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The
Parties Information
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Claimant
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(1) Parkway Group
Healthcare Pte Ltd (2) Parkway Holdings Limited
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Respondent
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Proton - Igor
Vladimirovich Sumkin
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Procedural
History
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On 11 December 2003, the Complainants
submitted an electronic copy of their Complaint and the Complaint
Transmittal Sheet to
the Hong Kong Office of the Asian Domain Name
Dispute Resolution Centre (“Centreâ€ﾝ).
On
12 December 2003, the Complainants sent to the Respondent’s
known email addresses an electronic copy of
the Complaint and the
Complaint Transmittal Sheet filed with the Centre.
On 15
December 2003, the Complainants submitted a hard copy of the
Complaint to the Centre.
On 22 December 2003, the Centre
notified eNom, Inc. (“Registrarâ€ﾝ)
that the Complaint has been filed with respect to the Disputed
Domain Name.
On 30 December 2003, the Centre formally
confirmed with the Complainants the receipt of both the electronic
and hard copy of
the Complaint and corresponding payment of
fee.
On the same day, the Centre also notified the
Respondent that a Complaint had been properly filed against
him.
On 31 December 2003, the Complainants sent to the
Respondent’s known postal address by double
registered
post a hard copy of the Complaint and the Complaint
Transmittal Sheet filed with the Centre.
On 1 January 2004,
the Registrar confirmed with the Centre receipt of the
notification of the Complaint and notified the Centre
that the
Disputed Domain Name has been duly placed on hold so that no
changes can be made until the conclusion of the proceedings.
On
13 January 2004, the Centre notified the Respondent that he had
twenty calendar days to submit a Response to the Complaint.
On
3 February 2004, the Centre electronically confirmed with the
Complainants and Respondent that the Centre has received no
Response from the Respondent.
On 9 February 2004, the
Centre notified the Complainants and the Respondent of the
appointment of Mr. Tan Loke-Khoon as the
sole Panellist in this
matter. On the same day, the Centre transferred the case file to
the Panellist by post.
The Panellist finds that the
Administrative Panel was properly constituted and appointed in
accordance with the Rules and the
ADNDRC Supplemental Rules.
The
Panellist has not received any further requests from the
Complainants or the Respondent regarding other submissions,
waivers or extensions of deadlines. There is no need to hold any
exceptional in-person hearings for deciding the Complaint, as
provided for in paragraphs 12 and 13 of the Rules.
The
language of the proceeding is English, it being the language of
the Registration Agreement, pursuant to paragraph 11(a)
of the
Rules, and there being no express agreement to the contrary by the
parties.
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Factual
Background
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For
Claimant
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The following information is derived from the
Complaint submitted by the Complainants.
Complainant 1 is a
private limited company incorporated in Singapore with its
principal place of business at 302 Orchard Road,
Tong Building
#16-01, Singapore 238862. Complainant 2 is a public listed company
incorporated in Singapore, with its principal
place of business at
Grange Road, #11-01, Orchard Building, Singapore
239693.
Complainant 1 is a wholly-owned subsidiary of
Complainant 2. Both Complainants belong to the same group of
companies (“Parkway
Groupâ€ﾝ).
Complainant
2 comprises of a hospitals division, a healthcare services
division and a non-core segment. Within the hospitals
division,
Complainant 2 owns three private hospitals in Singapore and has a
regional network of hospitals in Malaysia, India
and Brunei.
Within the non-core segment, Complainant 2 conducts property and
other investments.
Complainant 1 operates within the
healthcare services division of Complainant 2. Complainant 1 is
one of Asia’s
leading fully-integrated
healthcare providers, providing primary healthcare, diagnostic
services, dialysis services, managed
care, clinical research,
medical assistance, procurement services, healthcare information
technology services, homecare and
rehabilitation as well as
consultancy services for hospital development and
management.
Complainant 1 reported gross profits of almost
S$112 million in 2002 and is ranked among the Top 50 Fastest
Growing Company
in Singapore by an independent survey conducted by
the Straits Times, a national daily newspaper in Singapore.
Parkway Group
as a whole enjoyed gross profits of S$252 million
and net profits of S$33 million in 2002.
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For
Respondent
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The Respondent did not participate in this
proceeding. The following information is derived from the
Complaint.
The Respondent is Igor Vladimirovich Sumkin of
Proton with an address at Vnutrenniy Projezd 8, Moscow, MO 113149,
RU.
The Respondent is the registrant of several domain
names used for maintaining pornographic websites.
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Parties'
Contentions
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Claimant
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(a) Name is identical or confusingly similar
to a trademark or service mark in which the Complainant has
rights
In Singapore, Complainant 2 has used the name
“Parkwayâ€ﾝ
as its corporate name since
1986, and many companies within the Parkway Group also use the
name “Parkwayâ€ﾝ
in their corporate
name.
Complainant 2 has registered “Parkwayâ€ﾝ
as a trademark in many countries
within Asia, covering activities including advertising services,
public relation services,
building and real estate management,
property leasing, property development, air freight
transportation, warehousing, cargo
handling, hospital and medical
services as well as medical equipment planning and supply.
Being
a wholly-owned subsidiary of Complainant 2 and a member of the
Parkway Group, Complainant 1 has been allowed to use the
“Parkwayâ€ﾝ
trademark since its
incorporation in 1996.
The Complainants assert that the
name “Parkway Group Healthcareâ€ﾝ
incorporates the registered
trademark “Parkwayâ€ﾝ
and is used by Complainant 1 and
its hospitals to distinguish themselves from the property and
investment arm of the Parkway
Group.
The name “Parkway
Group Healthcareâ€ﾝ
has been widely publicised in
the publicity materials of Complainant 1 including printed
advertisements, newsletter, name cards,
stationary, annual reports
and brochures.
Complainant 1 was the previous registrant of
the Disputed Domain Name through its service provider (“Service
Providerâ€ﾝ).
Complainant 1 had previously used the Disputed Domain Name to
provide information on its services.
According to the
Complainants, the registration of the Disputed Domain Name lapsed
due to a miscommunication between Complainant
1 and the Service
Provider. At that time, the Service Provider was no longer under
contract to provide services to the Complainants.
Although the
Service Provider told the Complainants that the Disputed Domain
Name was expiring, the information came at a time
of internal
reshuffling within the Complainants. As a result, no officer was
tasked and in a position to instruct the renewal
of the Disputed
Domain Name.
(b) Respondent has no rights or legitimate
interests in respect of the domain name
The Complainants
assert that the Respondent is not a healthcare company and is not
known by the “Parkwayâ€ﾝ
name. The Complainants see no
reason why the term “Parkwayâ€ﾝ
may be relevant to the
pornographic materials displayed at the Disputed Domain Name, and
no legitimate reason why the Respondent
should choose to register
the Disputed Domain Name.
The Complainants assert that the
arbitrary and distinctive qualities of the “Parkwayâ€ﾝ
name strongly suggest that the
Respondent did not independently arrive at the conclusion that
“parkwaygrouphealthcareâ€ﾝ
would be a good domain name for
an online pornographic website.
The Complainants also
emphasize the extensive usage and fame of the “Parkwayâ€ﾝ
trademark and the
“parkwaygrouphealthcareâ€ﾝ
corporate name.
(c)
Respondent registered and has used the domain name in bad
faith
The Complainants assert that the Respondent has
deliberately intended to use the Disputed Domain Name in order to
obtain access
to genuine customers of the Complainants as they try
to access the Complainants’ website for
information
on the Complainants, as well as to take advantage of
the Complainants’ goodwill and reputation.
The
Complainants first learned of the Respondent’s
registration of the Disputed Domain Name from a phone
call made by
one of their customers who had tried to log on to the old website
but had found himself directed to the Respondent’s
pornographic website. Shortly after, a member of the public who
was looking for job opportunities with the Complainants typed
“Parkway Group Healthcareâ€ﾝ
at the Yahoo search engine and
found herself directed to the Respondent’s
pornographic website. The New Paper
of Singapore also published a
newspaper article after another member of the public called The
New Paper hotline to complain
about the Respondent’s
pornographic website. The Complainants assert that these events
have caused much
public embarrassment to the Complainants.
The
Complainants’ Internet check on sites connected
with the Respondent shows that the Respondent maintains
several
other pornographic websites, many of which bear innocuous names
that do not suggest the true nature of the contents
of the
websites. The Complainants assert that this shows the
Respondent’s pattern of conduct in choosing
innocent sounding domain names in order to attract unwary Internet
users to its pornographic materials. The rightful owners
of such
domain names will then be prevented from using their trademarks or
corporate names as their domain names.
The Complainants
cite the examples of www.natcrafts.com and www.jococc.org, both of
which were maintained by the Respondent
as pornographic websites.
The former was originally a website promoting handcraft, and the
latter was the website of the Josephine
County Citizens Council in
Oregon, USA. A Canadian daily internet news provider,
Platinum-Celebs, also published an article
on 1 Sep 2003 about the
Respondent registering the old website of the Winter Haven police
department in Florida, USA.
The Complainants mention the
“mouse-trapping effectâ€ﾝ
on the Respondent’s
website using the Disputed Domain Name which makes leaving the
pornographic site more
difficult for casual Internet users, as
pornographic links and images continue to pop up on the user’s
screen
even after the user has left the site. The Complainants
assert that this will cause much embarrassment to and
misunderstanding
for the innocent user who had intended to access
the Complainants’ website with no intention to
access pornographic
materials.
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Respondent
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The Respondent has not responded. It has
therefore not contested the allegations of the Complaint and is in
default.
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Findings
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Identical
/ Confusingly Similar
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According to paragraph 15(a) of the Rules, "a
Panel shall decide a Complaint on the basis of the statements and
documents
submitted and in accordance with the Policy, these Rules
and principles of law that it deems applicableâ€ﾝ.
The
Respondent has not submitted a Response and has given no
explanation. Therefore, the Panel will decide the case on the
basis of the evidence submitted by the Complainants. This is in
accordance with paragraph 5(e) of the Rules which states that
“if a Respondent does not submit a Response, in
the absence of exceptional circumstances, the Panel shall
decide
the dispute based upon the Complaintâ€ﾝ.
Identical
/ Confusingly Similar
Paragraph 4(a)(i) of the Policy
requires the Complainants to establish that the Disputed Domain
Name is identical or confusingly
similar to a trademark or service
mark in which the Complainants have rights.
The Panel
accepts the assertion and evidence adduced by the Complainants
that they have rights in the registered trademark of
“Parkwayâ€ﾝ
and in the unregistered service
mark / name of “Parkway Group
Healthcareâ€ﾝ.
The
Panel is persuaded by the following:
â—¦
Complainant 2 has registered “Parkwayâ€ﾝ
as a trademark in various
countries, covering activities including hospital and medical
services as well as medical equipment
planning and supply;
â—¦
In Singapore, Complainant 2 has used the name “Parkwayâ€ﾝ
as its corporate name since
1986, and Complainant 1 has used the name “Parkway
Group Healthcareâ€ﾝ
as its corporate name since
1996;
â—¦ Complainant 1 and Complainant
2 both belong to the Parkway Group;
â—¦
The name “Parkway Group Healthcareâ€ﾝ
incorporates the registered
trademark “Parkwayâ€ﾝ
and is used to distinguish
Complainant 1 and its hospitals from the property and investment
arm of the Parkway Group; and
â—¦
Complainant 1 is one of the leading companies in its field and has
widely publicised the name “Parkway
Group
Healthcareâ€ﾝ
in its publicity materials
including printed advertisements, newsletter, name cards,
stationary, annual reports and brochures.
The Panel also
accepts that the Disputed Domain Name is confusingly similar to
unregistered service mark / name of “Parkway
Group Healthcareâ€ﾝ,
the former being different only insofar as the words “.comâ€ﾝ
is added which is of no
significance. Objectively, Internet users would associate the
Disputed Domain Name with the Complainants.
Accordingly,
the Panel finds in favour of the Complainants under this head.
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Rights
and Legitimate Interests
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Paragraph 4(a)(ii) of the Policy requires the
Complainants to demonstrate that the Respondent has no rights or
legitimate interests
in the Disputed Domain Name.
Paragraph
4(c) of the Policy provides three ways to do so:
(i) Before
any notice to Respondent of the dispute, the Respondent’s
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;
(ii) The Respondent (as
an individual, business or other organization) has been commonly
known by the domain name, even if the
Respondent has acquired no
trademark or service mark rights; or
(iii) The Respondent
is making a legitimate non-commercial 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.
The Respondent has not provided evidence of any of
the above situations. Even though the Respondent is not obliged to
do so,
as per Massachusetts Institute of Technology v. Vitty,
Inc., WIPO Case No. DBIZ2002-00241, “the
Respondent
is vulnerable to inferences that flow naturally from
the information provided by the Complainantâ€ﾝ.
In
particular, the Panel is persuaded by the following:
â—¦
The Respondent has no business in or connection to the field of
healthcare;
â—¦ The Respondent is not
known by the “Parkwayâ€ﾝ
name;
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There is no legitimate reason why “parkwaygrouphealthcareâ€ﾝ
would be a good domain name for
a pornographic website; and
â—¦
Complainant 1 was the prior registrant of the Disputed Domain Name
and the Respondent only registered
it when the prior registration
by Complainant 1 had lapsed.
Accordingly, the Panel accepts
that the Respondent has no rights or legitimate interests in the
Disputed Domain Name, and finds
in favour of the Complainants
under this head.
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Bad
Faith
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Paragraph 4(a)(iii) of the Policy requires the
Complainants to demonstrate that the Respondent has registered and
is using the
Disputed Domain Name in bad faith.
Paragraph 4(b)
of the Policy provides, inter alia, that the Complainants can do
so by showing that the Respondent, by using
the Disputed Domain
Name, has intentionally attempted to attract, for commercial gain,
Internet users to the Respondent’s
website by
creating a likelihood of confusion with the Complainants’
mark as to the source, sponsorship,
affiliation or endorsement of
the Respondent’s website.
Again, the
Respondent has not responded to the Compliant. The Panel is
prepared to accept assertions by the Complainants which
are
reasonable and supported by evidence. See Diebold, Incorporated v.
Paul Terwilliger, WIPO Case No. D2003-0416, which held
that “the
Panel can accept all reasonable allegations and inferences
submitted by the Complainant in the
absence of a responseâ€ﾝ.
In
particular, the Panel is persuaded by the following:
â—¦
Use of the Disputed Domain Name offering pornographic material
damages the Complainants’
existing marks /
names, which is evidence of bad faith. See Match Net plc. v. MAC
Trading, WIPO Case No. D2000-0205, which
held that “the
Respondent has used its website to furnish sexually explicit and
pornographic material under
the domain name and in the
circumstances, given the likelihood of confusion, there is a prima
facie case that this could tarnish
the Complainant’s
goodwill in its common law service mark.â€ﾝ
See also America Online, Inc. v.
East Coast Exotics, WIPO Case No, D2001-0661, which held that
“registration
of a domain name incorporating
another’s mark and use of that domain name for
a pornographic website has
been widely held to be registration and
use in bad faithâ€ﾝ;
â—¦
The Complainants have provided incidents of actual confusion where
members of the public tried to access
the Complainants’
website but instead found themselves in the Respondent’s
pornographic
website, causing much public embarrassment to the
Complainants;
â—¦ The Complainants have
substantiated the Respondent’s pattern of
conduct in registering
domain names previously maintained by other
organizations, thereby attracting unwary Internet users to its
pornographic materials;
â—¦ The
Respondent has incorporated a “mouse-trapping
effectâ€ﾝ
into the Respondent’s
website so that pornographic links continue to pop up on the
Internet user’s
screen even after the user has
left the site, which is evidence of bad faith. See Dell Computer
Corporation v. RaveClub Berlin,
WIPO Case No. D2002-0601, which
held that “the fact that the pornographic
website uses “mouse-trappingâ€ﾝ
techniques to prevent visitors
from leaving it clearly reinforces the bad faith use of the
disputed domain nameâ€ﾝ;
and
â—¦ The Respondent has done nothing
to rebut the presumption of bad faith raised by him picking up
lapsed
domain names and directing them to pornographic websites.
See Pedro Latorre Beroiz v. Domain Strategy, Inc., WIPO Case No.
D2002-0508, which held that “the picking up of
a lapsed domain name and directing it to a pornographic website
raises an overwhelming presumption that the registration and use
of the domain is to trade upon the confusion created with
the
Complainant’s trademark and the residual
reputation of the Complainant’s original
websiteâ€ﾝ.
Accordingly,
the Panel finds in favour of the Complainants under this head.
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