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International Capital & Management Company, LLP, Cancer Treatment Centers of America, Inc. v. Key of Destiny, Inc. [2005] GENDND 757 (26 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Capital & Management Company, LLP, Cancer Treatment Centers of America, Inc. v. Key of Destiny, Inc.

Case No. D2005-0303

1. The Parties

The Complainant is International Capital & Management Company, LLP St. Thomas, US Virgin Islands and Cancer Treatment Centers of America, Inc., Arlington Heights, Illinois, United States of America, represented by Schiff Hardin LLP, United States of America.

The Respondent is Key of Destiny, Inc., CFresno, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <cancercentersofamerica.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2005. On March 24, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On March 24, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 April 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 29, 2005.

The Center appointed Frederick M. Abbott as the Sole Panelist in this matter on May 12, 2005. 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

International Capital & Management Company is the owner of the service mark that is the subject of this proceeding. The mark is exclusively licensed to Cancer Treatment Centers of America. These two parties are collectively referred to herein as “Complainant”.

Complainant has registered the service mark “CANCER TREATMENT CENTERS OF AMERICA” on the Principal Register of the United States Patent and Trademark Office (USPTO): Reg. No. 2273680, dated August 31, 1999, typed drawing in International Class (IC) 42, covering “health care services”, claiming date of first use and first use in commerce of March 20, 1990, and; Reg. No. 1705553, dated August 4, 1992, design plus words in IC 42, covering “health care services; medical services; namely, cancer treatment services for patients”, claiming date of first use and first use in commerce of March 20, 1990. These marks are “incontestable” as a matter of U.S. trademark law. Complaint, para. 11.

Complainant provides “management, marketing, and related services to affiliated hospitals and medical practices, which in turn provide medical, counseling, and other services to cancer patients” (id.). Complainant operates a website at “www.cancercenter.com” where it provides information related to cancer to patients, prospective patients and the general public (id.). Complainant spends over $10 million per year advertising the CANCER TREATMENT CENTERS OF AMERICA and related services. Complainant’s facilities treat over 3000 patients per year from different parts of the United States (id.).

In addition to <cancercenter.com>, Complainant has registered a number of domain names, including <cancercenterofamerica.com>, <cancertreatmentcentersofamerica.com>, <cancertreatmentcenterofamerica.com>, <cancertreatmencenterofamerica.com> and <cancercenters.com> (id.).

According to the Registrar’s Verification, Respondent is the current registrant of the disputed domain name <cancercentersofamerica.net>. The Registrar’s Verification indicates that the record of registration was created on April 5, 2004.

Respondent operates a website at the address of the disputed domain name which prominently uses the name “Cancer Centers of America Inc.” The homepage refers to Dr. Richard Morgan as a “Genetics Specialist and the President of the Cancer Centers of America”. The website offers a product purported to be an alternative natural cancer cure for all types of cancer. Complaint, Annex 10.

On February 22, 2005, Complainant transmitted by certified mail a cease and desist demand to Respondent. On February 26, 2005, Respondent by e-mail replied “it may be ‘cheaper’ to just buy us out… because, you will NOT get a ‘default’ judgment if you sue us....”. Respondent added a purported disclaimer to its website which, following a reference to Complainant stated, “They use Chemo & Radiation to slowly ‘murder’ you!!!” Following objection from Complainant, the disclaimer was modified to say “IN OUR OPINION chemo/radiation results in a slow and painful death!!!” Respondent continued to urge Complainant to purchase the disputed domain name, stating “We are #1 in the MSN search engine for the KeyWords: cancer cure.... We are still of the OPINION that it would be much cheaper to just buy us out, than to sue us… as you know… LITIGATION never stops… and, could go on for years… one of my cases is still active after some 35 years of active LITIGATION...., and the Legal Fees alone have exceeded: $5 million … and there is no end in sight… SEMPER FI”. Id., Annex 10-11.

The Registration Agreement in effect between Respondent and Tucows subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts rights in the service mark “CANCER TREATMENT CENTERS OF AMERICA” based on use in commerce and as evidenced by registration at the USPTO.

Complainant alleges that the disputed domain name is confusingly similar to its mark. Complainant argues that its mark is well known among the consuming public. It refers to a prior panel decision under the Policy determining that the domain name <cancercenterofamerica.com> was confusingly similar to its mark (Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, decided September 18, 2003). Complainant states that the term Cancer Centers of America is used by members of the public as shorthand for its mark. Complainant indicates that the omission of the term “treatment” from the disputed domain name is not sufficient to eliminate confusion. Moreover, Respondent has deliberately sought on its website to create confusion with Complainant’s mark by disseminating information about cancer treatments.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent’s business name is “Key of Destiny, Inc.”, and there is no evidence that Respondent has ever been known or done business under the name Cancer Centers of America prior to registration of the disputed domain name. Respondent does not, in fact, operate any “Cancer Centers”.

Complainant states that Respondent registered and is using the disputed domain name in bad faith. It states that Respondent knew or should have known of its well known mark prior to registration of the disputed domain name. It states that failure to have conducted a trademark search is evidence of bad faith. Complainant argues that Respondent has deliberately attempted to attract Internet users to its website by using a fictitious corporate name for the purpose of creating confusion as to source, sponsorship, affiliation or endorsement by Complainant. Complainant alleges that Respondent registered and has used the disputed domain name for the purpose of selling it to Complainant. Respondent’s intention is evidenced in correspondence with Complainant. Complainant also argues that Respondent registered and is using the disputed domain name to defame Complainant. Complainant argues that Respondent’s purported disclaimer is insufficient to dispel initial interest confusion and, moreover, is used to defame Complainant. Complainant further argues that a disclaimer adopted following notification of objection is insufficient to prevent a determination by the Panel that the disputed domain name was registered and used deliberately to create consumer confusion.

Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center transmitted notification of the Complaint to Respondent at the addresses indicated for its registration of the disputed domain name. There is no indication that such transmission was unsuccessful. Respondent has previously been contacted at those addresses by Complainant. The Panel is satisfied that Respondent was given adequate notice of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s 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) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has submitted evidence of registration of the service mark CANCER TREATMENT CENTERS OF AMERICA on the Principal Register of the USPTO. Such registration establishes presumptive validity of the mark. Respondent has not challenged Complainant’s rights in the mark. The Panel finds that Complainant has rights in the service mark CANCER TREATMENT CENTERS OF AMERICA.

The disputed domain name <cancercentersofamerica.net> incorporates Complainant’s mark, while omitting the term “treatment”. The extent to which terms are confusingly similar as a matter of trademark law depends upon a comparison of the visual impression (sight), sound and meaning of the terms.¹ There is a visual similarity between the terms “CANCER TREATMENT CENTERS OF AMERICA” and “Cancer Centers of America”. The sounds of the terms are identical, but for the omission of the term “treatment”. The meaning of the combined terms is similar, but not identical. By using the term “treatment”, Complainant indicates that its “centers” provide services to patients (i.e., the persons who are treated). A third party which omits the term “treatment” might refer to a “center” where patients are treated, or it might refer to an institute that was engaged solely in research activities with respect to cancer. Nevertheless, the typical consumer familiar with the mark CANCER TREATMENT CENTERS OF AMERICA might well have difficulty distinguishing two businesses using these similar identifiers because the difference in meaning is subtle. Complainant has argued and presented some evidence that its mark is well known. Respondent has failed to rebut this evidence. To the extent that Complainant’s mark is a strong one, the possibility for consumer confusion may be raised because Respondent’s use of similar terms is more likely to trigger an association by consumers with the business of Complainant.

The evidence provided by Complainant strongly suggests that Respondent deliberately registered and used Complainant’s mark as the basis for the disputed domain name. Respondent has used a different business name (Key of Destiny, Inc.) and does not appear to operate cancer “centers” of any kind. As the U.S. Court of Appeals for the Ninth Circuit noted in Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1059 (9^th Cir. 1999), the intention of an alleged infringer to take advantage of the reputation of a trademark holder is an element in determining whether there is confusing similarity.²

Based on the overall impression conveyed by the terms used in the disputed domain name and the intention of Respondent in adopting them, the Panel determines that the disputed domain name <cancercentersofamerica.net> is confusingly similar to Complainant’s CANCER TREATMENT CENTERS OF AMERICA mark.³ This determination is supported by the previous decision of a panel in Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, decided September 18, 2003.

Complainant has established the first element necessary for a finding of abusive domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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.” (Policy, paragraph 4(c)).

Complainant has registered its service mark at the USPTO and has engaged in substantial advertising of that mark. It is unlikely that Respondent was unaware of Complainant’s mark when it registered the disputed domain name. It should have known that Complainant would dispute its registration of the disputed domain name and, in fact, Complainant acted promptly to enforce its rights. In these circumstances, Respondent has not used the disputed domain name for a bona fide offering of goods prior to notice of the dispute.⁴

Respondent has presented no evidence that it was commonly known by the disputed domain name, and Complainant has presented evidence to the contrary.

Respondent is making commercial use of the disputed domain name with intent to misleadingly divert consumers and to tarnish Complainant’s service mark.⁵ This is not fair use of Complainant’s mark. While Respondent has a right to express its opinion concerning different forms of cancer treatment, its website is not engaged in legitimate noncommercial use of Complainant’s mark for such purposes.⁶ Respondent is instead principally engaged in promoting its product. Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name and thus has established the second element for a finding of abusive domain name registration and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent “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 [respondent’s] documented out-of-pocket costs directly related to the domain name” (Id., paragraph 4(b)(i)), and; (2) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] website or location of a product or service on [its] website or location” (id., paragraph 4(b)(iv)).

Respondent’s immediate and consistent reply to Complainant’s objection to its use of the disputed domain name was to offer to sell it to Complainant, accompanied by explicit threats of protracted and expensive litigation as an alternative. In its e-mail replies to Complainant, Respondent made no effort to justify its use of the disputed domain name. This course of conduct strongly suggests that Respondent registered the disputed domain name with the intention to sell it to Complainant at the first opportunity for a price in excess of its out-of-pocket expenses, which the intention Respondent confirmed by its actions.

Respondent has also intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain name to create a likelihood of confusion with Complainant’s mark and suggesting Complainant’s affiliation with Respondent’s website. While Respondent added a purported disclaimer to its website after objection from Complainant, the disclaimer was primarily directed at tarnishing Complainant’s mark and business. Such a disclaimer does not diminish the bad faith character of Respondent’s use of the disputed domain name.

The Panel determines that Respondent registered and used the disputed domain name in bad faith by registering it primarily for the purpose of selling it to Complainant and by using it to intentionally attempt for commercial gain to attract Internet users to its website by creating confusion as to Complainant’s affiliation with it.

Complainant has established the third and final element necessary under the Policy for a finding against Respondent of abusive domain name registration and use.

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 <cancercentersofamerica.net> be transferred to the Complainant.

Frederick M. Abbott
Sole Panelist

Dated: May 30, 2005

¹ On the legal standards for assessing confusing similarity of terms, see, e.g., Zatarain’s v. Oak Grove Smokehouse, [1983] USCA5 238; 698 F. 2d 786 (5^th Cir. 1983) and AMF v. Sleekcraft Boats, [1979] USCA9 691; 599 F. 2d 341 (9^th Cir. 1979).

² See also Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477, decided July 20, 2000.

³ Addition of the generic top-level domain identifier “.net” is not relevant to this determination.

⁴ Complainant also challenges the nature of the product Respondent is offering for sale of its website. The Panel does not need to address this challenge.

⁵ Respondent indicates in its website that Complainant is in the business of murdering people.

⁶ Compare Pfizer Inc v. Van Robichaux, WIPO Case No. D2003-0399, decided July 16, 2003.