa name, neither before notice of the dispute nor currently. Respondent is not known by the domain name in any context.
Respondent is not making a legitimate noncommercial nor fair use of the domain name. Respondent has made use of the domain in two completely illegitimate ways: first by re-directing users to a “competing” website, presumably of a company which it either owns or is affiliated with, and then by re-directing users to pornographic websites in what can only be described as malicious retribution for Complainant’s rightful attempt to maintain control of its own name. At first, Respondent only used the domains to direct users automatically from the offending domains to the website of Medical Rotation Medical Society (“MRMS”), a “competing” company, so that a consumer who is looking for Handa Medical Group's website but tries one of the offending domains instead will be brought to the MRMS website.
Complainant first attempted to contact MRMS to resolve the issue amicably, as Respondent’s contact information was not publicly listed at the time. MRMS refused to speak with Complainant and instead stated that its attorney would contact Complainant, while refusing to even accept Complainant’s contact information to allow for such a call. MRMS refused to give the contact information of its own counsel and never contacted Complainant again. In further attempt to resolve the issue amicably, Complainant sent a second cease and desist letter to MRMS on December 5, 2013. Seemingly in response to that letter, and as evidence that Respondent is, in fact, related to MRMS, Respondent stopped re-directing users to the MRMS website and apparently abandoned the site. However, as of January 2, 2014, at the latest, Respondent is now using the infringing domain names to automatically re-direct users to pornographic websites, namely www.pornhub.com and www.xhampster.com. Clearly, this is not a legitimate use, but rather is a malicious act, intended to cause consumer confusion by implying a connection between Handa Medical Group and these pornographic websites, delegitimize Handa Medical Group in the eyes of its potential clients, and to embarrass Handa Medical Group.
Respondent has refused every attempt of Complainant to resolve the issue or even have a discussion of the issue. Instead, it has maintained unfair business practices, continued to infringe upon Complainants trademarks, and engaged in malicious behavior.
Complainant first filed a complaint, FA Number FA1401001539667, regarding these issues on January 17, 2014. Notices were sent back regarding the format of the complaint and went to the spam folder of Complainant and thus never seen. That Complaint was dismissed for that reason on January 24, 2014. Complainant then filed a second Complaint on January 29, FA Number FA1401001541385. This Complaint was dismissed without prejudice because it only alleged trademark rights due to the application for a trademark rather than common law rights. Respondent did not respond and continues its malicious, bad faith use of Complainant’s mark.
[c.]
MRMS alleges to offer the same or similar services as Handa Medical Group and, with respect to its action of re-directing users to its own website, is attempting to deceive customers or cause confusion by automatically re-directing users from the offending domains to the MRMS website, medicalrotation.org. Respondent, via MRMS, is attempting to profit on the good will of Handa Medical Group by both implying a relationship with Handa Medical Group, which may be inferred by the automatic transfer to medicalrotation.org or by directing users looking for Handa Medical Group's website to medicalrotation.org. There is no good faith explanation for the registration of the offending domains as Respondent has no relation to anything related to the name "Handa Medical" nor "Handa Medical Group." Respondent is intentionally creating an extremely high likelihood of confusion, as both MRMS and Handa Medical Group offer the same or very similar services.
With respect to its action of re-directing users to pornographic websites, implying a connection between Handa Medical Group and these pornographic websites, delegitimize Handa Medical Group in the eyes of its potential clients, and to embarrass Handa Medical Group. Respondent has no affiliation with either pornographic website and neither does Handa Medical Group. The intent behind Respondent’s actions is unambiguously malicious and certainly fits with the behavioral pattern of Respondent and MRMS to this point.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "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 requires Complainant prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
It should be noted this is Complainant’s third UDRP proceeding regarding the same domain names. None of the other proceedings progressed far enough to have a res judicata effect, so bringing this proceeding is not barred. While Complainant’s complaint is not elegant, it is barely adequate. By way of instruction to those who may read this opinion for guidance on the issue, Complainant might well have:
1. Mentioned Complainant has acquired goodwill in its common-law mark instead of leaving it to the Panel’s inference.
2. Provided screenshots evidencing the disputed domain names were forwarded to the Medical Rotation Medical Society website.
3. Provided screenshots evidencing the disputed domain names are presently forwarded to pornographic websites.
Complainant is self-associated with medical schools that provide not only programs in Medical Doctor (M.D.), but also in Bachelor of Medical Science (B.S.) and Master of Business Administration (MBA). Complainant is affiliated with well-known hospitals and clinics all over North America. While Complainant has not registered its HANDA MEDICAL GROUP with a trademark agency, a registered trademark is not required to show rights in the mark, so long as Complainant can establish common law rights in the mark under Policy ¶4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant claims common law rights in the HANDA MEDICAL GROUP mark. Complainant has existed since 2010. Complainant registered <handamedical.com> on June 7, 2010, evidencing its long-standing Internet presence and continuous use of the name from 2010 to now. Complainant has helped more than 500 students from approximately 25 medical schools. Complainant is a very well-known and successful brand in the educational medical community, earning approximately $100,000.00 in annual revenue through schools and students. In Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010), the panel held complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999. Accordingly, Complainant has shown secondary meaning in the HANDA MEDICAL GROUP mark, showing common law rights under Policy ¶4(a)(i).
Complainant claims that Respondent’s <handamedicalgroup.com> and <handamedicalgroup.org> domain names are identical to Complainant’s HANDA MEDICAL GROUP mark. Respondent’s domain names contain Complainant’s mark in its entirety. Respondent removes the spaces in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” or “.org.” Respondent’s elimination of spaces and addition of gTLDs to the disputed domain names are disregarded under a Policy ¶4(a)(i) analysis because both elements are required by domain name syntax. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Respondent’s <handamedicalgroup.com> and <handamedicalgroup.org> domain names are identical to Complainant’s HANDA MEDICAL GROUP mark according to Policy ¶4(a)(i).
Complainant claims Respondent’s <handamedical.org> domain name is confusingly similar to Complainant’s HANDA MEDICAL GROUP mark. Respondent uses two of the three words in the trademark and excludes the word “group.” Respondent’s removal of a term from Complainant’s mark does not adequately distinguish the disputed domain name for the purposes of a Policy ¶4(a)(i) analysis. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Respondent deletes the space in between “HANDA” and “MEDICAL” and includes the gTLD “.org.” Respondent’s omission of spaces and addition of a gTLD does not prevent a panel from finding confusing similarity under Policy ¶4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Respondent’s <handamedical.org> domain name is confusingly similar to Complainant’s HANDA MEDICAL GROUP mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names. Respondent has no affiliation or connection with Complainant. The registrant of the disputed domain names is listed as “anthony oyogoa / Oluwa Clothing” in the WHOIS information. Respondent fails to provide evidence he is known by any of the domain names. Based on the WHOIS record and other evidence in the record, the Panel is comfortable determining Respondent is not commonly known as the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names pursuant to Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent was redirecting the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names to a competing website. Respondent’s disputed domain names link to the website of Medical Rotation Medical Society (“MRMS”), a competing company. Redirecting a disputed domain name (i) initially to an competitor and/or (ii) subsequently to a pornographic web site (a fact the Panel confirmed because Complainant failed to provide the necessary screenshots) does not constitute a Policy ¶4(c)(i) bona fide offering of goods or services, or a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). See also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶4(c)(iii)).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is attempting to deceive customers or cause confusion by automatically redirecting users from the offending domain names to the MRMS website, <medicalrotation.org>. Even though Complainant has not provided the usual screenshots, Respondent has not denied the allegation. Therefore, the Panel finds Respondent was attempting to profit on Complainant’s goodwill by implying a relationship with Complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Respondent is presently using the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names to redirect users to adult-oriented websites, such as <pornhub.com> and <xhampster.com>. Respondent’s redirecting the disputed domain names to adult-oriented material is obviously intended to be malicious. In Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003), the panel found that respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <handamedicalgroup.com>, <handamedical.org>, and <handamedicalgroup.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 5, 2014
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