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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Consultorio Dexeus, S.A. v. Monse D.

Case No. D2009-0531

1. The Parties

The Complainant is Consultorio Dexeus, S.A., Barcelona, Spain, represented by Baker & McKenzie, Barcelona, Spain.

The Respondent is Monse D., Jersey City, New Jersey, United States of America.

2. The Domain Names and Registrar

The disputed Domain Names <dexeus.net> and <dexeus.org> are registered with MyDomain, Inc. d/b/a NamesDirect.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 22, 2009 against Hello Domain. On April 23, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed Domain Names. Following the notification of the Complaint, Hello Domain deleted the Domain Names before the registrar Melbourne IT could lock them. On May 6, 2009, the Center requested instructions from the Complainant, as to whether the Complaint was to be withdrawn or the proceedings continue against Hello Domain. On May 11, 2009, the Complainant requested the Center to extend the deadline until June 2, 2009, in order to try to register the Domain Names directly from the registrar Melbourne IT. On June 2, 2009, the two disputed Domain Names were transferred to the Respondent through another registrar, MyDomain, Inc. On June 2, 2009, the Complainant requested an extension of three days to file an amended Complaint against the Respondent. On June 3, 2009, MyDomain, Inc. d/b/a NamesDirect 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 together with the amendment to 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").

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 June 10, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent`s default on July 1, 2009.

The Center appointed Luca Barbero as the sole panelist in this matter on July 6, 2009. 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 Consultorio Dexeus S.A., a joint-stock company organized and existing under the laws of Spain, which was incorporated under the corporate name of "Consultorio Dexeus, S.A." on January 10, 1972 and is the owner of the Spanish trade name registration "CONSULTORIO DEXEUS, S.A." No. 0252739 registered on March 16, 2003. The Complainant is engaged in offering health services. The Complainant is also the owner of the Spanish figurative Trademark Registration "WOMAN`S HEALTH DEXEUS" No. 2751877 registered on January 26, 2007 in class 44 and of the Community figurative Trademark Registration "WOMAN`S HEALTH DEXEUS" No. 005652185 registered on January 30, 2007 in class 44.

The Complainant is furthermore the registrant of the domain name <dexeus.com>, registered on March 23, 1998, and operates its official web site at "www.dexeus.com".

The Respondent registered the Domain Names <dexeus.net> on June 1, 2009 and <dexeus.org> on June 2, 2009.

5. Parties` Contentions

A. Complainant

The Complainant points out that since 1972, Consultorio Dexeus S.A. has been engaged in offering health services in the field of gynecology, obstetrics and human reproduction and that it is one of the Spain`s leading and most innovative private medical groups.

The Complainant contends that the Domain Names <dexeus.net> and <dexeus.org> are nearly identical to trademarks and domain names in which Complainant has rights as they reproduce the well-known trademark "DEXEUS" in its entirety.

With reference to rights or legitimate interests in respect of the Domain Names, the Complainant states that the Respondent has no relationship with or permission from the Complainant to use the Complainant`s corporate name, trade name registration, trademark registrations and/or any word confusingly similar thereto.

The Complainant also states that the Respondent has never had any evident connection to the health services industry, and is not commonly known by the Domain Names, nor has it acquired trademark or service mark rights in the disputed Domain Names.

The Complainant underlines that before any notice to the Respondent of the dispute, there were no evidence of the Respondent`s use of, or demonstrable preparation to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

Besides, the Complainant emphasizes that the Respondent is not making a legitimate non-commercial or fair use of the Domain Names at issue, but rather is unfairly trading on Complainant`s corporate name, trade name registration and trademark registrations to attract, for commercial gain, Internet users to the Respondent`s websites where the disputed Domain Names are offered for sale.

With reference to the circumstances evidencing bad faith the Complainant indicates that the Domain Names were registered and are being used in bad faith.

The Complainant emphasizes that the Respondent registered and held the disputed Domain Names for the purpose of reselling them at a profit. In fact, the Complainant underlines that the Respondent is offering the disputed Domain Names for sale at a price of US$1,900.00 for each domain name on the websites "www.dexeus.net" and "www.dexeus.org", amount which is, according to the Complainant, certainly beyond the value of the out-of-pocket costs.

The Complainant also informs the Panel that the Respondent`s intention to resell the Domain Names for profit is further revealed by the posting of the Domain Names for sale on three domain auction websites.

In view of the Complainant, the Respondent is furthermore preventing the Complainant from reflecting the mark in corresponding domain names and the Respondent is to be considered engaged in a pattern of such conduct, as it has been a "Sedo seller" since April 2003, with a high index of activity in selling domain names. The Complainant also emphasizes that the Respondent`s registration of the two disputed Domain Names is another significant circumstance evidencing bad faith under paragraph 4(a)(ii) of the Policy.

As a further circumstance evidencing bad faith, the Complainant underlines that the Respondent is hiding his true identity behind the name "Monse D.", which does not identify either an individual or a company, and that the Respondent provided a false contact address.

B. Respondent

The Respondent did not reply to the Complainant`s contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of the Complainant`s submissions, drawing such inferences from the Respondent`s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the 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 Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Domain Name Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the Spanish trade name registration "CONSULTORIO DEXEUS S.A." and of various figurative trademark registrations comprising the sign "DEXEUS".

Therefore, the Panel finds that the disputed Domain Names are confusingly similar to the registered trademarks owned by the Complainant since the Domain Names are identical to the most distinctive element of the trademarks owned by the Complainant. The other signs of the trademarks mentioned in the Complaint like "WOMAN`S", "HEALTH" and "CONSULTORIO" are to be considered not relevant for the assessment of the confusing similarity since predominantly merely descriptive of the activities of the Complainant.

As stated i.a. in Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, "While the domain ‘militec` is not identical to Complainant`s MILITEC (& Design) and MILITEC-1 trademarks, as Complainant would have this panel believe (Amended Complaint, Paragraph 13), it undoubtedly is confusingly similar, in that it is the primary, distinctive element of both of Complainant`s trademarks. Moreover, Respondent does not dispute Complainant`s trademark rights". See also along these lines Zwiesel Kristallglas AG v. WWW Enterprise Inc., WIPO Case No. D2005-1223, concerning the domain name <zwiesel.com>, in which was stated: "The Panel accepts the Complainant`s allegations that the word ‘zwiesel` is the essential element of the Complainant`s marks (‘ZWIESEL GLAS` and ‘SCHOTT ZWIESEL`) and is universally recognized and relied upon as identifying the Complainant".

In view of the above, the Panel finds that the Complainant has proven that the Domain Names are confusingly similar to the trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent may establish a right or legitimate interest in the Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

"(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."

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent`s rights or legitimate interests in respect of the Domain Names according to paragraph 4(a) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedent, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of proof on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Names 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. (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Met America Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. 852581).

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.

There is no indication before the Panel that the Respondent is commonly known by the Domain Names, has made preparations to use the Domain Names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the Domain Names.

Furthermore, the Panel finds that the fact that the Respondent is offering the disputed Domain Names for sale on the corresponding web sites and on auction sites at a price which is certainly beyond the value of out-of-pocket costs supports the finding of a lack of legitimate interest in using the Domain Names.

The Panel shares the view expressed in J Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054, in which the Panel stated: "[The conduct of a speculator] precludes others who have a legitimate desire to use the name from doing so. Persons precluded by such conduct may be those who have no prior right or interest in the name, as well as those who have a demonstrable prior interest in the name. Speculation is not recognized by the Policy as a legitimate interest in a name, and the Policy should not be interpreted to hold that mere speculation in domain names is a legitimate interest. To hold otherwise would be contrary to well established principles that preclude mere speculation in names and trademarks and would encourage speculators to appropriate domain names that others desire to put to legitimate use. Ultimately, speculation in domain names increases costs to the operators of websites and limits the availability of domain names."

Moreover, it has been repeatedly stated that when a Respondent does not avail himself of his right to respond to a Complaint, it can be assumed that the Respondent has no rights or legitimate interests in the disputed domain name (see i.a. Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, 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 the Domain Names in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder`s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder` s website or other online location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of the holder`s website or location or of a product or service on the holder`s website or location.

In light of the Complainant`s trademark registrations since 1972 and the services advertised on line at the corresponding web site "www.dexeus.com", the Respondent`s consistent domain name sales activities on Sedo, the fact that the Domain Names have been both offered for sale on the corresponding web sites and also on domain auction web sites, the Panel infers on balance that the Respondent was well aware of the prior trademark registrations of the Complainant at the time of registration of the Domain Names.

With reference to bad faith use, the Panel finds that - in view of the redirection of the Domain Names to web sites in which each of them is offered for sale at a price of US $ 1,900.00, even with the indication of an email address to contact for the possible purchase (dexeus@dexeus.net) and the way to do the payment - the Respondent is also using the Domain Names in bad faith. The Respondent is thus holding the Domain Names for what appears to be the only purpose of reselling them for an amount well in excess of the documented out-of-pockets costs; see, inter alia, Bencom SRL v. NetCorporation, WIPO Case No. DRO2006-0007 and Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076 where it was found "the amount sought, $475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other ‘out-of-pocket costs directly related to the domain name`).

The Panel also shares the view expressed in See AT&T Corp v. Mark Dyer, WIPO Case No. D2006-0569, where the Panel stated: "(…), the instances of bad faith listed in Policy, paragraph 4(b) are expressly without limitation, and the Panel concludes that the Respondent`s conduct in attempting to sell the Domain Name – confusingly similar to the Complainant`s famous marks (and probably those of Yahoo! Inc. as well) – through an auction website is indicative of bad faith. See Reckitt Benckiser AG v. Nazim Oren, WIPO Case No. D2002-0286 (bad faith in attempting to sell domain names through the domain name auction site <afternic.com> despite knowledge of the complainant`s marks)".

In view of the above, the Panel deems paragraph 4(b)(i) of the Policy applicable to the present case.

Furthermore, the Panel considers the incomplete information originally provided by the Respondent on the Whois as an additional circumstance evidencing the bad faith of the Respondent concurring with the views expressed inter alia in Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and in Steelcase Development Corporation v. Admin, Domain, WIPO Case No. D2005-1352, stating that the use of false contact information by the Respondent is a further indication of bad faith.

In view of the above, the Panel finds that the Domain Names were registered and are being used 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 Names <dexeus.net> and <dexeus.org>, be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: July 21, 2009