DECISION

 

Rush University Medical Center v. David Howell

Claim Number: FA1911001872187

 

PARTIES

Complainant is Rush University Medical Center (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, United States.  Respondent is David Howell (“Respondent”), United States.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <rush.doctor>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 20, 2019; the Forum received payment on November 20, 2019.

 

On November 21, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rush.doctor> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rush.doctor.  Also on November 22, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On December 17, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed

The Honourable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

Complainant, Rush University Medical Center, is an academic health system that includes several hospitals. Complainant has rights in the RUSH mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,481,615, registered Aug. 28, 2001). See Compl. Ex. E. Respondent’s <rush.doctor> domain name is confusingly similar to Complainant’s mark because it wholly incorporates the RUSH mark, simply adding the “.doctor” generic top-level domain (“gTLD”).

 

Respondent has no rights or legitimate interests in the <rush.doctor> domain name. Respondent is not licensed or authorized to use Complainant’s RUSH mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to sell the disputed domain name. In addition, Respondent fails to make an active use of the disputed domain name.

 

Respondent registered and uses the <rush.doctor> domain name in bad faith because Respondent attempts to sell the disputed domain name. Additionally, Respondent has engaged in a pattern of bad faith registration and use. Furthermore, Respondent failed to make an active use of the disputed domain name. Finally, Respondent had actual knowledge of Complainant’s RUSH mark when it registered the <rush.doctor> domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1. Complainant is a United States entity that is an academic health system that includes several hospitals.

 

2. Complainant has established its trademark rights in the RUSH mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,481,615, registered Aug. 28, 2001).

 

3.  Respondent registered the disputed domain name on May 22, 2019.  

 

4. Respondent has attempted to sell the disputed domain name and has failed to make an active use of the disputed domain name.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)  the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  Respondent has no rights or legitimate interests in respect of the domain name; and

(3)  the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely Complainant submits that it has rights in the RUSH mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to acquire rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registrations for the RUSH mark with the USPTO (e.g., Reg. No. 2,481,615, registered Aug. 28, 2001). See Compl. Ex. E. Therefore, the Panel finds that Complainant has rights in the RUSH mark under Policy ¶ 4(a)(i).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RUSH mark. Complainant argues that Respondent’s <rush.doctor> domain name is confusingly similar to Complainant’s RUSH mark because it wholly incorporates the mark, simply adding a gTLD. Additions of a gTLD to a domain name that wholly incorporates a mark does not sufficiently differentiate the domain name from the mark. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). Complainant notes that the disputed domain name consists only of the RUSH mark with a “.doctor” gTLD added. Thus, the Panel finds Respondent’s disputed domain name to be confusingly similar to Complainant’s RUSH mark per Policy ¶ 4(a)(i).

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s RUSH trademark and to use it in its domain name, adding simply the “.doctor” generic top-level domain that does not negate the confusing similarity with Complainant’s trademark;

(b)  Respondent registered the disputed domain name on May 22, 2019;

(c)  Respondent has attempted to sell the disputed domain name and has failed to make an active use of the disputed domain name;

(d)  Respondent has engaged in these activities without the consent or approval of Complainant;

(e)  Complainant argues that Respondent does not have rights or legitimate interests in the <rush.doctor> domain name because Respondent is not licensed or authorized to use the RUSH mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “David Howell” as the registrant of the disputed domain name and there is no other evidence to suggest Respondent was authorized to use the RUSH mark. See Compl. Ex. A. Thus, the Panel finds that Respondent is not commonly known by the domain name per Policy  ¶ 4(c)(ii);

(f)    Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims Respondent attempts to sell the <rush.doctor> domain name.  A respondent’s attempt to sell a disputed domain name to the general public or for an amount in excess of out-of-pocket costs does not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) & (iii). See Altria Group, Inc. v. Stacey Scott / Baldwin Inc, FA1410001584163 (Forum Nov. 12, 2014) (finding that the respondent’s only use of the resolving website was to advertise the sale of the associated domain name indicated that the respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii)); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Complainant provides screenshots of Respondent’s resolving webpage and claims that the domain name is being used only to advertise the sale of the disputed domain name. See Compl. Exs. B and C. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii);

(g)   Complainant contends that Respondent fails to make an active use of the disputed domain name. Failure to make active use of a domain name may not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy  ¶¶ 4(c)(i) or (iii). See Michelin North America, Inc. v. Energie Media Group, FA 451882 (Forum Aug. 7, 2012). In Michelin North, the panel found that inactive use, or “passive holding,” of the disputed domain name by a respondent “permits the inference that [the respondent] lacks rights and legitimate interests in the domain names.” Here, Complainant provides screenshots of the disputed domain name which resolve to an inactive webpage which currently features a “parked page” notice. See Compl. Ex. B. The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy  ¶¶ 4(c)(i) or (iii).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant alleges that Respondent registered and uses the <rush.doctor> domain name in bad faith due to Respondent’s attempt to sell it. Attempts to sell a domain name may be evidence bad faith registration and use, particularly when the price is in excess of out-of-pocket costs. See Retail Royalty Company and AE Direct Co LLC v. Whois Foundation / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin, FA 1821246 (Forum Jan. 13, 2019) (“Respondent lists the disputed domain name for sale for $5,759, which is a price well in excess of out of pocket costs. Such an offering can evince bad faith under Policy ¶ 4(b)(i).”). Complainant provides a copy of an email exchange between Respondent and Complainant’s broker where Respondent offered to sell the disputed domain name for $19,999. See Compl. Ex. H. Thus, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).

 

Secondly, Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. A respondent’s pattern of registering famous third-party marks may constitute bad faith pursuant to Policy ¶ 4(b)(ii). See Blue Diamond Growers v. L Wood, FA 1464477 (Forum June 7, 2017) (finding evidence that the respondent had previously registered domain names infringing on famous third-party marks established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant claims Respondent is engaged in a pattern of registering domain names that correspond to well-known marks, including <amgen.doctor>. A copy of the World Intellectual Property Organization Administrative Panel Decision ordering the domain <amgen.doctor> transferred from Respondent to Amgen, Inc. is attached. See Compl. Ex. I. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(ii).

 

Thirdly, Complainant argues that Respondent’s fails to make an active use of  the <rush.doctor> domain name. Failure to make an active use of a domain name can indicate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”). The Panel notes that Complainant provides screenshots of the resolving parked webpage, and Complainant claims that Respondent has owned the disputed domain name for 5 months and has yet to make an active use of it. See Compl. Exs. B and C. As the Panel agrees with Complainant, the Panel finds that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).

 

Fourthly, Complainant argues that Respondent registered the <rush.doctor> domain name with actual knowledge of Complainant’s rights in the RUSH mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <rush.doctor> is apparent from the notoriety of Complainant’s trademark and from Respondent’s registration of the disputed domain name incorporating Complainant’s entire RUSH mark, merely adding a gTLD. Therefore, the Panel finds that Respondent registered the <rush.doctor> domain name with actual knowledge of Complainant’s RUSH mark, thus demonstrating bad faith per Policy ¶4(a)(iii).

 

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the Rush mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <rush.doctor> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  December 17, 2019

 

 

 

 

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