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Gambro AB, Gambro Lundia AB and Gambro Healthcare, Inc. v. Family Health & Wellness Center [2001] GENDND 1024 (25 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainants are indicated in the Complaint as Gambro AB, Gambro Lundia AB, and Gambro Healthcare, Inc. ("Gambro"). Gambro AB is a company incorporated in Sweden, whose principal place of business is located at Hamngatan 2, 103 91 Stockholm, Sweden. Gambro Lundia AB is a company incorporated in Sweden whose principal place of business is located at Magistratsvägen 16, 226 43 Lund, Sweden. Gambro Healthcare, Inc. is a company incorporated in Tennessee whose principal place of business is 1919 Charlotte Avenue, Nashville, Tennessee, 37203, United States. Gambro AB, Gambro Lundia AB, and Gambro Healthcare, Inc. are affiliated companies and are hereinafter collectively referred to as "Complainant" and/or "Gambro."

The Respondent is identified in the Complaint as Family Health & Wellness Center, S.C. whose address is 3435 W. Van Buren, Chicago, IL 60624, United States. The Administrative Contact for the Respondent listed on the "Whois" report submitted with the Complaint is Dr. Igoni I. Dokubo.

The disputed domain names are <gambrohealthcare.com> and <gambrohealthcare.net> ("the Domain Names").

The Registrar is EASYSPACE, LTD. (Easyspace). In an e-mail dated April 9, 2001, to the WIPO Arbitration and Mediation Center ("the Center"), Easyspace confirmed that the ICANN Uniform Domain Name Dispute Policy ("the Policy") applies to the Domain Names registered by Respondent on February 17, 2000.

On March 27, 2001, the Complaint, which is in the format required by the Policy, was filed electronically with the Center. The Complainant certifies that the Respondent and Easyspace were duly served with the Complaint.

On March 29, 2001, a hardcopy of the Complaint was received by the Center.

On April 9, 2001, having duly sought and obtained verification from the Registrar, the Center completed a formal compliance checklist.

On April 10, 2001, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier.

On April 30, 2001, having received no response to the Complaint from Respondent within the specified time in the Notification of Complaint, the Center notified the Respondent that it was in default.

On May 11, 2001, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a single Panelist, Lynda J. Zadra-Symes of Newport Beach, California, who was appointed by the Center after an invitation had been issued and an acceptance and Declaration of Independence and Impartiality had been duly returned.

The Complainant asserted the following facts, which are uncontested by Respondent and which the Panel finds established:

The Complainant's business involves the operation of kidney dialysis clinics and the manufacturing of dialysis products and equipment.

Founded in 1964, Complainant has offices and facilities in more than 40 countries throughout the world, and employs approximately 18,000 employees.

Complainant owns and operates more than 580 dialysis clinics, serving over 44,000 patients worldwide. The majority of Complainant's clinics (over 80%) are located in the U.S., including 11 clinics in Illinois where Respondent is located.

Complainant first began using GAMBRO as its trade name in 1964, and as a mark to identify its goods and services in 1972. Complainant filed its first United States trademark application for the GAMBRO mark in 1973, and has since obtained numerous registrations for its GAMBRO and GAMBRO HEALTHCARE marks on the Principal Register. Complainant has also registered its GAMBRO and GAMBRO HEALTHCARE marks in countries throughout the world.

Complainant also operates a website at www.gambro.com, where it provides information about Gambro Healthcare, Inc., its goods and services, and investor information about the company.

Complainant owns the following United States trademark registrations, according to the SAEGIS trademark search report submitted with Gambro's Complaint:

a. United States Registration No. 2,166,276 for the mark GAMBRO HEALTHCARE, filed April 2, 1996, issued June 16, 1998, covering goods in International Classes 5 (pharmaceuticals), 9 (electrical and scientific apparatus), and 10 (medical apparatus).

b. United States Registration No. 2,166,275 for the mark GAMBRO HEALTHCARE, filed April 2, 1996, issued June 16, 1998, covering services in International Classes 35 (advertising and business services), 41 (education and entertainment services), and 42 (medical services).

c. United States Registration No. 2, 166, 274 for the stylized mark GAMBRO HEALTHCARE, filed April 2, 1996, issued June 16, 1998, covering services in International Classes 35 (advertising and business services), 41 (education and entertainment services), and 42 (medical services)

d. United States Registration No. 2,219,341 for the mark GAMBRO, filed August 19, 1996, issued January 19, 1999, covering services in International Class 42 (online medical services).

e. United States Registration No. 1,116,590 for the mark GG GAMBRO and Design, filed February 21, 1978, issued April 17, 1979, covering goods in International Class 10 (medical apparatus).

f. United States Registration No. 0,985,118 for the m ark GAMBRO, filed January 16, 1973, issued May 28, 1974, covering goods in International Class 10 (medical apparatus).

Gambro Healthcare of Lund, Sweden, owns the domain name <gambro.com> which was registered with Network Solutions, Inc. on October 16, 1996 and has been used to identify Gambro's website since on or about that date.

Complainant's trademark rights in its GAMBRO and GAMBRO HEALTHCARE marks, established through its trademark registrations and common law rights, long predate Respondent's February 17, 2000 registration of the Domain Names.

The GAMBRO mark has become valuable property of Complainant through its continuous use since 1964 on a wide array of health care goods and services and through widespread promotion and advertising among members of the international medical community and the general public. Likewise, the GAMBRO HEALTHCARE mark and name have become valuable property of Complainant, having been used by Complainant in connection with its goods and services since 1996 and having been widely promoted and advertised among members of the medical community and the general public.

On February 17, 2000, Respondent registered, without Complainant's permission or authorization, the Domain Names. The Complaint alleges upon information and belief that Respondent is a family medicine clinic operated at Advocate Bethany Hospital and is run by Dr. Dokubo, the Administrative and Billing Contact for the Domain Names. Complainant submitted with its Complaint printouts from Advocate Health Care's website describing Dr. Dokubo's practice and providing the address of Advocate Bethany Hospital, which is the same address as that of Respondent as listed in the "Whois" report for the Domain Names. The record also indicates that Dr. Dokubo is involved in a clinic under the name Family Health & Wellness Center, as evidenced by the declaration of Alan Alper, a Gambro Healthcare employee who called the telephone number listed on the "Whois" report for the Domain Names. The person answering the telephone call identified the business as "Family Health and Wellness Center" and, when Mr. Alper asked for Dr. Dokubo, handed the telephone call to Dr. Dokubo. Thus, the record indicates that Dr. Dokubo is operating a clinic under the name of Respondent.

Respondent's address is located in Illinois, the same state in which Complainant operates 11 facilities bearing the GAMBRO HEALTHCARE trademark. According to Advocate Health Care's website, the clinic operated by Dr. Dokubo, the Administrative and Billing Contact for Respondent, is located at the same address as Respondent. As a medical doctor and the operator of a clinic in the same state as Complainant's 11 medical services facilities, it is difficult to believe that Respondent did not have actual knowledge of Complainant's trademark rights at the time of registering the Domain Names.

Gambro submitted with its Complaint an affidavit of Alan Alper, Vice President of Information Services at Gambro Healthcare, Inc., describing two conversations between Mr. Alper and Dr. Igoni Dokubo who is listed as the Administrative Contact for the Domain Names.

In his affidavit, Mr. Alper stated as follows:

In October 2000, I discovered that the domain name GAMBROHEALTHCARE.COM was registered to Family Health & Wellness Center, S.C. I called the telephone number listed on the WHOIS record. The person answering the telephone call identified the business as "Family Health and Wellness Center." I asked to speak with Dr. Igoni I. Dokubo because he is listed as the Administrative Contact on the domain name registration. I told Dr. Dokubo that I was calling regarding the domain name GAMBROHEALTHCARE.COM, and asked him if he had a relationship with my employer or its affiliates. He said he did not. Dr. Dokubo stated that he did not have time to speak with me then and that he would call me back.

On or about November 1, 2001, Dr. Dokubo called me to discuss the domain name GAMBROHEALTHCARE.COM. I asked Dr. Dokubo why he chose to register the domain name GAMBROHEALTHCARE.COM if he did not have a relationship with Gambro. Dr. Dokubo said that he was aware of a company called Gambro, but he was not aware of a company called Gambro Healthcare. Dr. Dokubo suggested that "Gambro" was his nickname.

Following the conversations described above, Gambro discovered that Respondent had also registered the domain name <gambrohealthcare.net>, which also contains and comprises Gambro's GAMBRO and GAMBRO HEALTHCARE trademarks.

There are no websites located at the Domain Names. Rather, the Domain Names resolve to "holding pages" posted by Easyspace, the registrar, and do not mention Respondent or Respondent's business activities.

On January 24, 2001, Gambro's counsel sent a cease and desist letter to Respondent, informing Respondent of Gambro's rights and demanding the transfer of the domain name <gambrohealthcare.com>. This letter did not address Respondent's <gambrohealthcare.net> registration because Gambro had not yet discovered that Respondent had registered that domain name. In that letter, Gambro offered to reimburse Respondent for the domain name registration fee.

On January 31, 2002, Dr. Dokubo, the Administrative and Billing Contact for the Domain Names, called Gambro's counsel and asked what Gambro would spend on litigation costs to resolve the dispute. On February 7, 2001, Dr. Dokubo again telephoned Gambro's counsel and made an oral demand of $20,000 (U.S.) for the transfer of the domain name <gambrohealthcare.com>. During that conversation, Dr. Dokubo did not disclose that Respondent had also registered the domain name <gambrohealthcare.net> and did not allege that "Gambro" was his nickname. Gambro submitted with its Complaint a declaration of its counsel testifying to the content of his conversation with Dr. Dokubo.

The Complainant made the following allegations, which Respondent did not contest:

The domain name <gambrohealthcare.com> fully incorporates Gambro's valuable and famous trademark and trade name GAMBRO and GAMBRO HEALTHCARE, and is therefore confusingly similar to Gambro's GAMBRO and GAMBRO HEALTHCARE marks and name.

The domain name <gambrohealthcare.net> fully incorporates Gambro's valuable and famous trademark and trade name GAMBRO and GAMBRO HEALTHCARE, and is therefore identical to and confusingly similar with Gambro's GAMBRO and GAMBRO HEALTHCARE mark and name.

Respondent does not have any rights or a legitimate interest in the Domain Names because they contain and trade on the goodwill of Gambro's GAMBRO and GAMBRO HEALTHCARE marks and names, and Respondent's use of those marks and names is unauthorized.

Respondent's registration and use of the Domain Names meet the bad faith requirement described in Paragraph 4(a) of the UDRP.

By registering the Domain Names with actual knowledge of Gambro's GAMBRO mark and with constructive knowledge of Gambro's GAMBRO HEALTHCARE mark arising out of Gambro's trademark registrations for that mark, Respondent breached its registration contract with Easyspace because it falsely represented that its registration of the Domain Names did not infringe the rights of any third party.

Internet users will be misled by Respondent into believing that Respondent's <gambrohealthcare.com> and <gambrohealthcare.net> websites are either operated by Complainant or are operated with Complainant's permission, authorization, or sponsorship. The likelihood of confusion is exacerbated by the fact that Respondent and Gambro are both in the medical-services field, and both operate in the very same geographic area.

By using the Domain Names for "holding pages" or "under construction" websites displaying Easyspace banner advertising, Respondent causes internet users to mistakenly believe that Complainant does not have a web presence dedicated to its GAMBRO HEALTHCARE services. Therefore, Respondent seriously interferes with Complainant's business, and ability to promote its goods and services under its GAMBRO HEALTHCARE mark.

Respondent did not respond to the Complaint, and has made no submissions to controvert the Complainant's contentions.

Pursuant to paragraph 4.a. of the Policy, the Complainant must prove 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) 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, as directed by paragraphs 14(a), 14(b) and 15(a) of the Rules, shall render the decision on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and principles of law that it deems applicable. The Panel may draw such inferences as it deems appropriate on the basis of Respondent's Response and give such weight as it considers appropriate to the Complainant's undisputed representations.

The Respondent did not submit any response and made no attempt to rebut Complainant's prima facie showing. Thus, the Complainant's representations are undisputed.

There can be no doubt that the Domain Names <gambrohealthcare.com> and <gambrohealthcare.net> are identical and confusingly similar to Complainant's GAMBRO and GAMBRO HEALTHCARE trademarks. The Panel finds that the Domain Names incorporate Complainant's GAMBRO and GAMBRO HEALTHCARE trademarks in their entirety, and are thus identical to the numerous trademark registrations for the GAMBRO and GAMBRO HEALTHCARE marks held by Complainant. In addition, the Panel finds that the whole of the Domain Names are confusingly similar to Complainant's registered trademarks.

Accordingly, the Panel finds that the Domain Names incorporate identically, and are confusingly similar to, the GAMBRO and GAMBRO HEALTHCARE trademarks, to which Complainant has rights.

The record establishes that the Respondent must have been aware of Complainant's trademark rights in at least the mark GAMBRO when registering the Domain Names in February 2000.

Complainant submitted printouts from a website at www.advocatehealth.com operated by Advocate Health Care. These printouts indicate that Dr. Igoni Dokubo, the Administrative and Billing Contact for the Domain Names, operates a family medicine clinic at Advocate Bethany Hospital. These website printouts describe Dr. Dokubo's practice and provide the address of Advocate Bethany Hospital, which is the same address in Illinois as that of Respondent provided in the WHOIS report. Complainant operates 11 medical facilities bearing the GAMBRO HEALTHCARE trademark in Illinois.

In his telephone conversation in October 2000 with a Gambro employee who called Respondent regarding the domain name <gambrohealthcare.com>, Dr. Dokubo stated that he did not have a relationship with Gambro Healthcare, Inc. or its affiliates. In a subsequent telephone conversation with the same Gambro employee in November 2000, Respondent stated that he was aware of a company called Gambro, and suggested that he had registered the Domain Names because his nickname was "Gambro."

Respondent has not, however, submitted any evidence that Dr. Dokubo was known by the nickname "Gambro." In any event, the Domain Names incorporate the Complainant's identical trademark GAMBRO HEALTHCARE, which Dr. Dokubo did not indicate to be his nickname. Moreover, had Respondent conducted a simple Internet search, Respondent would have readily found that Complainant uses the marks GAMBRO and GAMBRO HEALTHCARE.

This Panel finds that there is no indication that the Respondent has any rights or legitimate interests in respect of the Domain Names. Respondent has not used or prepared to use the Domain Names in connection with any bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy. Respondent is not commonly known by the Domain Name as contemplated under paragraph 4(c)(iii) of the Policy, nor is Respondent making a legitimate non-commercial or fair use of the Domain Name as contemplated under paragraph 4(c)(iii) of the Policy.

Accordingly, this Panel finds that Complainant has proved that the Respondent does not have a legitimate interest in the Domain Name.

Paragraph 4(b) of the Policy provides that the following circumstances, amongst others, 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 Respondent registered or 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 Respondents out-of-pocket costs directly related to the domain name; or

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

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

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 Respondent's web site or location or of a product or service on Respondent's web site or location.

Each of the four circumstances in paragraph 4(b), if found, is a separate instance of "registration and use of a domain name in bad faith."

The record indicates that Respondent sought a substantial sum of money, $20,000 (U.S.), from Complainant in return for the transfer of one of the domain names <gambrohealthcare.com.>. This sum is far in excess of the registration costs incurred by Respondent.

The record also indicates that Complainant's GAMBRO and GAMBRO HEALTHCARE trademarks are well-known and that Respondent was aware of Complainant's trademarks when it registered the Domain Names. Respondent's registration as domain names of Complainant's well-known marks could not have been for any plausible reason other than to trade on the goodwill of Complainant. In view of the record indicating that Complainant operates 11 medical facilities in the same state where Respondent's clinic is located, Respondent must have known he was infringing upon Complainant's well known marks by registering the Domain Names.

These circumstances clearly fall within paragraph 4(b)(i) because they indicate that Respondent registered or 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, for valuable consideration in excess of Respondent's out-of-pocket costs.

The Panel also finds that Respondent's registration and use of the Domain Names meet the bad faith element set forth in Section 4(b)(iii) because the Domain Names were registered primarily for the purpose of disrupting Complainant's business. By using the Domain Names for "holding pages" or "under construction" websites displaying Easyspace banner advertising, Respondent causes Internet users to mistakenly believe that Gambro does not have a web presence dedicated to its GAMBRO HEALTHCARE services. Therefore, Respondent seriously interferes with Gambro's business and ability to promote its goods and services under its GAMBRO HEALTHCARE mark.

Although the Domain Names do not presently resolve to a website and thus do not appear to be "in use" by Respondent, the circumstances described in paragraph 4(b)(i) are present and sufficiently support a finding that Respondent registered and used the Domain Name in bad faith. No justification, excuse or plausible explanation exists for Respondent's unauthorized registration of the Domain Names which incorporate Complainant's well-known trademarks in their entirety. In any event, this is a case where the concept of "passive use" referred to in the Telstra-Case WIPO Case No. D2000-0003 would be applicable because, considering all the circumstances of the case, it can be said that the Respondent is acting in bad faith.

Accordingly, the Panel concludes that Respondent has registered and used the Domain Names in bad faith on the grounds that (1) the Respondent could not legitimately use Domain Names which incorporate the Complainant's well-known registered trademarks GAMBRO and GAMBRO HEALTHCARE; (2) Respondent was aware of Complainant's rights in at least the GAMBRO mark at the time of Registration; (3) Respondent has no rights or legitimate interests in the Domain Names; (4) Respondent registered the Domain Names primarily for the purpose of disrupting Complainant's business; and (5) Respondent attempted to sell one of the Domain Names to the Complainant for substantially more than Respondent's out-of-pocket costs.

For all of the foregoing reasons, the Panel decides that the Complainant has met its burden of proof under paragraph 4 of the Policy. Accordingly, this panel concludes that the domain names <gambrohealthcare.com> and <gambrohealthcare.net> should be transferred to the Complainant Gambro Healthcare, Inc.

Lynda Zadra-Symes
Sole Panelist

Dated: May 25, 2001