ADMINISTRATIVE PANEL DECISION

1. Parties and Contested Domain Name

The Complainant is Dr Asrar Rashid of 193 Rocky Lane, Birmingham, West Midlands, B42 1QY, UK.The Respondent is Medibyte.com Ltd of 19 Skylines, London, E14 9TS, UK.The domain name in dispute is “medibyte.com”.

2. Procedural History

The electronic version of the Complaint form was filed on-line through eResolution’s Website on 6 April 2001.  The hardcopy of the Complaint Form was received on 17 April 2001.  Payment was received on 13 April 2001.

Upon receiving all the required information, eResolution’s clerk proceeded to:

       -   Confirm the identity of the Registrar for the contested Domain Name;

       -   Verify the Registrar’s Whois Database and confirm all the required contact information for   Respondent;

       -   Verify if the contested Domain Name resolved to an active Web page;

       -   Verify if the Complaint was administratively compliant.

The inquiry led the Clerk’s Office of eResolution to the following conclusions: the Registrar is CSL GMBH, the Whois database contains all the required contact information, the contested Domain Name resolves to an active Web page and the Complaint is administratively compliant.

An email was sent to CSL GMBH by the Clerk’s Office of eResolution to obtain a copy of the Registration Agreement for medibyte.com on 12 April 2001. The requested information was received on 20 April 2001. 

The Clerk’s Office proceeded to send a copy of the Complaint Form and the required Cover Sheet in accordance with paragraph 2 (a) of the ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”).

The Clerk’s Office fulfilled all its responsibilities under paragraph 2(a) of the Rules in connection with forwarding the Complaint to the Respondent, notifying the Complainant, the concerned Registrar and ICANN on 19 April 2001. This date is the official commencement date of the administrative proceeding.

Only the emails to the administrative contact were returned “undeliverable”.  All the faxes were successful.

The Complaint, official notification and all the annexes were sent via registered mail with proof of service, to the Respondent.  According to the Canada Post tracking system, all were delivered.

On 2 May 2001, the Respondent submitted, via the eResolution internet site, his Response.  The signed version of the Response was received on 7 May 2001. 

On 9 May 2001, the Clerk’s Office contacted me, and requested that I act as panelist in this case.

On 11 May 2001, I accepted to act as panelist in this case and filed the necessary Declaration of Independence and Impartiality.

On 11 May 2001, the Clerk’s Office forwarded a user name and a password to me, allowing me to access the Complaint Form, the Response Form, and the evidence through eResolution’s Automated Docket Management System.

On 11 May 2001, the parties were notified that I had been appointed and that a decision was to be, save exceptional circumstances, handed down on 27 May 2001.

On 11 May 2001, I received by email from the Clerk’s Office a request by the Claimant to add 2 further annexes, being 2 annexes attached to an email from the Complainant to the Clerk’s Office dated 5 May 2001.

3. Factual Background

The Complainant is an individual representing an organisation by the name of Medicbyte.  It is unclear whether Medicbyte is itself a legal entity, although this information is not necessary for the purposes of this Decision. 

Medicbyte sells medical books and online courses throughout the world, but mainly in the United Kingdom.  Some of these books show Medicbyte as the publisher.

The Complainant is the owner of the trademark “Medicbyte”.  The Complainant applied to the United Kingdom Patent Office for registration of the trademark in July 2000.  Full registration was granted in January 2001.

The Respondent is Medibyte.com Limited, a limited company registered in the UK.  Since April 2000, the Respondent is the registered holder of the domain name “medibyte.com”.

4. Parties' Contentions

The Complainant contends the following:

(a)    Copy or similarity  

-     “Medicbyte” and “medibyte” are very similar.

-      Both the Complainant’s and the Respondent’s businesses target the UK medical sector, affecting the Complainant’s brand recognition and confusing doctors reading the Complainant’s advertisements in UK Medical Journals.

(b)    The Respondent has no rights or legitimate interests in “medibyte.com”  

-     Medicbyte has a UK trademark, while Medibyte.com Limited does not

-     Medicbyte.com has been registered longer than Medibyte.com

-     Medicbyte has been providing information through medicbyte.com for a longer period of time than Medibyte.com 

-     Medicbyte.com has built up brand recognition which Medibyte.com is tapping into

-     Medicbyte is represented by www.medicbyte.com while the Respondent’s company Medipass is represented by www.medibyte.com

-     Medicbyte has published books under the publisher heading Medicbyte and has an ISBN index number while Medibyte has no such index number.

(c)     “medibyte.com” has been registered and is being used in bad faith  

-      Medicbyte was advertised in the British Medical Journal (BMJ) in April 2000, Medibyte.com Limited advertised under the name Medipass.  Medibyte.com was registered on 19 June 2000.

-      In July 2000, the Complainant warned the Respondent of the similarity between Medibyte and   Medicbyte and the Respondent took no action.

-      In further email communications in February 2001, the Respondent claimed it had not heard of Medicbyte.

-      Following further warnings from the Complainant, the Respondent did not wish to mediate and continued to advertise in the BMJ.

-     The Respondent would not be able to register the trademark Medibyte because of the similarity with “Medicbyte”.

The Respondent’s contentions include the following:

(a)  similarity of name

-      “Medibyte” was chosen to reflect a medical website and the Respondent’s association with Medipass Ltd.

-       Despite extensive surveys to learn of popular medical websites, the Respondent was unaware of the existence of Medicbyte.

-      The original purpose of the website was to provide online education materials for the MRCP (II) examination.

-       The Respondent searched for the term “medibyte” to check that it did not exist and successfully registered the domain name “medibyte.com” and other similar domain names in April 2000.  The Respondent was also incorporated as a limited company.

-       The Complainant and Respondent target different sectors: the Complainant specializes in Professional Linguistic Assessment Board (PLAB) examinations, for overseas doctors, while the Respondent target UK doctors, particularly those taking the MRCP examination.

-       The Complainant does not appear to advertise in the BMJ.

(b)  Legitimate interests of the Respondent  

-       The Complainant’s trademark was applied for and granted after the Respondent acquired the  domain name “medibyte.com”.

-        Medicbyte does not have brand recognition and the medicbyte.com site has little content and few visitors.  Medibyte.com has a much higher following than Medicbyte, with 1600 registered users.

-      Medibyte.com does not offer any PLAB material, and is therefore not tapping into the Complainant’s brand recognition.

-      The fact that the Respondent does not have a ISBN number is irrelevant.  ISBN numbers are required by publishers, not websites, and the Respondent is not a publisher.

(c)  Bad faith

-         Medibyte.com was registered in April 2000, not June 2000.

-      There is no evidence that the Complainant advertised in the BMJ in April 2000.  The Respondent has not seen any further advertisement by the Complainant in the BMJ.

-      The Complainant’s trademark did not exist when the Respondent acquired the domain name “medibyte.com” and there was therefore no infringement of trademark.  This, and the fact that the Complainant and the Respondent have different markets, was pointed out to the Complainant by email and letter.

-       Although it lists MCRP books as part of its product line on its website, the Complainant does not have any books on this subject.

-       The Complainant “is attempting reverse domain name hijacking” by trying to take over Medibyte’s dominant MRCP following.

5. Discussion and Findings

The Rules state that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable” (Rule 15 (a)).

Under paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (“the Policy”), a complainant in a domain name dispute must prove:  

-      that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

-      that the respondent has no rights or legitimate interests in respect of the domain name; and

-      that the domain name has been registered and is being used in bad faith.

Are the domain names identical or confusingly similar to the Complainant’s trademark?

In my view the domain name “medibyte.com” is similar to the trademark “medicbyte.com” but not necessarily confusingly so.  Any possible confusion can be resolved by looking at what the two sites offer.   It must be noted that the domain name “medibyte.com” was registered in April 2000, before the trademark “medicbyte.com” was applied for or granted.

Furthermore, from the evidence submitted, it appears to me that, although the Complainant’s and Respondent’s websites both target the medical sector, they target different areas of that sector, in respect of customers (i.e. doctors in the UK or doctors abroad) and often different products (i.e. language courses and opposed to MRCP examinations).

Does the Respondent have any legitimate interests in respect of the domain name?

Paragraph 4(c) of the Policy sets out the following, non-exhaustive, circumstances which will be evidence demonstrating legitimate interests to the domain name:  

-      Before notice to the 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 was in connection with a bona fide offering of goods and services; or

-      the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or

-      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.

In my view the Respondent has, by demonstrating all the above circumstances, shown that it has a legitimate interest in respect of the contested domain name.  The Respondent products are targeting a specific audience of UK doctors wishing to undertake examination for Membership of the Royal College of Surgeons.  The courses are promoted by Medipass Ltd with which the Respondent has a relationship.  As the Medipass courses have a reputation and track record that is sought after, and these are being offered by the Respondent, there is a good commercial basis for the medibyte.com website.  This is an active web site which has a large number of regular visitors.

I do not accept the arguments made by the Complaint in support of his contention that the Respondent has no legitimate interests in respect of the domain name, for the following reasons:

(1)   As set out in the Policy, Medibyte.com Limited does not need a trademark to show that it has a legitimate interest in “medibyte.com” provided it shows that it has been commonly known by the domain name.  Medibyte.com Limited is the name of the Respondent’s limited company and the number of registered users of the medibyte.com website indicates to me that the Respondent is commonly known by its domain name. 

(2)   In my opinion, neither the assertion by the Complainant that “medicbyte.com” has been registered longer than “medibyte.com” or the assertion that Medicbyte has been providing information through the “medicbyte.com” website for a longer period of time than Medibyte.com, demonstrates any illegitimate use by the Respondent of the contested domain name.

(3)   The Complainant has shown no evidence that the Respondent is tapping into Medicbyte’s brand recognition.  From the Respondent’s evidence, it appears that the Complainant and the Respondent target very different customer bases and that the Respondent has a higher brand recognition than the Complainant.

(4)   The Complainant is incorrect in stating that Respondent’s company Medipass is represented by www.medibyte.com.  The Respondent is Medibyte.com Limited.  In any event, the Complainant’s point is not relevant to whether the Respondent has a legitimate interest.

(5)   The Complainant’s argument that Medicbyte has published books under the publisher heading Medicbyte and has an ISBN index number while Medibyte has no such index number again does not bear on whether the Respondent has a legitimate interest.

Has the domain name been registered and is it being used in bad faith?

Para. 4(b) of the Policy sets out the following circumstances that shall be, without limitation, evidence that domain name has been registered and used in bad faith:  

-     The primary purpose of registering or acquiring the domain name is to sell, rent or otherwise transfer the registration to the complainant who is the owner of a trademark or service mark or to a competitor of the complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

-     The respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in the corresponding domain name, provided that respondent has engaged in such conduct; or

-      The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

-      By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users to the respondent’s website 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 the respondent’s website or of a product or service on that website.

I find that none of the above circumstances arise in this case and that there is no proof of bad faith on the part of the Respondent.  In particular, in relation to the Complainant’s contentions, my findings are as follows:

(1)The Complainant has shown no evidence that Medicbyte was advertised in the British Medical Journal in April 2000.  The fact is that Medibyte.com Limited advertised the Medipass courses in the BMJ in April 2001.  In any event, these advertisements does not, in my view, evidence bad faith in themselves, especially as they are targeting different audience and offering different products.

(2)The email correspondence between the Complainant and the Respondent (Complainant’s Annex B) is not evidence of bad faith under para. 4(b) of the Policy.  In any event, the email in July 2000 from the Complainant to the Respondent  (which seems to hold out the Complainant as a customer rather than a representative of Medicbyte) makes no clear complaint about the use by the Respondent of “medibyte.com”.  The first request to the Respondent to cease use of the domain name was not made until January 2001, after the Respondent had been using the domain name for 9 months.

(3)The fact that the Respondent claimed it had not heard of Medicbyte again is not evidence of bad faith.  There is evidence (for example, the Respondent’s emails of 7 February 2001, in Complainant’s Annex B) that the Respondent visited the Medicbyte website and took a view that there was no conflict between the two.  This view taken by the Respondent seems to me reasonable in light of the Respondent’s evidence that the Medibyte organisation and website is much larger than that of Medicbyte and has a different audience and customer base.

(4)The Complainant’s evidence fails to show that the Respondent did not wish to mediate, as contended by the Complainant.

6. Conclusion

For all of the reasons set out above, I have concluded that:

the domain name “medibyte.com” is similar to the trademark of the Complainant but not necessarily confusingly so;

the Respondent has registered and is using the domain name “medibyte.com” for a legitimate reason; and

the registration of this domain name by the Respondent was not in bad faith.

7. Signature