Bureau International de Medicins Sans Frontieres; Medecins Sans Frontieres USA, Inc. v. Nizar Mawani

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Bureau International

de Medecins Sans Frontieres and Medecins Sans Frontieres USA Inc v. Nizar Mawani

Case No.

D2001-0515

1. The Parties

The Complainants are

Bureau International de Medecins Sans Frontieres of Rue de la Tourelle,

39, 1040 Brussels, Belgium and Medecins Sans Frontieres USA Inc of 6 East

39th Street, New York, New York 10016, United States.

The Respondent is Nizar

Mawani of 23 Hartford Trail, Brampton, Ontario L6W 4K2, Canada.

2. The Domain Name

and Registrar

The domain name on

which the Complaint is based is <doctorswithoutborders.com>.

The registrar with

which the domain name is registered is Network Solutions Inc of 505

Huntmar Park Drive, Herndon, Virginia 20170, USA.

3. Procedural History

3.1 The Complaint

was made pursuant to the Uniform Domain Name Dispute Resolution Policy

approved by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999 ("the Policy") in accordance with the Rules

for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN

on October 24, 1999 ("the Rules") and the WIPO Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental

Rules").

3.2 The Complaint

was received by the WIPO Arbitration and Mediation Center (the "Center")

on April 7, 2001 and, following verification of the registration of the

domain name and other details with the Registrar on April 11, 2001, the

Respondent was notified of the Complaint and the commencement of administrative

proceedings, together with a copy of the Complaint, on April 12, 2001,

both by email and post/courier. In the case of the email communications,

these were addressed to each of the parties listed in the Registrar’s

verification as the registrant (the Respondent), the administrative contact

and billing contact (Marvin Foest) and the technical contact (Role Acct,

Domain Registration, Aurora Communications Exchange Ltd). In the case

of the post/courier communications, these were sent to the postal addresses

given in the Registrar’s verification for each of these parties.

3.3 Having received

no response from the Respondent within the specified time in the Notification

of Complaint, the Center issued a Notification of Respondent Default on May

2, 2001 by email addressed to each of the parties listed in the Registrar’s

verification. Following an email from "Marvin Foest (WebbFX)" (the administrative

and billing contact) to the Center with corrected contact information for the

Respondent, the Notification of Respondent Default was resent by email on May 3, 2001,

to nizarmawani@home.com. On May 7, 2001, the Notification of the Complaint and

commencement of administrative proceedings were resent.

3.4 On May 8,

2001, the parties were notified of the appointment of the administrative

panel and the projected decision date.

3.5 In light of

the above, the Panel finds that

- The Complaint

was filed in accordance with the requirements of the Rules and the

WIPO Supplemental Rules.

- The Respondent

was properly notified of the Complaint and of its Default in lodging

a Response in accordance with the Rules, paragraph 2(a): see 3.2

and 3.3 above.

-The Panel was correctly

constituted.

- No communication has

been received from the Respondent at any time during these proceedings, although

the Panel would have been prepared to receive and consider such a communication

up to the date of finalization of the decision.

3.6 In the absence

of a response by the Respondent, the Panel now proceeds to determine

the dispute on the basis of the Complaint under paragraph 5(e) of the

Rules.

4. Factual Background

4.1 The First

Complainant is the largest independent international medical relief agency

in the world, with offices in 18 countries (Complaint, p 6). Since 1971,

the Complainant’s staff and volunteers have aided victims of armed conflict,

epidemics, and natural and man-made disasters in more than 80 countries.

In 1999, the First Complainant won the Nobel Peace Prize in recognition

of its outstanding humanitarian achievements.

4.2 The First

Complainant owns several US registered service marks comprising the words

DOCTORS WITHOUT BORDERS, Registration Numbers 1,820,094 and 2,290,906

respectively (Annexe H). The first of these registrations was registered

in 1994 by the Second Complainant in respect of "recruitment services

for medical professionals to participate in international relief projects

(class 35) and for "charitable fund raising services for international

relief projects" (in class 36), with a first use in 1981 and a first use

in commerce in 1990. The second registration, also comprising the words

DOCTORS WITHOUT BORDERS was registered by the Second Complainant in 1999,

in respect of "charitable services, namely providing emergency medical

relief and assisting victims of disasters and conflicts worldwide and

providing public awareness of populations at risk" within class 42,

with a first use in 19790 and first use in commerce in 1990. In September

2000, the Second Complainant assigned these service marks to the First

Complainant in exchange for an exclusive licence to use the service marks

within the United States (see declaration of Joelle Tanguy, Annexe I and

copy of the licence in Annexe J.) The First Complainant has also granted

its consent to the Second Complainant being a party to the present administrative

proceeding (Annexe K).

4.3 The Complainants

are also the registrants of a number of domain names that incorporate

the names "Doctors Without Borders" and "Medecins Sans

Frontieres". These include <doctorswithoutborders.org>, <doctorswithoutborders.net>

and <medecinssansfrontieres.com> and <medecinssansfrontieres.org>

(see further Annexe L). The Second Complainant has maintained a website

at <doctorswithoutborders.org> since June 12, 1997, and this displays

the service marks prominently (see Tanguy declaration, para 5, Annexe

I).

4.4 In addition,

the Complainants have provided considerable supporting material relating

to publicity that their activities have received in various forms of the

media, including newspapers, both in the USA and elsewhere (see Annexe

M). In particular, a great deal of publicity appears to have been generated

when the Complainants won the Nobel Peace Prize in 1999.

4.5 According

to the WHOIS database maintained by Network Solutions, the Respondent

is listed as the Registrant of the domain name <doctorswithoutborders.com>,

having been registered on January 27, 2000 (see Annexe A). The record

was last updated on 16 January 2001 and expires on 27 January 2004. Marvin

Foest of Web Expression, 53 Summit Avenue, Welland, Ontario L3C 4G5 Canada

is listed as the administrative and billing contact, and the technical

contact is "Role Acct, Domain Registration", Aurora Communications

Exchange Ltd of 8500 Leslie Street Suite 320, Thornhill, Ontario L3T 7M8

Canada.

4.6 The Complaint

alleges that the Complainants' US attorney first contacted the Respondent

on November 2, 2000, with a request that the domain <doctorswithoutborders.com>

should be transferred to the Complainants, subject to the latter paying

the reasonable costs of the Respondent in securing the registration. Following

further communications between the parties, the Complaint in the present

proceeding was made.

5. Parties’ Contentions

A. Complainant

The Complainants (collectively

referred to in the Complaint as the "Complainant") seek transfer

to them of the domain name <doctorswithoutborders.com>, and in support

of this contention addresses each of the elements described in paragraph

4(a) of the Policy as follows.

- With respect

to the element described in paragraph 4(a)(i), the Complainant submits

that the disputed domain name is identical to its registered service

marks DOCTORS WITHOUT BORDERS, being marks in which the Complainant

has rights.

- With respect

to the element described in paragraph 4(a)(ii), the Complainant submits

that there is no evidence of any right or legitimate interest by the

Respondent in the domain name. It states that the Respondent is in

no way affiliated with the Complainant, that it does not operate an

active web site under the domain name and that it provides no international

medical services and has no affiliations with groups providing these

services. It further asserts that there is no evidence of any use

of the domain name or any part thereof in relation to the Respondent’s

own business and website which is carried on under the name of Webfix

(Winnick Declaration, para 6, Annexe F and Exhibit C, which sets out

a copy of the <webfix.com> webiste). Finally, it alleges that

there are no defences open to the Respondent under para 4(c) demonstrating

that it has any rights or legitimate interests in the domain name.

- With respect to the element

described in paragraph 4(a)(iii) of the Policy, the Complainant submits that

the Respondent has registered and used the domain name in bad faith and that

this is evidenced in a number of ways (some of these allegations appear also

in relation to para 4(a)(ii) but are more relevant to the question of bad faith).

Thus, it is alleged that the Respondent registered the domain name after all

the publicity attending the award of the Nobel Peace Prize to the Complainant

in 1999 and that the Respondent could hardly have been unaware of this. Secondly,

it is alleged that the domain name has not been used in connection with an active

web site for more than a year and that it is open to infer bad faith from this

(citing in support Mondich, WIPO Case

No D2000-0004 and Stella D’oro, WIPO

Case No D2000-0012). Thirdly, it is alleged that the Respondent appeared

to understand that the Complainant had legitimate rights to the domain name

(Winnick Declaration, par 5, Annexe F; Annexe D). Finally, it is alleged that

the Respondent sought to sell the domain name to the Complainants for more than

the reasonable out-of-pocket expenses involved in registering and maintaining

the domain name.

B. Respondent

As noted above, the

Respondent has not filed a Response to the Complaint. Under paragraph

5(e) of the Rules, it is provided that if a Respondent does not submit

a response, in the absence of exceptional circumstances, the Panel shall

decide the dispute based on the Complaint. As no exceptional circumstances

have been brought to the Panel’s attention, it proceeds to make the findings

below on the basis of the material contained in the Complaint.

6. Discussion and

Findings

In accordance with

paragraph 4(a) of the Policy, the Complainant has the burden of demonstrating

three elements.

6.1 That the complainant

has rights in a trade or service mark with which the respondent’s domain

name is identical or confusingly similar

As noted in paragraph

4.2 above, the Complainant has provided evidence of its trade mark registrations

within the United States of America. In addition, it has registered several

domain names that incorporate the words <doctorswithoutborders>,

and has provided considerable evidence of publicity and press coverage

that its activities have received, both in the US and world press. Accordingly,

the Complainant has satisfied the first part of paragraph 4(a)(i) of the

Policy, namely that it has rights in a trade or service mark.

The next question is whether

the disputed domain name is identical or confusingly similar to the Complainant’s

mark. In this regard, the domain name and registered service marks are virtually

identical, with the only differences being the absence of spaces between the

words DOCTORS WITHOUT BORDERS and the addition of the suffix ".com".

Even if these differences were sufficient to make the domain name not identical

to the trade marks, there can be little doubt that the domain name is confusingly

similar to the Complainant’s services marks, and it is noteworthy that previous

panels have reached the same decision with respect to similar small differences:

see, for example, World Wrestling Federation Entertainment Inc v Michael

Bosman WIPO Case No D99-0001 (January

14, 2000) (worldwrestlingfederation.com and World Wrestling Federation) and

InfoSpace.com, Inc v Registrar Administrator Lew Blanck, WIPO

Case No D2000-0069 (April 3, 2000) (infospaces.com and Infospace).

In the present case, the second part of the requirements of paragraph 4(a)(i)

has therefore been satisfied.

6.2 That the Respondents

must be shown to have no rights or legitimate interests in the Domain

Name

Paragraph 4(c) of

the Policy sets out certain matters to which a Respondent can point as

demonstrating rights or legitimate interests in a disputed domain name

for the purposes of paragraph 4(a)(ii). These include:

"(i) before

any notice to you [the Respondent] 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 organisation) 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."

In the present proceeding,

there is no evidence that the Respondent has used the domain name <doctorswithoutborders.com>

in connection with any bona fide offering of goods and services (subpara

(i)). Nor is there any evidence of "demonstrable preparations"

to use the domain name in that way (subpara (i)), while it is clear that

there has been no licence or authorization given by the Complainant to

the Respondent to use the name or mark "DOCTORS WITHOUT BORDERS".

Likewise, there is

no evidence before the Panel that indicates that the Respondent has ever

carried on a business under the name "DOCTORS WITHOUT BORDERS"

or any variant of this expression, or that it has been commonly known

by that name (subparagraph (ii)).

Finally, there is

no evidence before the Panel that indicates whether any of the factors

referred to in subparagraph (iii) are applicable.

The matters referred

to in paragraph 4(c) are not an exhaustive statement of what may constitute

rights or legitimate interests in a domain name, and it is therefore open

to a Respondent to point to other evidence that may show this. In the

present proceeding, there has been no Response or evidence presented by

the Respondent, and the Panel, under Paragraph 14(b) of the Rules, is

entitled to draw from such default such inferences as it considers appropriate.

The Panel therefore concludes that the Complainant has established this

element of Paragraph 4(a) of the Policy, namely that the Respondent has

no rights or legitimate interests in the disputed domain name.

6.3 That the Respondent

registered and is using the Domain Name in bad faith

Paragraph 4(b) of

the Policy lists certain factors which, if found by the Panel to be present,

shall be evidence of registration and use of a domain name in bad faith.

This is not an exclusive list, and includes:

"(i) circumstances

indicating that you [the Respondent] have registered or you have

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 your

documented out-of-pocket costs directly related to the domain name;

or

(ii) you

have 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 you have engaged in a pattern of such

conduct; or

(iii) you

have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by

using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your 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 your web site or location or of a product or service on your

web site or location."

It will be noted that,

under paragraph 4(a)(iii) of the Policy, both registration and use of

the domain name in bad faith are required. Of the factors listed in paragraph

4(b) above, (i)-(iii) relate specifically to registration (and acquisition)

of the name, while (iv) relates to use following registration. However, in view

of the fact that these factors are stated to be inclusive, it follows that there

can be other factors that can be relied upon to point to bad faith, both in

registration and in use. In this regard, it is worth noting an early decision

of an Administrative Panel to the effect that registration in bad faith followed

by a passive holding of a domain name when there is no way in which it could

be used legitimately can amount to use in bad faith: Telstra Corporation

Ltd v Nuclear Marshmallows WIPO Case No

D2000-0003. In addition, it would be both mistaken and artificial to confine

paragraphs (i)-(iii) solely to the time of registration: presumably, it would

also be a use of a disputed domain name in bad faith to do so, after registration,

with one of the purposes outlined in those paragraphs. Support for this view

is to be found in several Panel decisions: see, for example, Estee Lauder

Inc v estelauder.com, estelauder.net and Jeff Hanna, WIPO

Case No D2000-0869 and E & J Gallo Winery v Hanna Law Firm,

WIPO Case No D2000-0615.

In the present proceeding,

the Complainant raises a number of matters that go to the questions of

registration and use in bad faith under paragraph 4(a) (iii) of the Policy

(see para 5.A above). Of these, the most significant is that the Respondent

acquired and maintained the domain name for the purpose of sale or rent

at a consideration in excess of the reasonable out of pocket expenses

of registration.

In this regard, the

Complainant refers to various communications between the parties, beginning

with an email from the Complainants’s attorney (Alison J Winnick)

to the Respondent on November 2, 2000, requesting the transfer of the

domain name (Complaint, p 12; Winnock Declaration, para 2, Annexe F; see

also Exhibit A). In an email response, the Respondent asked Winnick to

call him "to discuss what reasonable costs can be claimed" (Winnick

Declaration, para 3, Annexe F; see also Exhibit B). On November 3, 2000,

Winnick spoke with the Respondent on the telephone and he asked what the

Complainant was willing to pay to get the domain name back (Winnick Declaration,

para 3, Annexe F). Winnick states that she told him that the Complainant

would pay "his reasonable costs and expenses incurred in connection

with registering the Domain Name with NSI and transferring the Domain

Name to MSF" (Id). She goes on to relate that the Respondent

told her that he needed more than expenses because "his team"

had done a "lot of work" (unspecified) on the Domain Name (Id).

A further telephone discussion concerning payment for the transfer occurred

on 20 November 2000 (Winnick Declaration, para 7, Annexe F), and

on November 30, 2000, Winnick sent an email offering $US500 (Winnick Declaration,

para 9, Annexe F, Exhibit D). There was no response to this by the Respondent,

but in another telephone conversation initiated by Winnick on December

19, 2000, the Respondent stated that he wanted the sum of $US10,000 and

refused to detail how this sum was made up. Winnick said this was more

than the Complainant was prepared to pay and the Respondent said he would

not transfer the name (Winnick Declaration, para 10, Annexe F).

From the above, it can

be inferred that the Respondent’s purpose in registering and using the domain

name was that referred to in paragraph 4(b)(i). In support of this inference,

it is also relevant to refer to the fact that the Respondent has registered

a number of other domain names that appear to have little if any connection

to its own business which is conducted under the name "Webfix" and

<webfix.com> (see the list of names in Complaint, Annexe O). Such a bundle

of apparently unrelated registrations can be evidence from which can be inferred

a general purpose on the part of the Respondent to register and sell them at

a profit to third parties who might be assumed to have a more legitimate interest

in them, ie because they represent or resemble names under which they carry

on trade: see further Club Méditerranée v Yosi Hasidim,

WIPO Case No D2000-1350 (Dec 15, 2000)

and JP Morgan v Resource Marketing, WIPO

Case No D2000-0035 (March 23, 2000). In the present case, the list

of domain names registered by the Respondent is certainly suggestive of such

an intent, but it is by no means clear that all, or indeed any, of the names

registered are those of wellknown trade marks or service marks such as

would satisfy the requirements of paragraph 4(a)(i) of the Policy. It is alleged

in the Complaint (at p 13) that these include the names of well known religious

leaders, but it is unclear to what, if any extent, these would enjoy trade mark

rights. The main name of interest here is that of the Aga Khan (<agakhanfoundation.com>,

<agakhanuniversity.com> and <hhagakhan.com>. The others are probably

lesser known, and others again seem of a general descriptive of geographic character.

Taken on its own, there would be probably nothing sufficiently egregious in

this stockpile of domain names to justify a finding of registration and use

in bad faith under paragraph 4(b)(i). However, it does add weight to the finding

made above with respect to the offer to sell in the present proceeding, making

it easier to conclude that the offer was indeed made with the purpose described

in paragraph 4(b)(i).

The Complainant has also

submitted that a finding of bad faith can be sustained by virtue of the fact

that there has been no active use of the domain name for over a year, referring

here to previous Panel decisions in Mondich, WIPO

Case No D2000-0004 and Stella D’oro, WIPO

Case No D2000-0012). In both cases, however, there was evidence of offers

to sell at a profit within the meaning of paragraph 4(b)(i) and it does not

seem that non-use was itself relied upon as a separate basis for finding registration

and use in bad faith. Rather, it is better treated as a further factor which

supports the finding of bad faith pursuant to paragraph 4(b)(i). In the same

way, it is difficult to escape the conclusion that the Respondent’s registration

must have been effected with full knowledge of the Complainant and its international

activities, and that there was therefore no legitimate commercial or other purpose

underlying the registration. At no time during the negotiations between the

Complainant’s attorney and the Respondent did the latter seek to deny the legitimate

interest of the Complainant in the domain name. Coupled with the offer to sell

the domain name, these matters go to confirm the bad faith of the Respondent

for the purposes of paragraph 4(a)(iii) of the Policy.

6.4 Conclusions

The Panel finds that

the Complainant has established its case with respect to each of the elements

stated in paragraph 4(a) of the Policy.

7. Decision

The Administrative

Panel accordingly directs that the registration of the domain name <doctorswithoutborders.com>

should be transferred to the Complainant. In this regard, it notes that

the Complaint does not indicate which of the two Complainants this should

be. Although it has been assumed throughout this determination that the

interests of the two Complainant are identical, it will now be necessary

for them to indicate to the Registrar which of them is to become the registrant

of the domain name.

Staniforth

Ricketson

Sole Panelist

Dated: May

27, 2001