Health Studies Institute, Inc. v. Texas International Property Associates Case No. D2008-1012
1. The Parties The Complainant is Health Studies Institute, Inc., of Pompano Beach, Florida, United States of America.
The Respondent is Texas International Property Associates, of Dallas, Texas, United States of America.
2. The Domain Name and Registrar The disputed domain name is registered with Compana LLC.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2008. On July 4, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the disputed domain name. On July 5, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 10, 2008 the Center notified the Complainant that the Complaint was administratively deficient. On July 15, 2008 the Complainant filed an amendment to the Complaint. The Center verified that the Complaint together with the amendment to 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 July 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 5, 2008. The Response was filed with the Center on August 5, 2008.
The Center appointed Angela Fox as the sole panelist in this matter on August 27, 2008. 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 Founded in 1989, the Complainant, Health Studies Institute, Inc., is a provider of continuing professional education for health care professionals targeting, in particular, dental professionals. It is based in Florida and is recognized as an American Dental Association Continuing Education Recognition Provider.
The Complainant owns United States federal trademark registration No. 2,850,485 for HEALTH STUDIES INSTITUTE in Class 16 for “instructional text books, and printed texts and answer sheets, all for use in the professional certification of dental professionals” claiming a date of first use of July 1, 1993. A copy of the registration certificate was annexed to the Complaint.
Since 1996, the Complainant has operated a website at “www.healthstudies.com” providing links to dental professional information sources, organizations and publications, as well as an online catalogue of upcoming dental continuing education courses sponsored by the Complainant and the Complainant’s dental and healthcare related textbooks. Annexed to the Complaint were print-outs from the Complainant’s website. The Complainant’s website has been promoted extensively online and through direct email campaigns since 1996, and the Complainant mails between 50,000 and 100,000 bound catalogues each quarter, advertising its dental continuing education distance learning courses.
The disputed domain name, , was registered by the Respondent on June 21, 2005. It has been used in respect of a link farm providing links to dental continuing education providers, as well as to third-party websites relating to other, more general health education. The Complainant filed print-outs from the Respondent’s site dated September 5, 2008 and February 7, 2008, showing the home page headed “Welcome to healthstudiesinstitute.com.” On the former date, the heading also stated, “For resources and information on Dental continuing education courses and [illegible] of health.” The latter read, “For ads on Dental continuing education courses and Health care education.” The center part of the page lists “Sponsored Results for Dental Continuing Education Courses,” providing links to third parties not associated with the Complainant. The left-hand column lists a number of “Related Searches,” beginning with “Dental continuing education courses” and then followed by a list of topics that apparently varies from time to time, including “Institute of health,” “Health Education,” “Health care education,” “Forensic College,” “California college for health science,” “Public health education,” “Allied health schools” and “Plymouth Institute of Health,” all linking to third parties not associated with the Complainant. Further “Related Searches” headings appear at the bottom of the page, including “Western university of health science,” “School of public health” and “College of natural health.”
The Complainant’s attorney sent a cease and desist letter to the Respondent on March 20, 2008. No satisfactory reply was received and the disputed domain name was renewed on June 21, 2008. The Complaint was filed on July 3, 2008.
5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is identical to its federally registered United States trademark HEALTH STUDIES INSTITUTE, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered, and has used, the disputed domain name in bad faith. The Complainant alleges, in particular, that the Respondent has used the domain name to attract Internet users to a website advertising the services of the Complainant’s competitors, by creating a likelihood of confusion with the Complainant’s trademark. The Complainant further alleges that the Respondent has displayed a pattern of bad faith registration and use of domain names comprising or including third party trademarks.
B. Respondent The Respondent does not dispute that the disputed domain name is identical to the Complainant’s trademark.
The Respondent contends, however, that it has rights and a legitimate interest in the disputed domain name, which it submits consists of generic or descriptive words. The Respondent argues that in using the disputed domain name, it is not targeting the Complainant but is rather providing advertising for users seeking information about health, health studies and institutes devoted to health studies. The Respondent submits, moreover, that it has no control over the content of its website, but rather contracts with a third party, Hitfarm, which connects its own websites to the domain name to offer targeted advertising searches.
The Respondent further claims that it was not aware of the Complainant when it registered the disputed domain name, and that there is no evidence that the disputed domain name was registered in bad faith, nor that the use of it has led to any actual confusion. The Respondent further appears to aver that an inference of targeting can only be drawn based on inherent distinctiveness of a trademark or evidence that a mark is famous or well-known, which the Respondent alleges has not been shown. Finally, the Respondent submits that, to succeed, the Complainant must provide evidence that the Respondent specifically intended to confuse consumers seeking the Complainant, and that there is no such proof here.
6. Discussion and Findings Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
The Complainant has proved that it owns a United States federal trademark registration for HEALTH STUDIES INSTITUTE.
The disputed domain name contains the whole of the Complainant’s registered trademark. The non-distinctive domain name suffix “.com” does nothing to distinguish the domain name from the Complainant’s mark.
The Panel is satisfied that the disputed domain name is identical to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent argues that it has a right or legitimate interest in the disputed domain name because it consists of generic, descriptive terms, which the Respondent has used, through a third party and from a date prior to receiving notice of this dispute, to earn advertising revenue from links to health education-related websites. The Respondent denies that the disputed domain name targets the Complainant.
In making this argument, the Respondent appears to be invoking paragraph 4(c)(1) of the Policy, which allows the Panel to find a right or legitimate interest where there is evidence that, before notice of the dispute, the Respondent was using or making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent refers inter alia to the decision in Shirmax Retail Ltd. v. CES Marketing, Group, Inc, Case No. AF-0104, e-Resolution, concerning the domain name ), where the panel stated that “where the domain name and trademark in question are generic-and in particular where they comprise no more than a single, short, common term-the rights/interests inquiry is more likely to favor the domain name owner.”
The Respondent also refers to the decision in Super Supplements, Inc. v. Vertical Axis, Inc., WIPO Case D2008-0244), holding that “panels have found that the provision of […] click-through services do[es] constitute a bona fide offering of the services unless the bona fides of the offering is tainted by evidence of bad faith.”
Even if the Respondent’s provision of click-through advertising constitutes an offering of goods or services begun before the Respondent received notice of the dispute, the Panel in this case finds that the offering was not, on the balance of probabilities, bona fide. On the date of registration of the disputed domain name, the Complainant had used its trademark HEALTH STUDIES INSTITUTE for some 12 years in respect of the provision of continuing professional education in the field of dentistry in the United States, where the Respondent is also based. The words “health studies institute” are more than a single, generic term as in Shirmax (supra); they are a three-word combination that does not directly describe the provision of continuing professional education in the field of dentistry, the Complainant’s main field of activity. The Respondent has been using the disputed domain name first and foremost to host links to third parties providing education, not in the field of general health, but rather in the field of dentistry. The fact that other healthcare related search headings appear on the Respondent’s site does not alter the fact that the most prominent search headings on it relate to dentistry courses.
In the Panel’s view, the use made of the disputed domain name is calculated to mislead Internet users into accessing a website that appears to be that of, or related to, the Complainant, but which instead offers prominent links to websites advertising services offered by the Complainant’s competitors. As such, it is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(1) of the Policy, and confers no right or legitimate interest in the disputed domain name.
The Panel reached a similar conclusion in another case involving the Respondent, Almaden Valley Athletic Club v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0600. The approach in that case and this one is also in line with that taken by panelists in other cases (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005; Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946; and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149).
The Respondent claims that it has no control over the content that Hitfarm places on the Respondent’s site. The Respondent cannot, however, seek to evade responsibility for the content of its site and at the same time take advantage of the alleged descriptiveness of that content.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent claims that it did not know of the Complainant when the disputed domain name was registered, and denies that it adopted and used the disputed domain name with the intention of confusing consumers seeking the Complainant. It argues that there is no evidence that Internet users have been confused.
The Respondent relies moreover on the panel decision in Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489, in suggesting that the Panel cannot infer that the Respondent targeted the Complainant in adopting the disputed domain name unless there is evidence that the Complainant’s mark is inherently distinctive or famous.
The Panel does not agree. While the inherent distinctiveness or fame of a trademark may create a presumption that a later domain name comprising or including it was registered with the trademark in mind, an inference of targeting may also be drawn from other circumstances surrounding a respondent’s adoption or use of a domain name. In particular, under paragraph 4(b) of the Policy the Panel is entitled to infer both bad faith registration and bad faith use in certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These includeparagraphs 4(b)(ii) and (iv):
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In this case, it is clear that by using the disputed domain name to host links to commercial entities including the Complainant’s competitors, the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the linked site. Such conduct is evidence of the registration and use of the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy (see inter aliaChicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144 and ChoicePoint Asset Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0395).
Similar conduct has supported findings of bad faith registration and use under paragraph 4(b)(iv) in other cases, including Pfizer Inc. v. Juan Gonzales, WIPO Case No. D2004-0589 and F. Hoffmann-La Roche AG v. Web Marketing Limited, WIPO Case No. D2006-0005. The Panel considers that the Complainant has made out its case for bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Moreover, as noted in Almaden Valley Athletic Club v. Texas International Property Associates - NA NA, WIPO Case No. D2008-0600, the Respondent is no stranger to UDRP proceedings, and has been named in approximately 100 actions before WIPO and the National Arbitration Forum. In most of these cases transfers have been ordered, with multiple findings that the Respondent acted in bad faith in registering and using domain names that were identical or confusingly similar to third-party trademarks (see inter alia,Azar International Inc. v. Texas International Property Associates, NAF Case No. FA1122600; Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211; ChoicePoint Asset Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0395; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144; and Usborne Publishing Limited v. Texas International Property Associates – NA NA, WIPO Case No. D2007-1913).
As noted in Almaden Valley, the Respondent has clearly engaged in an extensive and well-documented pattern of cybersquatting behaviour, registering third-party trademarks and variants of them as domain names in order to prevent their owners from reflecting the marks in corresponding domain names.
The Respondent has advanced no convincing explanation as to why the Panel should interpret its behaviour differently in this case. The Panel is satisfied that the Respondent registered and used the disputed domain name in bad faith under paragraph 4(b)(ii) of the Policy, as well.
The Panel is satisfied that the Respondent registered and is using the disputed domain name in bad faith.
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, , be transferred to the Complainant.