The Complainant is MDVIP, Inc. of Boca Raton, Florida, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is PrivacyProtect.org, Domain Admin of Queensland, Australia / Felipe Morales, Compania Morales BV, San Jose, Costa Rica.
The disputed domain name <mymdvip.com> (the “Domain Name”) is registered with Power Brand Center Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2012. On July 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 23, 2012, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 24, 2012 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 amended Complaint on July 30, 2012.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2012.
The Center appointed Linda Chang as the sole panelist in this matter on August 29, 2012. 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.
The Complainant, founded in 2000, is an American company specialized in providing personalized medical care services on a membership-based practice. The Complainant has over 550 affiliated physicians located in 41 states of the United States of America for approximately 180,000 patients. The Complainant created a personalized health site “www.mdvip.com” for its patients since December 1, 2001.
The Complainant owns a number of MDVIP and MYMDVIP trademarks, among others, United States Trademark No. 2,999,461 and No. 2,999,462 for the mark MDVIP, and No. 3,331,556 and No. 3,376,500 for the mark MYMDVIP.
The Domain Name <mymdvip.com> was registered on December 25, 2005 and was once resolved to a parking website with various hyperlinks to companies offering medical care services.
The Complainant asserts that the Domain Name is identical with and/or confusingly similar to its MDVIP and MYMDVIP trademarks. The addition of the generic prefix “my” is not eliminating or even not necessarily reducing the likelihood of confusion between the Complainant’s trademarks and the Domain Name.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant never licenses or permits the Respondent to own or use any domain name incorporating the marks of the Complainant. Moreover, the use of the Domain Name by the Respondent is not in connection with a bona fide attempt to offer goods and services to the public. Finally, the Complainant claims that the Respondent is not using the Domain Name for any legitimate noncommercial or fair use purpose, but for profit.
The Complainant finally argues that the Respondent registered and is using the Domain Name in bad faith. The Respondent registered and is using the Domain Name for commercial gain and to benefit from the goodwill and fame associated with the Complainant’s MDVIP marks. The Respondent has used the Domain Name to generate revenue by parking the Domain Name, which constitutes evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
To succeed in a complaint, the complainant must, in accordance with paragraph 4(a) of the Policy, satisfy the panel of the following three elements:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Based on the evidence presented by the Complainant and the relevant provisions of the Policy, the Panel concludes as follows:
The Complainant has provided evidence of trademark registrations of MDVIP and MYMDVIP, including the following trademarks registered in the United States of America:
Trademark | Trademark No. | Date of First Use | Date of Registration |
|
MDVIP |
No. 2,999,461 |
January 1, 2001 |
September 27, 2005 |
|
MDVIP |
No. 2,999,462 |
January 1, 2001 |
September 27, 2005 |
|
MYMDVIP |
No. 3,331,556 |
October 1, 2005 |
November 6, 2007 |
|
MYMDVIP |
No. 3,376,500 |
October 1, 2005 |
January 29, 2008 |
The Panel notes the above trademark registrations of MDVIP predate that of the Domain Name and determines that the Complainant has adduced sufficient evidence to demonstrate its established rights in the mark MDVIP.
The Domain Name wholly incorporates the Complainant’s trademark MDVIP. The Panel agrees that the addition of generic word “my” as prefix to the Domain Name does not eliminate the similarity between the Domain Name and the Complainant’s trademarks MDVIP. See Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033 (“It is well-established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion”).
Furthermore, the Panel finds that it is well-established that the generic top-level domain indicator such as “.com” does not change the similarities between the domain name and the trademark(s).
Accordingly, the Panel finds the Complaint has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s trademark MDVIP.
Paragraph 4(c) of the Policy sets out a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that respondent has been commonly known by the domain name; or
(iii) 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.
It is also well-established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of proving otherwise shifts to the respondent. See Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management – IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. As the Complainant possesses exclusive rights to the trademark MDVIP and claims it has never licensed or permitted the Respondent to use its trademark MDVIP in the Domain Name, the Panel is satisfied that the Complainant has made a prima facie case showing the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to rights or legitimate interests in the Domain Name.
Moreover, there is no evidence of its use or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The use of the Domain Name by the Respondent, namely diverting Internet users to competing sites via hyper links, is in fact capitalizing on the reputation of the Complainant’s trademark but not a bona fide use as provided in paragraph 4(c) of the Policy.
Finally, no evidence in the record suggests that the Respondent is making any other legitimate noncommercial or fair use of the Domain Name.
The Panel therefore holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the Domain Name.
The evidence on the file indicates that the Respondent is using the Domain Name to operate a parking website where Internet visitors can be re-directed to competing players’ websites through hyper links. This therefore makes it possible that Internet visitors looking for the Complainant’s services are attracted to the Respondent’s website due to the similarities between the Domain Name and the Complainant’s trademarks, and then further re-directed to the competing sites via the hyper links. As soon as the visitors are misdirected, damage to the Complainant has already taken place given the loss of potential commercial opportunities to the Complainant.
In addition, these parking websites typically reward domain name holders with ‘click through’ fees for redirecting Internet users to third-party websites hence the Respondent can generate revenues by capitalizing on the goodwill of the Complainant and its trademarks. The Panel holds that the Respondent’s registration and use of the Domain Name damages the Complainant’s interests while seeking commercial gain for itself. This qualifies as bad faith under the Policy. See Lyonnaise de Banque v. Richard J., WIPO Case No. D2006-0142.
Morever, bad faith may be further inferred from the Respondent’s lack of response to the Complaint and its use of proxy service to hide its real identity.
In light of the above facts and reasons, the Panel determines that the Domain Name was registered and is being used in bad faith pursuant to the Policy.
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 <mymdvip.com> be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: September 19, 2012