Carilion Clinic v. Jm kent
Claim Number: FA2205001994573
Complainant is Carilion Clinic (“Complainant”), represented by Michael J. Hertz of Woods Rogers PLC, Virginia, USA. Respondent is Jm kent (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carilionclinicmemorial.org>, registered with NameCheap, Inc.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 2, 2022; the Forum received payment on May 2, 2022.
On May 2, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <carilionclinicmemorial.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 May 3, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2022 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@carilionclinicmemorial.org. Also on May 3, 2022, 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 May 27, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims ownership of the CARILION mark established by its ownership of its United States of America registered service mark described below and extensive use of the mark in its healthcare business.
Complainant adds that it was originally formed in 1899 under the name Roanoke Memorial Hospital which it continued to use until changing to its present name many decades later and asserts that it is still colloquially referred to as “Memorial” or “Memorial Hospital” today.
Complainant alleges that the disputed domain name is identical and/or confusingly similar to its CARILION mark, because it contains the mark in its entirety as its initial element. Furthermore, Complainant claims that it also has rights in the word “memorial” because the word has been used in its name in the past and it is still colloquially referred to as “Memorial”
Complainant argues that the only distinction between the disputed domain name and its mark, is the addition of the generic or descriptive word “clinic” and the word “memorial” in the disputed domain name.
Regarding the element “clinic”, Complainant contends that the mere addition of a descriptive or generic term is not sufficient to differentiate the disputed domain name. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a disputed domain name contains the complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark being insufficient to differentiate one from the other).
Furthermore, Complainant states that the element “memorial” in the disputed domain name is clearly intended to create confusion by increasing the likelihood that users would make a false association of the disputed domain name with Complainant because Complainant is colloquially known as “Memorial”.
Complainant next alleges that Respondent has no right or legitimate interest in the disputed domain name because upon information and belief, Respondent is not commonly known by the disputed domain name or as “Carilion”, “Carilion Clinic”, “Carilion Clinic Memorial”, “Carilion Memorial”, or any other name containing the word “Carilion” according to the WhoIs record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy 4(c)(ii)).
Complainant furthermore asserts that it has not authorized Respondent to use the CARILION mark in any capacity, let alone obtain ownership of the disputed domain name.
Referring to a screen capture adduced in evidence in an annex to the Complaint, Complainant submits that it shows that the website that the disputed domain name resolved on April 30, 2022, was inactive, containing only sponsored listings automatically displayed by a third party, including several health care listings.
Complainant argues that such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See L-Com, Inc. v. WhoisGuard Protected / WhoisGuard, Inc., FA 1704001725239 (Forum May 3, 2017).
Complainant next argues that the disputed domain name was registered and is being used in bad faith because (a) it is being used primarily for the purpose of disrupting Carilion’s business and (b) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name or of a product or service on the disputed domain name
Respondent registered the disputed domain name on February 24, 2022, which is nearly 20 years after Complainant obtained its own domain name <carilion.org> on May 7, 2002, and over 33 years after the CARILION mark was registered by the USPTO in 1988.
Complainant contends therefore it follows that Respondent had knowledge and notice of Carilion’s rights in the CARILION mark, which is further evidenced by the fact that the disputed domain name appears to have been formed for the express purpose of tricking third parties into believing that the disputed domain name and email addresses associated therewith are affiliated with Complainant.
The screen capture adduced in evidence shows that the disputed domain name resolves to an inactive webpage, and Complainant submits that this allows the panel to find that such holding a confusingly similar domain name, is evidence of bad faith under Policy ¶ 4(a)(iii).” Oportun, Inc. v. Domain Admin / Whois Privacy Corp., FA1903001833497 (Forum April 12, 2019) (citing VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant adds that upon information and belief, in the mere two months of its existence, the disputed domain name has been used as an email address, and is currently being used to confuse and mislead Complainant’s customers and vendors into believing that the disputed domain name is associated with Complainant in order to defraud both them and Carilion out of payments actually intended for Complainant. Complainant.
Specifically alleges that Respondent has been used in a in a “phishing” scheme to successfully trick at least one third party into sending payments to Respondent rather than to Complainant. Complainant submits that this is the very essence of bad faith registration and use. See, Mantech International Corporation v. Whoisguard Protected, Whoisguard, Inc. / Larry Desmond, WIPO Case D2019-0436 (respondent used website and email addresses as scheme to pose as complainant and falsely and fraudulently order tens of thousands of dollars’ worth of merchandise from complainant’s suppliers)
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a not-for-profit health care organization, based in the United States of America and is the owner of the CARILION service mark for which it owns
· United States registered service mark CARILION, registration number 1,514,880, registered on the Principal Register on November 29, 1988 for services in international classes 42 and 39.
Complainant has an established Internet presence and its own domain name <carilion.org> registered on May 7, 2002 resolves to its main website.
The disputed domain name <carilionclinicmemorial.org> was registered on February 24, 2022, and resolves to the Registrar’s parking page which contains links to third party websites and is being used as an email address by Respondent.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provide by the Registrar in response to the request by the Forum for the details of the registration of the disputed domain name.
The Registrar confirmed that Respondent who has availed of a privacy service to conceal his identity on the published Whois, is the registrant of the disputed domain name.
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”).
Complainant has provided convincing evidence that it has rights in the CARILION mark, established by its ownership of the United States trademark registration described above.
The disputed domain name <carilionclinicmemorial.org> consists of Complainant’s mark in its entirety, in combination with the elements “clinic”, and ”memorial” together with the generic Top Level Domain (“gTLD”) extension <.org>.
Complainant’s CARILION mark is the initial, dominant and only distinctive element in the disputed domain name. The element “clinic” adds no distinguishing character, nor does the element ”memorial”.
Neither does the gTLD extension <.org> prevent a finding that the disputed domain name is confusingly similar to Complainant’s mark, because in the context of this Complaint it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name <carilionclinicmemorial.org> is confusingly similar to the CARILION mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· according to the Registrar’s WhoIs, Respondent is not known by the name “Carilion”, “Carilion Clinic”, “Carilion Clinic Memorial”, “Carilion Memorial”, or any other name containing the word “Carilion” which allows the Panel to make a finding that Respondent is not commonly known by the disputed domain name;
· Complainant has not authorized Respondent to use the CARILION mark in any capacity, let alone obtain ownership of the disputed domain name.
· the screen capture adduced in evidence in an annex to the Complaint shows that the website that the disputed domain name resolved on April 30, 2022 was inactive, containing only sponsored listings automatically displayed by a third party, including several health care listings and such use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name <carilionclinicmemorial.org>, consists of Complainant’s CARILION mark in combination with the word “clinic” which is descriptive of healthcare services and the word “memorial” which Complainant claims, albeit without any evidence of its assertion, was part of its name in the past.
It is improbable that the combination of the three elements “carilion”, “clinic” and “memorial” was chosen for any reason other than to make reference to Complainant.
This Panel accepts Complainant’s submission therefore that the disputed domain name was chosen and registered in bad faith with actual knowledge of Complainant with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the CARILION mark.
The evidence shows that the disputed domain name does not resolve to any active website but resolves to the Registrar’s parking page that contains links to third party websites including potential competitors of Complainant’s health care services.
There is an unsubstantiated allegation that it has been used to create an email account that has been used to send emails impersonating Complainant to defraud one of Complainant’s customers. In the absence of any supporting evidence, this bare assertion carries no weight.
However, given that the disputed domain name since it was clearly registered with Complainant’s mark in mind, and does not resolve to any active website, but instead resolves to the Registrar’s parking page which generates commercial links to third party websites, including links to healthcare providers, this Panel finds that the passive holding of the disputed domain name constitutes use in bad faith for the purposes of this Complaint.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint, and has not contested Complainant’s allegations.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carilionclinicmemorial.org> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: May 30, 2022
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