The Complainant is Equipo IVI SL of Valencia, Spain, represented by Arttax Abogados, Spain.
The Respondent is Domain Admin, WebMD, LLC of New York, New York, United States of America ("United States").
The disputed domain name <ivi.com> is registered with MarkMonitor, Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2017. On November 14, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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").
The Complaint was submitted in the Spanish language. The language of the Registration Agreement for the domain name is English. On November 24, 2017, the Center sent a language of proceeding communication in both Spanish and English to the Parties. On November 27, 2017, the Complainant submitted a translation into English of the Complaint. The Respondent did not reply to the Center's notification or the Complainant's submission.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 2, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on January 16, 2018. 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 is a Spanish company active in the field of assisted fertility treatment and operates clinics specialized in this sector in more than ten (10) countries worldwide, including in the United States.
The Complainant is the owner of the International Trademark No. 1036441 for IVI (figurative mark), registered on February 23, 2010, in International classes 5, 9, 41 and 44, designating also United States; and European Union Trademark No. 008903321 for IVI (figurative mark), filed on February 23, 2010 and registered on August 18, 2010, in classes 5, 9, 41 and 44.
The Complainant is also the owner of the domain names <ivi.net>, registered on July 4, 2009; <ivi.es>, registered on October 2, 1997; <ivi.com.es>, registered on November 27, 2008; and <ivi-fertility.com>, registered on March 11, 2013.
The disputed domain name <ivi.com> was registered on June 25, 1992, and is not pointed to an active web site.
The Complainant states that it was established in 1989 and it has been described as a highly prestigious institution in the field of medicine and health by various legal rulings and articles in specialised journals.
It also highlights that, back in 1991, the implementation of the intracytoplasmic sperm injection technique was widely covered by the main media outlets of the industry, and that this procedure, used for the first time in 1991, was a huge revolution in the treatment of human infertility.
The Complainant further asserts that, years before the Respondent registered the disputed domain name, the "complainant entity" was a respected and award-winning company across the world thanks to its research work, including in the Respondent's country, the United States.
The Complainant contends that the disputed domain name is identical to its trademark IVI.
The Complainant also submits that the Respondent has no rights or legitimate interests in the disputed domain name because:
i) Prior to any notification of the dispute, the Respondent has not used the disputed domain name or prepared to use it;
ii) The Complainant does not have any relationship with the Respondent, whether as a private individual, a company or another organization, and the Complainant has not authorized the Respondent to use its trademark in the disputed domain name;
iii) The Respondent is not, in any way whatsoever, commonly known by the disputed domain name, as can be seen in its contact details and company information;
iv) The Respondent, far from making legitimate and fair use of the domain name, has kept the disputed domain name inactive and therefore non-productive, jeopardizing the legitimate and fair use of the holder of the rights to the trademark corresponding to the disputed domain name.
The Complainant states that the Respondent registered and is using the disputed domain name in bad faith for the following reasons:
i) According to searches conducted by the Complainant, the Respondent has 866 domain names associated directly to the email account with which the disputed domain name was registered, mostly of which are pointed to undeveloped websites. Such circumstance would suggest that the Respondent has engaged in a misleading and deceptive activity with the aim of reducing the possibility to other companies to offer similar services;
ii) the Respondent's email address is based on the domain name <webmd.com>, which is also used by the Respondent for its corporate website, presented as "The leading source for trustworthy and timely health and medical news and information". Since the services provided by the Respondent are closely related to the services provided by the Complainant, the Respondent must be considered a competing entity; accordingly, the way in which the Respondent has acted would be a clear indication of bad faith tactics in order to jeopardise and disrupt the business of a competitor in the field of medicine and health;
iii) The Respondent, by rejecting the Complainant's offers prior to the filing of the Complaint and by keeping the disputed domain name inactive since the date of registration, is engaging in passive retention, clearly jeopardising the Complainant and preventing it from providing the products or services corresponding to its business activity;
iv) Years before the registration of the disputed domain name, media specialized in medicine and, more specifically, in assisted reproduction, gave widespread coverage to the emergence of the Complainant in the healthcare industry. In addition, the Complainant was granted the American Fertility Society award in 1987 for the study entitled "Cryopreservation of rat immature oocyte-cumulus complexes (OCCC) does not impair oocyte maturation, but reduces FSH-dependent cyclic-AMP accumulation";
v) Since the Respondent, as its website indicates, is engaged in the publication and dissemination of news about health and medicine, being an entity specialized in this matter, the Respondent knew or should have known about the existence of the IVI medical institute, and that its registration of the disputed domain name prevented the Complainant from reflecting its trademark in a corresponding domain name;
vi) The Respondent would not be able to use the disputed domain name in relation to a good faith offer of goods or services, since such use would inevitably entail an infringement of the world-renowned IVI brand in the industry.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant has provided evidence of ownership of valid trademark registrations for the figurative mark IVI, as highlighted in the paragraphs above.
With reference to the assessment of identity or confusing similarity in cases where a complainant relies on trademark registrations containing design elements, section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states that:
"Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. Such design elements may be taken into account in limited circumstances e.g., when the domain name comprises a spelled-out form of the relevant design element.
On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show "rights in a mark" for further assessment as to confusing similarity.
However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, or where the trademark registration entirely disclaims the textual elements (i.e., the scope of protection afforded to the mark is effectively limited to its stylized elements), panels may find that the complainant's trademark registration is insufficient by itself to support standing under the UDRP.
To the extent the complainant could nevertheless establish UDRP standing on the basis of a mark with design elements, the existence of such elements (or a disclaimer) would be relevant to the panel's assessment of the second and third elements, e.g., in considering possible legitimate trademark co-existence or scenarios where the textual elements correspond to a dictionary term".
Bearing in mind that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name (see section 1.7 of the WIPO Overview 3.0), the Panel finds that the core of both signs under comparison is constituted by the denominative portion "ivi", while the device elements added in the trademark and the generic Top−Level Domain ".com" in the disputed domain name are not distinguishing features.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which it has established rights according to paragraph 4(a)(i) of the Policy.
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira, WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the Complaint, the Complainant has not granted an authorization to the Respondent to use the trademark IVI and/or to register and use the disputed domain name.
Moreover, there is no evidence on the records that the Respondent might be commonly known by the disputed domain name or that it might have ever used the disputed domain name – currently not resolving to an active web site – in connection with a bona fide offering of goods or services or for a legitimate non−commercial or fair use.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy.
According to paragraph 4(a)(iii) of the Policy, the Complainant is required to demonstrate that the Respondent registered and is using the disputed domain name in bad faith.
The Panel notes that the International and European Union trademarks on which the Complainant relies in this case were filed in February 2010, more than 17 years after the registration of the disputed domain name, which occurred on June 25, 1992, according to the WhoIs records. Moreover, the Complainant registered its first domain name <ivi.es> on October 2, 1997, more than 5 years after the registration of the disputed domain name.
However, the Complainant stated that "years before registering the domain, the media specialized in medicine and, more specifically, in assisted reproduction, gave widespread coverage to the emergence of the complainant entity in the healthcare industry. This news may not have filtered through to the general public, but it was well-publicised in the world of medicine". The Complainant concludes that the Respondent, which engages in the publication and dissemination of news about health and medicine according to the indications provided on its website "www.webmd.com", "knew or should have known about the existence of the IVI medical institute".
The Panel has reviewed the documents submitted by the Complainant to substantiate its allegations and notes that, whilst substantial evidence has been provided to demonstrate the use and notoriety of the trademark IVI in its field in recent years (especially since 2015), little information has been submitted as to the use of the Complainant's mark before the registration of the disputed domain name. Indeed, the Complainant has provided only i) a printout of an internal page of its web site "www.ivi.net" illustrating awards that the Complainant received over the years, including a prize awarded for a study by the American Fertility Society (IVF special interest group) in 1987; and ii) one article published in 2013 on the online edition of the Spanish newspaper El Mundo mentioning the salient events in the history of assisted fertility treatment and citing the fifth "IVI International Congress" held in Seville in 2013.
In view of the above, the Panel finds that the Complainant has not submitted sufficient evidence to demonstrate that, at the time of the registration of the disputed domain name, it had already acquired trademark rights over the sign IVI that the Respondent could have been aware of.
Along these lines, section 3.8.1 of the WIPO Overview 3.0 states that "where a respondent registers a domain name before the complainant's trademark rights accrue, panels will not normally find bad faith on the part of the respondent".
The Panel does not exclude that the Respondent might have become aware of the Complainant and its trademark IVI in the most recent years, where the Complainant has demonstrated to have acquired a certain notoriety in its sector. However, based on the inactive use of the disputed domain name and the lack of other elements on the records from which a Respondent's intent to target the Complainant's mark could be inferred, the Panel does not find that the Respondent registered the disputed domain name in bad faith.
For the foregoing reasons, the Complaint is denied.
Luca Barbero
Sole Panelist
Date: January 31, 2018