DECISION

Prof. Ivo Pitanguy v. Pitanguy Plastic Surgical Clinic

Claim Number:  FA0310000205125

PARTIES

Complainant is Prof. Ivo Pitanguy (“Complainant”), represented by Lawrence V. Molnar, of CMG Wworldwide, Inc. 10500 Crosspoint Boulevard, Indianapolis, IN 46256.  Respondent is Pitanguy Plastic Surgical Clinic (“Respondent”), 2-15 Nonhyun-Dong, Kangnam-Ku, Seoul, 135-010, South Korea.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pitanguy.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 24, 2003; the Forum received a hard copy of the Complaint on October 27, 2003.

On October 28, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <pitanguy.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 18, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@pitanguy.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 25, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <pitanguy.com> domain name is identical to Complainant’s PITANGUY mark.

2. Respondent does not have any rights or legitimate interests in the <pitanguy.com> domain name.

3. Respondent registered and used the <pitanguy.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Claimant, Dr. Ivo Pitanguy, is a plastic surgeon living and practicing in Brazil.  He is a well-known physician in his field—plastic surgery techniques are named after him—and he provides services for the affluent and famous.  He is also the director of the Ivo Pitanguy Clinic, a private institution that has operated in Brazil for over 30 years.  He is the head professor of the Post-Graduate Medical School of the Pontifical Catholic University of Rio de Janerio and the Carlos Chagas Institute of Post-Graduate Medical Studies.  Ivo Pitanguy has written over 800 publications, including Brazilian and Foreign journals.  Complainant has registered and uses the <pitanguy.com.br> domain name.

Respondent is affiliated with a plastic surgery clinic in South Korea.  Complainant alleges that a former student operates the South Korean clinic.  Respondent registered the <pitanguy.com> domain name on May 15, 2002.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant asserts that it holds trademark rights in PITANGUY.  Although Complainant’s mark is not registered, the Policy does not require that a mark be registered in order to make out prima facie claim.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN Policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).

As Respondent has not contested Complainant’s asserted rights in PITANGUY, the Panel accepts Complainant’s assertion as true and finds that Complainant holds rights in the mark.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that Complainant has common law rights to her name).

Respondent’s domain name <pitanguy.com> is identical to Complainant’s mark PITANGUY.  The only difference is the addition of the generic top-level domain (gTLD) “.com” after the name, which is not significant.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that the <pitanguy.com> domain name is identical to Complainant’s PITANGUY mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted that Respondent has no rights or legitimate interests in respect to the domain name.  Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Respondent is using the Complainant’s identical mark to offer competitive services.

Respondent’s use of the PITANGUY mark in its domain neither a bona fide offering of goods or services nor constitutes fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services).

Although Respondent uses Complainant’s mark in its WHOIS name, it is not commonly known by Complainant’s mark.  See Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information); see also Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using the disputed domain name.  Respondent attempted to mislead Internet users by incorporating the Complainant’s mark into its domain name.  By doing so, the Respondent has demonstrated bad faith registration and use under Policy ¶ 4(a)(iii).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Respondent had knowledge of Complainant, its medical procedures and style, and its practice. Because of its connections with the Complainant, the Panel can infer that Respondent used Complaint’s mark for the primary purpose of disrupting Complainant’s business.  This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <pitanguy.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 8, 2003

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