HealthSouth Corporation v. RareNames WebReg
Claim Number: FA0709001075002
Complainant is HealthSouth Corporation (“Complainant”), represented by Michael
S Denniston, of Bradley Arant Rose & White LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <healthsouth.org> (the “Domain Name”), registered with TierraNet Inc. d/b/a DomainDiscover.
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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 6, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 10, 2007.
On September 7, 2007, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <healthsouth.org> Domain Name is registered with TierraNet Inc. d/b/a DomainDiscover and that the Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 September 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 1, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on October 1, 2007.
On October 1, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant is a provider of inpatient rehabilitative healthcare
services with a large network of physicians and clinicians, operating health
care facilities throughout most of the
In view of the Respondent’s decision (see below) to stipulate to the transfer of the Domain Name, the following is a brief summary of the Complainant’s contentions. Complainant contends that the Domain Name is confusingly similar to the Complainant’s HEALTHSOUTH mark because it is identical to Complainant’s mark. Complainant also maintains that the actions of Respondent show that it registered and is using the Domain Name in bad faith. Respondent’s Domain Name resolves to a website that does nothing more than contain links to content that is unrelated to Complainant, including content that competes with Complainant’s products and services. In this sense, the Respondent operates a commercial information or directory service. These services are not bona fide, but merely direct users to other websites. The current use of the Domain Name is likely to confuse consumers and potential consumers into believing that the Respondent’s <healthsouth.org> website is operated by, approved by, or otherwise affiliated with the Complainant. On information and belief, Respondent receives click-through fees for diverting Internet users to those websites and thus is using Complainant’s marks for commercial gain. The Respondent has no rights or legitimate interests in the Domain Name. Complainant has never licensed or otherwise authorized Respondent to use its mark HEALTHSOUTH, either in domain names or otherwise. The Respondent’s practice of using the Domain Name for the purpose of diverting users to an unrelated Internet site (particularly one that links to competitors) is classic bad faith. Respondent’s registration of the Domain Name, together with evidence of other domain names it has registered, shows that it has engaged in a pattern of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Last, Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor.
The Respondent denies that it registered the Domain Name in bad faith, contending that it had no knowledge of Complainant’s asserted mark prior to receipt of the Complaint in this case. The Respondent maintains that it registers domain names that become eligible for registration through expiration and deletion. Its policy, in this regard, is to register and maintain only domain names that incorporate common words or phrases, descriptive terms, and/or words to which it considers no party has exclusive rights. Respondent contends that at the time of registration and prior to receiving the Complaint, it was unaware of Complainant’s trademark, had never received any communication from Complainant, and did not offer to sell the Domain Name registration to the Complainant.
Nevertheless, the Respondent indicates that the Domain Name is not critical to its business and, in the interest of saving the cost involved in defending its rights, the Respondent stipulates for the Panel to transfer the Domain Name to the Complainant.
Respondent has stipulated that the Domain Name be transferred to the Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 this case, the Panel observes that the Respondent has chosen to agree to the transfer of the Domain Name to Complainant, in satisfaction of Complainant’s requested remedy. Therefore, under such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel finds it to be expedient and proper to forego the traditional UDRP analysis and instead order the transfer of the Domain Name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where Respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).
Respondent has stipulated that the Domain Name be transferred to Complainant. Accordingly, it is Ordered that the Domain Name <healthsouth.org> be TRANSFERRED from Respondent RareNames, WebReg to Complainant HealthSouth Corporation.
Christopher Gibson, Panelist
Dated: October 24, 2007
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