The Complainant is Medizine LLC, of New York, New York, United States of America, represented by Edwards Angell Palmer & Dodge, LLP, United States of America.
The Respondent is Dr. Mohammad Aburahmah, of Riyadh, the Kingdom of Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <medazine.com> is registered with GoDaddy.com Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2007. On October 17, 2007, the Center transmitted by email to GoDaddy.com Inc., a request for registrar verification in connection with the domain name at issue. On October 17, 2007, GoDaddy.com Inc. 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 on October 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2007.
The Center appointed Torsten Bettinger as the sole panelist in this matter on December 3, 2007. 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.
4. Factual Background
The Complainant is a company publishing several publications in the field of consumer health education. Incorporated in 1994, the Complainant launched its first publication MediZine Guidebook as a resource for pharmacists to counsel Medicaid and Medicare patients on their prescriptions. Initially distributed in eight pharmacy chains, the magazine was later renamed MediZine’s Healthy Living and has since grown to become the nation’s largest consumer health magazine, with distribution in over 30,000 pharmacy chains and 100,000 doctors’ offices. Furthermore, the Complainant offers various other magazines and services under its MediZine mark, i.e. REMEDY magazine, the REMEDYDirect consumer database, Diabetes Focus magazine, Diabetes Focus Espanol magazine, the waiting room patient education program MDMinute and the HealthyUpdates online educational platform. The Complainant is recognized as a leader in consumer health education in the United States of America and abroad.
The Complainant is the owner of U.S. Trademark Registration No. 1,949,695 for MEDIZINE covering “magazines relating to medical and health subjects” in Class 16, registered on January 16, 1996 with a date of first use at least as early as February 1, 1995.
The disputed domain name was registered on March 21, 2007 and has been used in connection with a website stating that “Medazine you Medical Magazine in the web” is under construction.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that the disputed domain name contains the Complainant’s mark in its entirety with one variation such as replacing the first “I” in MEDIZINE with an “A” and is thus confusingly similar to the Complainant’s mark.
In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that none of the situations described in paragraph 4(c) of the Policy can be established in this case. In support of this assertion the Complainant states that the Respondent:
- does not own any trademark or service mark registrations encompassing the domain name, nor any variations thereof;
- is not commonly known by the domain name; and
- is not making a legitimate non-commercial or fair use of the domain name.
In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant asserts that the domain name was registered and is being used in bad faith. In support of these assertions the Complainant states that:
- the Respondent’s registration of the domain name in 2007 clearly utilizes the Complainant’s mark registered over ten years earlier in 1996 and suggests that the Respondent knew of the Complainant’s long-standing rights in and valuable goodwill associated with the mark;
- by registering the domain name the Respondent intentional attempts to prevent the Complainant from rightful ownership of the domain name and disrupts the Complainant’s ability to conduct business at the domain name;
- consumers looking for the Complainant’s goods and services may “guess” the domain name and will be diverted to the Respondent’s site, which is in no way affiliated with or sponsored by the Complainant;
- the Respondent has failed to provide a street address and a voice or fax phone number of the administrative and billing contact as required under the Registration Agreement which is further evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,
WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,
WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,
WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,
WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR,
WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention,
WIPO Case No. D2001-0505).
The second level domain of the disputed domain name <medazine.com> differs from the Complainant’s trademark MEDIZINE only in one letter and is virtual and phonetical similar to the Complainant’s trademark. It is well established that the fact that a domain name differs in a single letter does not prevent a finding of confusing similarity (See Playboy Enterprises v. Movie Name Company,
WIPO Case No. D2001-1201; Deutsche Telekom AG v. Domainsforlife.com,
WIPO Case No. D2002-0164; LouisVuitton v. Net-Promotion Inc.,
WIPO Case No. D2000-0430; Diageo p.l.c. v. John Zuccarini,
WIPO Case No. D2000-0541; Reuters Limited v. Global Net 2000, Inc,
WIPO Case No. D2000-0441; Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol,
WIPO Case No. D2001-0184).
It is also well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,
WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,
WIPO Case No. D2000-0429).
The Panel thus finds that the domain name <medazine.com> is confusingly similar to the trademark in which the Complainant has rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name.
The Complainant asserted that the Respondent does not own any trademark or service mark registrations encompassing the domain name nor any variations thereof, that he is not commonly known by the domain name and is not making a legitimate non-commercial or fair use of the domain name.
The Respondent has neither denied these assertions nor provided evidence of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.
Under the circumstances of this case, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.
C. Registered and Used in Bad Faith
The Panel is also convinced that the Respondent registered and has been using the domain name in bad faith.
The Complainant states that the Respondent’s registration of the domain name in 2007 clearly utilizes the Complainant’s mark registered over ten years earlier in 1996 and suggests that the Respondent knew of the Complainant’s long-standing rights in and valuable goodwill associated with the mark.
The Respondent is using the domain name in connection with a website under construction, but including the announcement that the domain name is intended to be used in connection with a Medical Magazine, which is the main product of the Complainant. Even though the Complainant’s name MEDIZINE and the domain name <medazine.com> are both composed of parts of the words Medical Magazine (MEDI ZINE and MED AZINE respectively) the Panel does not believe that the Respondent’s choice of the domain name is merely a coincidence here as the Complainant’s name MEDIZINE is a fantasy word and therefore distinctive. Furthermore, the Respondent did not provide any evidence or has stated that he has chosen the domain name with regard to any meaningful content. Therefore, the Panel accepts the Complainant’s allegation that the domain name was registered in bad faith.
Furthermore, the Panel finds that the domain name is being used in bad faith under 4(b)(iv) of the Policy. Screen shots of the Respondent’s web page show that use of the domain name redirects users to a website that provides advertising links to third parties. Such ads are typically used to earn click through fees for redirecting Internet users to third parties’ websites and thus capitalizing on the goodwill of third parties trademarks.
This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.
Moreover, the Respondent has failed to provide complete WHOIS data which has been held as further evidence of bad faith registration and use by previous Panels (See 3636275 Canada, dba eResolution v. eResolution.com,
WIPO Case No. D2000-0110; Süd-Chemie AG v. tonsil.com,
WIPO Case No. D2000-0376).
Finally, the Respondent’s default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that it acquired the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.
Accordingly, the Panel concludes that the Respondent registered and used the domain name <medazine.com> in bad faith and that also the requirement of paragraph 4(a)(iii) of the Policy has been met.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <medazine.com> be transferred to the Complainant.
Torsten Bettinger Sole Panelist
Dated: December 24, 2007
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