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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Therapro, Inc. v. Whois Protection

Case No. D2007-1222

1. The Parties

The Complainant is Therapro, Inc., Framingham, Massachusetts, United States of America, represented by Amy B. Spagnole Esq. of Hinckley, Allen & Snyder LLP, United States of America.

The Respondent is Whois Protection, West Bay, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <therapro.com> is registered with Rebel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2007. On August 22, 2007, the Center transmitted by email to Rebel.com a request for registrar verification in connection with the domain name at issue. Later that same day, Rebel.com transmitted by email to the Center its verification response confirming that:

(a) it is the registrar for the disputed domain name;

(b) the Respondent is listed as the registrant of the disputed domain name;

(c) the contact details for the administrative, billing, and technical contacts provided in the Complaint are correct;

(d) English is the designated language under the Registration Agreement for the disputed domain name;

(e) the registration of the disputed domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”); and

(f) the disputed domain name was first registered on November 19, 2006.

The Center verified that the Complaint satisfied the formal requirements of 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 August 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 17, 2007.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 24, 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

According to the Complaint, the Complainant commenced business in 1986 as a mail order service under the name and mark THERAPRO for variously branded therapeutic aids. In 1989, its business expanded into actually offering occupational therapy tools and speech therapy aids and services branded under its THERAPRO mark. In 1999, it launched its website at “www.theraproducts.com” from which it offered for sale its products and services under the THERAPRO brand name.

Extracts from various of its mail order catalogues and its website showing use of the trademark THERAPRO are included in Annex C of the Complaint.

Complainant applied for registration in the United States of America of THERAPRO in relation to its range of products and services on November 17, 2005. Registration under No. 3,255,028 was formally granted on June 26, 2007.

According to the Complaint:

(a) thousands of consumers have shopped for the Complainant’s products under the THERAPRO trademark through its mail order catalogue and website;

(b) more than 75,000 THERAPRO branded catalogues were mailed out in 2005 and 2006 alone;

(c) the Complainant’s website, which features the THERAPRO trademark prominently, receives more than 2,200 hits per month; and

(d) the Complainant shipped more than 20,000 packages to its customers in 2005.

As noted above, the disputed domain name was first registered on November 19, 2006 in the name of “Express Personnel Advertising”, an entity having the same address as the Respondent. Sometime after that date, the Respondent has been recorded in accordance with Rebel.com’s procedures as the registrant.

Annexure F to the Complaint contains printouts from the website which the disputed domain name resolved to shortly before the Complaint was filed. At that time, the disputed domain name pointed to a website in the nature of a portal which consisted of a number of links to topics such as Occupational Therapy, Therapro, Physical Therapy Equipment, Hair Loss Treatments, Chewy Tubes, Massage Oils and a range of generic services under the heading Favourites, such as Travel, Finance and Home.

Clicking on the links to Occupational Therapy and Physical Therapy Equipment took the browser to pages containing links to providers of products and services competitive with the Complainant’s products and services. Annexure F also includes print outs from the links on those pages. Annexure F does not include, however, a print out of the page resulting from the Therapro link.

At the time of preparing this decision, the website which the disputed domain name resolves to is still an online information and resource portal. However, it now features links under the heading Popular Categories only to goods and services which appear to be unrelated to the Complainant’s field of activities such as “Dating”, “Cars”, Entertainment” etc.

5. Discussion and Findings

There has been no Response. The Center has forwarded the Complaint to the Respondent by email and courier to the addresses which the Registrar, Rebel.com, has confirmed are the correct details for the domain name as registered.

Consequently, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.

In the absence of exceptional circumstances, paragraphs 5(e) and 14(a) of the Rules direct the Panel to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Accordingly, under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect 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.

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

Although the Complainant now has a registered trademark, the Complainant relies on rights arising at common law from its use of the trademark THERAPRO. See e.g. Adobe Systems Inc. v. Domain Oz WIPO Case D2000-0057 and Capstone Mortgage Co. v Joshua Shook WIPO Case D2004-0395.

In the present case, the claims about the extent of the Complainant’s use indicated in section 4 above are sufficient to give rise to common law rights. They are supported to some extent by the inclusion of sample catalogues and extracts from the Complainant’s website illustrating use of the mark. The Panel also draws some comfort from the Complainant’s securing of trademark registration in the United States of America based on use going back to 1986 and 1989 in respect of, respectively, mail order services and products.

Accordingly, the Panel finds that the Complainant has established trademark rights for the purposes of the Policy in the trademark THERAPRO.

Apart from the addition of the gTLD “.com”, the disputed domain name is identical to the Complainant’s common law trademark THERAPRO. This difference can be disregarded for the purposes of the Policy. See for example Telstra Corporation Ltd v Ozurls WIPO Case No. D2001-0051, Ticketmaster Corporation v. DiscoverNet Inc. WIPO Case No. D2001-0252, Microsoft Corporation v. J. Holiday Co. WIPO Case No. D2000-1493.

Any limitations in the scope of the common law trademark as to geographical scope or the goods or services it is associated with are not relevant at this stage of the inquiry, which is simply concerned with comparing the disputed domain name to the trademark rights established. Such limitations, if any, may of course be relevant considerations under the other elements required to be established under the Policy.

Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to the trademark rights proved by the Complainant.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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.”

These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.

It is now very well established that, in view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case. An early example in which this proposition was established is Sony Kabushiki Kaisha v. Sony.net WIPO Case No. D2000-1074.

The Complainant states that it has not authorised the Respondent to use the domain name. The domain name is not derived from the Respondent’s own name or that of the entity which originally registered the domain name on November 19, 2006.

The distinctive element of the domain name, “therapro”, is an invented or coined term. In the context of the Complainant’s business, its derivation may appear reasonably straightforward, but it is meaningless. It is not a plainly descriptive term to use to describe either the goods or services of the Complainant’s business or of the key products linked from the Respondent’s website before the Complaint was submitted. It is at best allusive or suggestive only. Accordingly, it is not on its face a term which would naturally be adopted to refer to such goods or services.

As mentioned in section 4 above, the Complaint does not provide details of what the Respondent’s website provided or was offering under the hyperlinked category “Therapro”. If the Respondent’s website was offering the, or perhaps only the, Complainant’s products and services or information about the Complainant, there might be a basis for contending that such use was a bona fide offering or fair use of the trademark.

A range of considerations have been advanced or taken into account to determine if such use qualifies as bona fide in cases such as Nikon, Inc. and Nikon Corporation v. Technilab, Inc. WIPO Case No. D2000-1774, Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 and Gerd Petrik v. Johnny Carpela WIPO Case No. D2004-1043.

One point which does emerge clearly from the decisions which have had to address this is that a respondent who uses the domain name to attract customers for goods and services competing with those of the Complainant is almost invariably found not to be acting bona fide or making a fair use especially when the distinguishing component of the domain name is not a directly descriptive term or otherwise shown to have been derived independently. That is, the use of a domain name to divert customers from a trademark owner is neither bona fide nor fair use.

Here, the Respondent’s website as evidenced in Annexure F of the Complaint operated as a search portal for products and services in competition with the Complainant and so operated in the trade diversion sense.

Cumulatively, these factors raise a clear prima facie case that the Respondent does not have any rights or legitimate interests in the domain name.

The Respondent has not sought to rebut that prima facie case in any way. In particular, the Respondent has not sought to advance any right or entitlement to use the expression or to support its independent derivation.

Accordingly, the Panel finds that the Complainant has sufficiently established for the purposes of the Policy in the circumstances of this case that the Respondent does not have any rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the disputed Domain Name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(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

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”

The first salient consideration on this part of the dispute is that the disputed domain name is identical or confusingly similar to the Complainant’s trademark THERAPRO.

As already noted, “therapro” is not in itself a plainly descriptive term, but a coined or invented name.

The second salient consideration is that the domain name was registered some 20 years after the Complainant commenced its business under the trademark THERAPRO.

The third salient consideration is that the Respondent is using the disputed domain name for a website which substantially provides links to products and services competitive with the Complainant’s services.

These are clear indicators of registration and use in bad faith under the Policy. See e.g. paragraph (b)(iv) above.

This conclusion is reinforced by the fact that the Respondent, or the entity under whose name the disputed domain name was first registered, have been found by several Panels to have registered and used other persons’ trademarks in bad faith: McIlhenny Co. v. Whois Protection WIPO Case No. D2007-0767; McIlhenny Co. v. Express Personnel Advertising WIPO Case No. D2006-0659; General Mills Inc. v. Express Personnel Advertising NAF Claim No. 921290; Associated Volume Buyers Inc. v. Whois Protection NAF Claim No. 993130; Skyline Displays Inc. v. Whois Protection NAF Claim No. 989807 and Seiko Corporation v. Whois Protection NAF Claim No. 1006968.

The final consideration is that the Respondent has not made any attempt to rebut the Complainant’s allegations.

In these circumstances, the Panel finds that the disputed domain name was registered and is being used in bad faith.

6. 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, <therapro.com>, be transferred to the Complainant.

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Warwick A. Rothnie
Sole Panelist

Date: October 12, 2007