WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Midwest Clinic a/k/a The Midwest Clinic International Band and Orchestra Conference v. Victor Gill

Case No. D2018-2556

1. The Parties

The Complainant is The Midwest Clinic a/k/a The Midwest Clinic International Band and Orchestra Conference of Westmont, Illinois, United States of America (“United States”), represented by Taft, Stettinius & Hollister, LLP, United States.

The Respondent is Victor Gill of Delhi, India.

2. The Domain Name and Registrar

The disputed domain name <midwestclinic2018.org> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2018.

The Center appointed John Swinson as the sole panelist in this matter on December 13, 2018. 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

The Complainant is Midwest Clinic a/k/a The Midwest Clinic International Band and Orchestra Conference, a company based in the United States. The Complainant runs an annual music conference. Its inaugural conference was held in 1946. From 1996 the conference has been called “the Midwest Clinic, an International Band and Orchestra Conference”. In 2018, the conference was expected to host approximately 20,000 attendees from 30 countries.

The Complainant filed a trade mark in the United States for THE MIDWEST CLINIC INTERNATIONAL BAND AND ORCHESTRA CONFERENCE on June 14, 2017 (serial number 87489206). The Complainant also claims common law rights in the MIDWEST CLINIC mark, through its operation of its annual music conference under that name since 1996 (the “Trade Mark”).

The Complainant registered domain names which incorporates the Trade Mark, being <midwestclinic.org> and <midwestclinic.com>.

The Respondent is Victor Gill, an individual of India. The Respondent did not file a Response, and consequently little information is known about the Respondent. The Respondent registered the Disputed Domain Name on May 1, 2018. The Complainant has provided evidence that the website at the Disputed Domain Name previously imitated the website associated with the Complainant’s music conference. When Internet users clicked on the link for a “Housing Request” the website at the Disputed Domain Name diverted users to a website for “Kore Conferences”. The website at the Disputed Domain Name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

Identical or Confusingly Similar

The Complainant has common law rights in the Trade Mark. The Complainant has continuously used the Trade Mark since at least 1996. The Complainant’s annual music industry conference under the name “Midwest Clinic” is well-known and well attended.

The Disputed Domain Name incorporates the Trade Mark in its entirety. The addition of the year “2018” is irrelevant to the analysis of whether the Disputed Domain Name is confusingly similar to the Trade Mark.

Rights or Legitimate Interests

The Respondent is utilizing the Complainant’s Trade Mark to divert Internet users to its website in direct competition with the Complainant.

When Internet users proceed through the process of signing up for accommodation at the website at the Disputed Domain Name, they are eventually forwarded to a website owned and operated by Kore Conferences. Based on the email address in the WhoIs search, the Respondent is affiliated with or acting on behalf of Kore Conferences. Therefore, the Respondent is utilizing the website at the Disputed Domain Name for a commercial purpose and to divert Internet users to the Respondent’s website.

Internet users are led into thinking that the website at the Disputed Domain Name is the official conference website. This is not a bona fide offering of goods and services. Further, the Respondent is not commonly known by the Disputed Domain Name.

Registered or Used in Bad Faith

The Complainant has been using the Trade Mark since 1996. This is years in advance of the Respondent’s registration of the Disputed Domain Name. The Respondent is using the website at the Disputed Domain Name to mislead Internet users into believing that the Disputed Domain Name is affiliated with the Complaint’s business.

The Respondent is using the website at the Disputed Domain Name to divert users to its website which is in direct competition with the Complainant. Therefore, the Respondent has registered the Disputed Domain Name in a clear attempt to divert Internet users to its website and away from the Complainant’s website.

B. Respondent

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

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered or is being used in bad faith.

The onus of proving these elements remains on the Complainant even though the Respondent has not filed a response.

The Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Complainant claims common law rights in the Trade Mark. In order to successfully assert common law or unregistered trade mark rights the Complainant must show that the Trade Mark has become a distinctive identifier associated with the Complainant or its goods or services (see section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case the Complainant has provided evidence that it has used the Trade Mark since at least 1996. The Complainant uses the Trade Mark in association with an annual music conference. The Panel considers that the Complainant has a sufficient reputation to demonstrate common law rights in the Trade Mark.

Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (see section 1.7 of the WIPO Overview 3.0). In this case, the Disputed Domain Name is confusingly similar to the Trade Mark. It incorporates the Trade Mark in its entirety. The addition of “2018” does not dispel the confusing similarity of the Disputed Domain Name with the Trade Mark.

For the purposes of testing confusing similarity, it is well established that the generic Top-Level Domain (“gTLD”) “.org” can be ignored.

Accordingly, the Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The website at the Disputed Domain Name is currently inactive. However, the Complainant has provided evidence that the website at the Disputed Domain Name was previously a copy of the website for its annual music conference. The website provided users with the ability to sign up for a “Housing Request”, during which the Internet users were redirected to the website at “www.koreconfences.org”. The Respondent’s email listed on the WhoIs search is “[…]@koreconferences.org”. Without any evidence to the contrary, the Panel is prepared to accept that the Respondent either registered, controls, or is otherwise associated with the “koreconfereces” domain name.

Therefore, the Respondent is using the Complainant’s Trade Mark to misleadingly redirect Internet users to his website which offers services similar to those offered by the Complainant under the Trade Mark for commercial gain. This is not consistent with a legitimate purpose.

Considering the above, the Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:

-The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services.

-The Complainant has not authorized any use of the Disputed Domain Name by the Respondent.

-The Respondent has not been commonly known by the Disputed Domain Name.

-The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.

The Respondent registered the Disputed Domain Name on May 1, 2018. This is 22 years after the Complainant commenced using the Trade Mark in connection with its music conference.

Previous UDRP panels have found that where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, a likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No.

D2012-1909 and cases cited therein). Given that the Disputed Domain Name incorporates the Trade Mark in its entirety, the Panel finds it highly unlikely that the Respondent was not aware of the Trade Mark at the time the Respondent registered the Disputed Domain Name.

This is reinforced by the Respondent’s use of the website at the Disputed Domain Name. Whilst the website at the Disputed Domain Name is currently inactive, the Complainant has provided evidence that the website at the Disputed Domain Name was previously a copy of the website for its annual music conference and yet diverted Internet users to a website owned or controlled by the Respondent.

The Panel considers that the Respondent is intentionally attempting to attract, for commercial gain users to its website by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <midwestclinic2018.org> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: December 27, 2018