Decision for dispute CAC-UDRP-107778

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

The Complainant, founded in 2004, is one of the largest university hospitals in Europe, with more than 16,000 employees across 150 professions, focused on the healthcare of more than 337,000 patients, with special responsibility for secondary and tertiary healthcare. According to its 2024 Annual Report, the Complainant performed more than 59,600 operations and received more than 1,501,000 outpatient visits said year, from both Sweden and abroad. In 2025, and for the sixth consecutive year, the Complainant has been ranked one of the top ten hospitals in the world by Newsweek Magazine. Moreover, in 2025, Newsweek also compiled a list of hospitals that best utilize the most advanced technology in healthcare, ‘World’s Best Smart Hospitals’, being the Complainant placed thirteenth in the world.

The Complainant is the owner of the registered trademark KAROLINSKA in numerous countries. The Complainant's trademark registrations predate the registration of the disputed domain names which were registered on February 2025.

 According to the Complainant, although the disputed domain names also incorporate the gTLDs ".clinic", ".doctor", ".online" and ".site", they are confusingly similar to the KAROLINSKA mark since they fully incorporate that Complainant's mark.

 The Complainant informs that it has never authorized the Respondent to use its KAROLINSKA mark for any reason or in any manner, including in or as part of the disputed domain names. The Complainant also affirms that it is not affiliated or otherwise connected with the Respondent.

In the Complainant's view, nothing suggests that the Respondent holds any trademark rights on the term KAROLINSKA. In addition, according to the Complainant, there is no evidence that the Respondent has been commonly known by the disputed domain names in dispute or by the term KAROLINSKA.

 In particular, the results of the searches made by the Complainant with EUIPO and GOOGLE related to the term KAROLINSKA make reference to the Complainant's mark and to the Complainant's activities and not to the Respondent.

 Furthermore, the Complainant informs that an attempt to contact the Respondent was made through a cease and desist letter sent to the Respondent of the disputed domain names and that it has never received any response. The Complainant insists that, at the present time, there are no active websites associated with the disputed domain names in dispute which constitutes passive holding of the disputed domain names.

Finally, the Complainant informs to have been involved in a previous ADR proceeding with the same Respondent and related to the domain name <karolinska.hospital>. In that proceeding, the panel decided to transfer the disputed domain name to Karolinska Universitetssjukhuset

Complainant´s contentions are summarised above.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

In the case at hand the complaint relates to four disputed domain names:

1) <karolinska.clinic>

2) <karolinska.doctor>

3) <karolinska.online>

4) <karolinska.site>

According to Article 3(c) of Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), the Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In the present case the Registrar Verification has confirmed that all the disputed domain names are registered in the name of Bulent Uyanik (Bulent Uyanik). Therefore, the Panel does not see any obstacles in rendering a decision in the present case even if the complaint relates to more than one domain name.

Paragraph 4(a) of the Policy provides that to obtain the transfer of the domain name, the complainant must prove that each of the following elements is present:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the 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.

1) The Panel finds that the disputed domain names <karolinska.clinic>, <karolinska.doctor>, <karolinska.online> and <karolinska.site> are confusingly similar to the Complainant’s trademark KAROLINSKA. Many panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (see, among others, Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, WIPO Case No. D2007-0769; Société Air France v. Virtual Dates, Inc., WIPO Case No. D2005-0168 and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). This is the case in the present situation where the Complainant’s registered trademark KAROLINSKA is fully included in the disputed domain names. The additional elements, namely the gTLD ".clinic", ".doctor", ",online" and ".site" are mere technical requirements, which do not affect the identity between the signs and should be disregarded. In any event, even if the Panel were to consider the gTLD ".clinic" or ".doctor" in the assessment of the first requirement under Para. 4(a)(i) of the Policy, it is the Panel's view that the addition of these gTLD, will even increase the likelihood of association between the signs to be compared on the consumer's side. As a matter of fact, the Complainant's activity is in the field of medical operations, and the gTLD ".clinic" and ".doctor" are clearly suitable to persuade users that the disputed domain names are strictly connected with the Complainant's business (see Brunello Cucinelli S.p.A. v. Y. v. Oostendorp, CAC Case No. 101427). The Complainant therefore succeeds on the first element of the Policy.

2) Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must make out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name(s). Once such a prima facie case is made, the respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name(s). If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In this case, the Panel finds that the Complainant submitted evidence and allegations are sufficient to establish a prima facie case of the Respondent’s lack of rights and legitimate interests in the disputed domain names, also considering the fact that the Respondent had the chance to justify the registration and use of the disputed domain names, but failed to do so. According to the information provided by the Complainant, and not contested, the Respondent is not commonly known by the disputed domain names nor authorized to use the Complainant’s trademark KAROLINSKA. Furthermore, the Complainant points out that the disputed domain names are not used for a bona fide activity, because they are linked to simple error pages.

3) Taking into account the reputation and fame of the KAROLINSKA trademark and the fact that this trademark has been incorporated in its entirety in the disputed domain names, the Panel concludes that the Respondent must have known of the KAROLINSKA trademark when he registered the disputed domain names. The adoption of a well-known trademark into a domain name by someone with no apparent connection with the name suggests opportunistic bad faith (see The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113; SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). In addition, the Panel finds that in this case the Respondent's use of the domain name in dispute (i.e. passive holding) is sufficient to demonstrate bad faith use, in particular because of the reputation of the Complainant's trademark and the fact that it is not possible to conceive of any plausible good faith use of such disputed domain names by anyone other than the Complainant (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Respondent did not respond and in the absence of any evidence by the Respondent or a satisfactory and credible explanation of how the registration and use of the disputed domain names which incorporates the well-known KAROLINSKA trademark have not been in bad faith, the Panel finds that paragraph 4(a)(iii) of the Policy has also been satisfied. Furthermore, in Karolinska Universitetssjukhuset v. bulent uyanik, Bezmialem Vakif University Medical Genetics Department, WIPO Case No. D2024-4598, the panel finds registration in bad faith in a case where the same Respondent of the present procedure (Bulent Uyanik) had registered the domain name <karolinska.hospital> (extremely similar to <karolinska.clinic>). This Panel is totally in line with the conclusion rendered in the above mentioned proceeding regarding the registration in bad faith and in which it is stated that "there can be no doubt that the Respondent registered the disputed domain name in the knowledge and awareness of the Complainant’s rights. Such renown is, in any event, established independently on the record before the Panel, including in particular on the basis of the Complainant’s top ten result in the Newsweek ranking for the World’s Best Hospitals". The above case, in the Panel's view, it is important also because it shows the Respondent pattern of conduct consisting in registering domain names that incorporate well-known trademarks of others (See e.g, Valeant Pharmaceuticals International and Valeant Canada Limited v. Johnny Carpela, WIPO Case No. D2005-0786 and Alloy Rods Global, Inc. v. Nancy Williams, WIPO Case No. D2000-1392). In addition, the Complainant insists that bad faith has to be considered also due to the Respondent's lack of reaction to the cease and desist letter sent by the Complainant. In this respect the Panel confirms that the Respondent's failure to respond to the Complainant, and as a result, to provide any evidence whatsoever of any good faith registration and use of the disputed domain names is an additional indication of bad faith (see, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623, Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598, America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460).