Gambro AB; Gambro Lundia AB / Gambro Healthcare, Inc. v. Family Health & Wellness Center, S.C.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Gambro AB,

Gambro Lundia AB and Gambro Healthcare, Inc. v. Family Health & Wellness

Center

Case No.

D2001-0447

1. The

Parties

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.

2. The

Domain Names and Registrar

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.

3. Procedural History

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.

4. Factual Background

A. Gambro's Business

and Trademark Rights

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.

B. Respondent's

Activities

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.

5. The Parties'

Contentions

A. Complainant

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.

B. Respondent

Respondent did not

respond to the Complaint, and has made no submissions to controvert the

Complainant's contentions.

6. Discussions and

Findings

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.

A. The

Domain Name is Identical Or Confusingly Similar to the GAMBRO and GAMBRO

HEALTHCARE Trademarks

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.

B. The

Respondent Does Not Have A Legitimate Interest in the Domain Names

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.

C. The Respondent

Registered and Used the Domain Name in Bad Faith

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.

7. Decision

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