WIPO Domain Name Decision: D2007-1059

The Complainant is Medis Medical Imaging Systems BV, of the Netherlands, represented by Van Doorne N.V., Amsterdam, the Netherlands.

The Respondent is Mr. R. Bloxham, Pocatello, Idaho, United States of America, represented by John Berryhill, Media, Pennsylvania, United States of America.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 23, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 23, 2007, eNom 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”), 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 August 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2007. The Response was filed with the Center on August 23, 2007.

The Center appointed James A. Barker, Willem J. H. Leppink and David E. Sorkin as panelists in this matter on October 1, 2007. The Panel finds that it was properly constituted. Each member of 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.

On October 4, 2007, the Panel was informed by the Center that the Complainant had made a supplemental filing. The supplemental filing was accompanied by a statement from the Complainant that “Since the Response was the first substantive reaction from the Respondent, the Complainant would like to briefly react to the Respondents main argument, namely that the term Medis is descriptive.”

The Complainant is a provider of software for the quantification of medical images. The Complainant’s business was started in the Netherlands in 1989. The Complainant was incorporated in the Netherlands in August 1997, and in the state of Connecticut, United States of America, in July 1992. In the United States of America, the Complainant moved its business from Connecticut to Virginia on March 7, 2003.

The Complainant is the owner of a registered word/device mark that includes the textual element “MEDIS”. The Complainant has registered that mark in the Benelux and in the United States of America (on the principal register of the USPTO) with a priority date of June 6, 2003. The Complainant is also the owner of a registered word mark for MEDIS, also registered in the Benelux and the United States of America (in the principal register of the USPTO). In the United States of America, the Complainant’s marks were registered after the resolution of an ex parte appeal, in which registrations were initially refused in part because of the likelihood of confusion with another mark (MeDis) also on the principal register.

The disputed domain name was registered by the Respondent on April 17, 2003. Prior to that date, the domain name was registered, from January 1996 until February 2003, to an entity called “Medical Internet Systems”.

The Respondent’s ordinary business or occupation is not detailed in the Response. The Respondent is the owner of a portfolio of other domain names.

At the date of this decision, the disputed domain name resolves to a ‘portal’ website. That website includes a number of links titled as e.g. “Health Insurance”, “Airline Tickets”, “Medical ID Bracelets”, “Job Search”, and “Ringtones”. Some of those links under a heading “Popular Categories” are different to those that appeared on the website on July 16, 2007 (in evidence provided by the Complainant).

The disputed domain name is identical to the Complainant’s registered word mark and confusingly similar to its word/design mark. The distinctive part of the word/design mark is the word “MEDIS”.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no relevant trademarks, does not run a business under the name Medis, and is not otherwise licensed or permitted to use the Complainant’s marks. The disputed domain name only reverts to a portal website, which includes links to medical-related websites. Medis does not have any meaning in English (or any other language).

The Respondent has registered and used the disputed domain name in bad faith. The disputed domain name was registered one month before the Complainant moved its business from Connecticut to Virginia. The Respondent’s selection of a meaningless term is evidence that the Respondent was aware of the Complainant. The Respondent owns numerous domain name registrations that are identical or very similar to the names/trademarks of smaller companies, which are either not used or are linked to portal websites. This evidence shows that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its name and trademark in a corresponding domain name.

After an email approach in October 2005 from the Complainant to the Respondent concerning the sale of the disputed domain name, the disputed domain name was linked to a portal website which included links to medical products.

The disputed domain name is not identical or confusingly similar to the Complainant’s trademarks. It is well-established that graphical representations are not identical or confusingly similar to domain names, particularly where the remaining textual portion is not distinctive of the Complainant. The Complainant’s marks are neither exclusive nor distinctive of the Complainant. (The Respondent provided evidence of other third party interests in marks that include the term “Medis”.)

The Complainant presents no evidence of trademark or service mark rights predating registration of the disputed domain name.

The Respondent has rights or legitimate interests in the disputed domain name. The Complainant claims rights in a non-exclusive term, those rights being more recently registered that the disputed domain name. The Complainant’s trademarks are registered subject to a consent agreement with another party. The Respondent is entitled to use the disputed domain name for a purpose other than such would infringe on the Complainant’s narrowly circumscribed claim.

The Respondent registered the disputed domain name because he believed it would be useful as a short plural form of “medicines” and also as a typographical variant of the word “medic”. The Respondent has continuously used the disputed domain name to provide paid advertising referral links to topics of general medical interest. The Respondent connected the disputed domain name to a portal website relating generally to medical topics in accordance with the perceived relevance of the term constituting the domain name. The use of generic words and phrases in connection with portal websites has previously been considered by panels, who have made findings for respondents.

The disputed domain name was not registered or used in bad faith. All the examples of bad faith under the Policy relate to there being “intent” to exploit the trademark rights of another. There is no factual basis supporting an inference that the Respondent was aware of the Complainant, and the Respondent expressly denies such awareness. The term “medis” is widely used by a large variety of third parties. The Complainant’s registered marks post-date the registration of the disputed domain name.

The email correspondence between the Complainant and Respondent, in which the Complainant approached the Respondent inquiring about the possible sale of the disputed domain name, indicates that the Respondent was not interested in selling the disputed domain name.

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant must prove each of these three elements, which are discussed in turn below immediately after consideration of the Complainant’s supplemental filing.

As noted above (under the heading, ‘Procedural History’) the Complainant made a supplemental filing, together with a statement that the Complainant wished to respond to the Respondent’s argument that the term “medis” is descriptive.

Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A panel has a discretion to admit or invite further filings under paragraphs 10(a), (b) and (d), and paragraph 12 of the Rules. The Panel considers that such filings should only be admitted if it is both necessary to the Complainant’s case, and could not reasonably have been addressed in the Complaint (for example, because a respondent produces new facts which a complainant could not have anticipated).

However, in this case, the Complainant did address the issue of the descriptiveness of the term “medis” in the Complaint – by its statement that the term is “meaningless”. As such, it appears to the Panel that the Complainant is only seeking to provide further argument on a matter that it already addressed (if only very briefly) in the Complaint, and which is any event not central to the Panel’s decision in this particular case. For these reasons, the Panel declined to consider the supplemental filing.

Because of the Panel’s finding in relation to the third element that the Complainant must prove (below), it is not strictly necessary for the Panel to make a finding on this first element.

However, for the sake of completeness, the Panel notes that it would find for the Complainant on this element. The relevant comparison for this purpose is with the dominant textual element of the Complainant’s marks. (For a recent statement to this effect, see e.g. Borges, S.A., Tanio, S.A.U. v. James English, WIPO Case No. D2007-0477). The dominant textual element of the Complainant’s marks is clearly the term “MEDIS”. The disputed domain name is clearly identical to that element.

It does not matter that the Complainant’s marks were registered after the disputed domain name. Paragraph 4(a)(i) of the Policy does not require that the Complainant’s mark is registered before the disputed domain name. It does, however, make it more difficult for the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name, or that the Respondent relevantly acted in bad faith: see e.g. Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001, and the cases cited therein. The Complainant faces this difficulty in this case – as detailed below. The Complainant did not overcome this difficulty by, for example, providing evidence of common law rights in a mark which pre-dated the Respondent’s registration of the disputed domain name.

It is less clear whether the Complainant could establish this element. None of the grounds alleged by the Complainant in this respect are, in themselves, conclusive of the Respondent’s lack of a right or legitimate interest. However, because of the Panel’s finding in relation to the third element below, it is also not strictly necessary for the Panel to make a finding on this second element.

The more problematic issue in this case is whether the Complainant has established that the Respondent registered and has used the disputed domain name in bad faith.

Bad faith under paragraph 4(a)(iii) of the Policy, fundamentally, requires that a respondent both knows of the complainant and, because of that knowledge, primarily intends to capitalize on the value of the complainant’s mark by registering it as a domain name. For statements to this effect, see e.g. Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005-0038; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Weatherall Green & Smith v. Everymedia.com, WIPO Case No. D2000-1528. As noted by the panel in Triodos Bank NV v. Ashley Dobbs, WIPO Case No. D2002-0776, “[i]n assessing ‘bad faith’ for the purpose of the Policy, the motivation of the Complainant is all-important.”)

In the absence of an admission, a respondent’s knowledge and intention is something that can be objectively inferred from the evidence. There is no such admission in this case - the Respondent flatly denies knowing of the Complainant when he registered the disputed domain name.

The evidence, taken cumulatively, also does not clearly indicate that the Respondent was aware of, or intended to capitalize on the Complainant’s marks, when he registered the disputed domain name.

“Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.”

This in itself would not necessarily be fatal to the Complainant, if the Complainant could demonstrate that the Respondent was nevertheless aware of common law trademark rights of the Complainant, or anticipated the Complainant’s registered rights. But there is no evidence of either in this case. The Complainant does not argue that it had common law rights in the mark MEDIS.

Even if it had, the Complainant does not provide compelling evidence that the Respondent should have been aware of them. In particular, the Complainant argues that it “advertised its business broadly and has attended many events in the USA”, where the Respondent resides. But the evidence the Complainant provides to support this statement is not strong. The Complainant provides a list of events it says it attended. However, those events appear to be highly specialized to the medical profession (e.g. the “American Heart Association Annual Scientific Session”). There is nothing to suggest that the Respondent attended or should otherwise have been aware of these events. The Complainant also provided evidence (from its website) of a list of its news releases since January 2005. However, the disputed domain name was registered by the Respondent in April 2003 – well before the date of the earliest of these news releases.

Secondly, the Respondent provides evidence that the mark MEDIS is associated with a number of third parties in the medical field. These include ‘Medis Technologies’ (with a website at “www.medistechnologies.biz”), Medis Health Insurance Plans, as well as three other entities using the name Medis (with separate websites “www.medis.is”, “www.medis.pt”, and “www.medismedical.com”). The Respondent also provided evidence that the prior registrant was “Medical Internet Systems”. The Respondent relies in part on this evidence to suggest that the term medis is “widely” used “the world over by a variety of parties”. This evidence goes against a finding that the Respondent had the Complainant specifically in mind when he registered the disputed domain name.

An argument that the Complainant notably does not make is that the Respondent might have been aware of the Complainant by conducting a simple Internet search when he registered the disputed domain name. (Taking up the Respondent’s invitation to conduct a Google search for “medis” indicates that the Complainant’s website appears second in the search results.) It is possible that such a search might have revealed that only a relatively small number of entities used the term “medis” in connection with a medical-related business. Those entities could have included the Complainant which maintained its website at “www.medis.nl”. (A search of “www.archive.org” suggests that the Complainant maintained that website before the Respondent registered the disputed domain name). It might also have included those referenced by the Respondent. It might have been argued that the Respondent then registered the disputed domain name to take advantage of the reputation of all of those entities, including the Complainant of which he could have been aware.

One difficulty with this argument is that the Complainant did not make it. Ultimately, it is up to the Complainant to make its case, and provide evidence to support it. Another difficulty is that, because there is no provided evidence supporting such an argument, it remains speculative. And importantly, as the Respondent points out, the Complainant’s registered marks post-date the Complainant’s registration of the disputed domain name. The Complainant provided no alternative argument or evidence that it had common law rights in a mark at the date the Respondent registered the disputed domain name.

Both the Respondent and Complainant made other arguments on this third element which were not determinative because, on balance, the Panel did not find them convincing. Those include the following.

The Respondent argued that the term “medis” is a type of generic term, as either a shortened plural form of “medicine” or a “typographical variant of the word ‘medic’“. The term “medis” is plainly not itself a generic term, and does not appear to be either phonetically, visually or in overall impression equivalent to a generic term.

The Complainant argued that the Respondent has a pattern of registering numerous domain names which are identical or very similar to the marks of other companies. The Complainant provided evidence of those registrations, as well as evidence of websites of companies with identical or similar marks. However, an inspection of those domain names indicates that most of them incorporate only short, generic terms (e.g. <kabala.info>, <lizard.net>) or three-letter combinations that may or may not have a particular association (e.g. <xdc.us>). While the Complainant provides evidence of domains the Respondent has registered that correspond to the marks of another, more than mere correspondence is needed to establish prior bad faith. The Panel also notes that bad faith does not appear to have been established against the Respondent in prior proceedings under the Policy. Even if such a pattern was demonstrated, while certainly a relevant consideration, this by itself would not be sufficient evidence of bad faith in this case.

For all these reasons, the Panel finds that the Complainant has failed to establish this third element.

James A. Barker
Presiding Panelist

Willem J. H. Leppink
Panelist

David E. Sorkin
Panelist