Thomson Healthcare Inc. v. Registrant
Claim Number: FA0606000741825
Complainant is Thomson Healthcare Inc. (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402. Respondent is Registrant (“Respondent”), PO Box No. 71826, KCPO, Hong Kong HK.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mobilemicromedex.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2006.
On June 30, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mobilemicromedex.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 3, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 24, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mobilemicromedex.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mobilemicromedex.com> domain name is identical to Complainant’s MOBILEMICROMEDEX mark.
2. Respondent does not have any rights or legitimate interests in the <mobilemicromedex.com> domain name.
3. Respondent registered and used the <mobilemicromedex.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Thomson Healthcare Inc., is a provider of clinical healthcare information and solutions to clinician and other healthcare professionals through Thomson Micromedex, a division of Complainant. Complainant holds a valid trademark registration for its MOBILEMICROMEDEX mark with the United States Patent and Trademark Office (“USPTO”). Complainant first registered its MOBILEMICROMEDEX mark with the USPTO on April 15, 2003 (Reg. No. 2,707,703), and has continuously used the mark in connection with its provision of information to medical professionals pertaining to the field of medicine from the Internet and delivered to the reader through hand-held computers. Additionally, Complainant operates an informational website at the <micromedex.com> domain name in conjunction with its business.
Respondent, Registrant, registered the <mobilemicromedex.com> domain name on November 18, 2004. Respondent’s disputed domain name resolves to a search engine website containing links to several third-party websites, including Complainant’s website, and features pop-up advertisements.
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."
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.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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.
Complainant submits evidence of a federal trademark registration for the MOBILEMICROMEDEX with the USPTO. Consequently, the Panel finds that Complainant has sufficiently demonstrated rights in the MOBILEMICROMEDEX mark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <mobilemicromedex.com> domain name is identical to Complainant’s MOBILEMICROMEDEX mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of Complainant’s registered mark in its entirety, with the addition of the generic top-level domain (“gTLD”) “.com.” Prior panels have held that the addition of a gTLD to a mark is irrelevant in determining whether a domain name is identical to a mark pursuant to Policy ¶ 4(a)(i). In Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005), the panel concluded that the <cesamet.com> domain name was identical to the complainant’s CESAMET mark because the addition of the gTLD “.com” did not sufficiently distinguish the disputed domain name from the mark. Moreover, in Treeforms, Inc. v. Cayne Indus. Sales, Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000), the panel found that the respondent’s <treeforms.com> domain name was identical to the complainant’s TREEFORMS mark Therefore, in the instant case, the Panel may find that Respondent’s disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant must initially establish that Respondent lacks rights or legitimate interests in connection with the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to demonstrate that it has rights or legitimate interests with regard to the disputed domain name, as determined under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests). The Panel finds that Complainant has sufficiently demonstrated a prima facie case and will examine the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶ 4(c).
The Panel finds that Respondent’s <mobilemicromedex.com> domain name resolves to a search engine website providing links to third-party websites, including Complainant’s website, and also features pop-up advertisements. Consequently, the Panel concludes that Respondent’s use of the disputed domain name does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidence on record suggests that Respondent registered
and used the <mobilemicromedex.com> domain name to operate a
search engine website featuring pop-up advertisements and links to third-party
websites. Therefore, the Panel finds
that Respondent registered the disputed domain name, which is identical to
Complainant’s registered mark, for the purpose of diverting Internet users to
Respondent’s website for commercial gain.
The Panel finds that such conduct represents bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use by using
a domain name that was confusingly similar to the complainant’s mark to offer
links to third-party websites that offered services similar to those offered by
the complainant); see also Bank of Am. Corp. v. Out Island Props.,
Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the
disputed domain names contain entire versions of Complainant’s marks and are
used for something completely unrelated to their descriptive quality, a
consumer searching for Complainant would become confused as to Complainant’s
affiliation with the resulting search engine website” in holding that the
domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mobilemicromedex.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 18, 2006
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