Henry Ford Health System v. Domain For Sale Inc.
Claim Number: FA0203000105976
Complainant is Henry Ford Health System, Detroit, MI (“Complainant”) represented by Whitni Suarez, of MedSeek. Respondent is Domain For Sale Inc., Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <henryfordhospital.com>, registered with eNom.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 21, 2002; the Forum received a hard copy of the Complaint on March 25, 2002.
On March 22, 2002, eNom confirmed by e-mail to the Forum that the domain name <henryfordhospital.com> is registered with eNom and that Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 16, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.” 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.
1. The disputed domain name <henryfordhospital.com> is identical to the name of Complainant’s hospital. Complainant holds a registered service mark in HENRY FORD.
2. Respondent has linked the disputed domain name to <abortionismurder.org>, which tarnishes the reputation of Complainant and Complainant’s mark. Furthermore, Respondent has offered to sell the disputed domain name to Complainant for $985. Finally, Respondent has never been commonly known as HENRY FORD HOSPITAL. Therefore, Respondent does not have any rights or legitimate interests in the disputed domain name.
3. By redirecting Internet users to a website that tarnishes Complainant’s mark and by attempting to sell the disputed domain name for $985, Respondent has registered and used the disputed domain name in bad faith.
No Response was submitted.
Since 1915, Complainant has been providing medical services for the Detroit, MI metropolitan community as HENRY FORD HOSPITAL. Complainant has been recognized as a leader in research in medicine. Among its accomplishments, Complainant developed Detroit’s first Mohs micrographic surgery, a procedure to remove skin cancers in 1967; in 1985, Complainant performed Detroit’s first heart transplant; and in 1995, Complainant performed the first lung transplant in Detroit. Complainant registered the HENRY FORD mark with the United States Patent and Trademark Office on July 8, 1997 (Reg. No. 2,077,011).
Respondent registered the disputed domain name <henryfordhospital.com> on February 14, 2002. Respondent has linked the disputed domain name to <abortionismurder.org>, a website that offers images that tarnish and diminish Complainant’s reputation. According to the Complaint, Respondent offered to sell the disputed domain name to Complainant for $985.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has established its rights to the HENRY FORD mark by registering the mark with the USPTO and subsequent continuous use in relation to hospital care. The disputed domain name <henryfordhospital.com> is confusingly similar to Complainant’s HENRY FORD mark.
Even though the disputed domain name does not incorporate the spaces of Complainant’s famous mark, the disputed domain name is confusingly similar to Complainant’s famous mark. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Because Respondent incorporates Complainant’s mark in its entirety and merely adds the generic term “hospital,” the disputed domain name <henryfordhospital.com> is confusingly similar to Complainant’s HENRY FORD mark. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the Complainant’s marks with the domain name, consumers will presume the domain name is affiliated with the Complainant; the Respondent is attracting Internet users to a website, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or endorsement of the Respondent’s website); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response. Therefore the Panel may presume that Respondent has no rights or legitimate interests in <henryfordhospital.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Since a Response was not filed, the Panel will presume that all allegations in the Complaint are true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Respondent registered a domain name that is confusingly similar to Complainant’s mark. Respondent has linked this domain name to <abortionismurder.org>. Respondent has not provided any information that it has a connection with the “abortion is murder” website, a website that displays offensive images that could tarnish Complainant’s reputation as a leader in hospital care in Michigan. Finally, Respondent offered to sell the disputed domain name to Complainant for $985. Therefore, the Panel may infer that Respondent has used the disputed domain name to tarnish Complainant’s mark and Respondent’s true motivation is not to use the disputed domain name, but to sell it to Complainant. These actions can be considered anything but a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to an “Abortion is Murder” website and subsequently asking for compensation beyond out-of-pocket costs to transfer the domain name, Respondent has not demonstrated a right or legitimate interest in the disputed domain name); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).
According to the evidence presented, Complainant is known as “John Barry” and “Domain For Sale Inc.” Since Respondent has not presented any evidence that it is commonly known as <henryfordhospital.com>, Respondent has failed to satisfy Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Respondent registered the disputed domain name that is similar to both Complainant’s mark and Complainant’s business. Respondent has used the disputed domain name to redirect users to a website that offers offensive images. Respondent is known as “Domain For Sale Inc.,” and has offered to sell the disputed domain name to Complainant for $985. Such actions taken by Respondent do not demonstrate a legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Based on Respondent’s name “Domain For Sale Inc.,” the Panel can infer that Respondent registered the disputed domain name in bad faith. See Parfums Christain Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS registration information contained the words, “This is domain names is for sale.”). However, considering that Respondent registered a confusingly similar domain name, linked it to a website that tarnishes Complainant’s business and mark, and requested $985 from Complainant to end the activity, Respondent’s actions can be considered extortion. Therefore, these predatory activities by Respondent are evidence that Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Ingram Micro Inc v. Noton Inc., D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where Respondent attempted to blackmail the Complainant into buying the disputed domain names with threats of exposure to the media and adverse publicity to the Complainant’s employees and customers).
By registering the disputed domain name, Respondent has prevented Complainant from reflecting its mark in the corresponding domain name. Further, Respondent has been involved in a pattern of such activity. See Sears, Roebuck and Co. v. Barry, FA 105210 (Nat. Arb. Forum Apr. 1, 2002) (finding that by linking <searsrobuck.com> and <searsdepartmentstore.com> to <abortionismurder.org>, Respondent had an intent to sell the disputed domains name and thus, registered the disputed domains in bad faith); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith). Therefore, Respondent has registered the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of conduct where Respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Finally, because of the predatory nature of Respondent’s actions in relation and use of the disputed domain name, the Panel concludes that Respondent has used the disputed domain name in bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <henryfordhospital.com> domain name be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: April 30, 2002
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