The
Claim Number: FA0806001212986
Complainant is The
Vanderbilt University (“Complainant”), represented by Natalya L. Rose of Bone McAllester Norton PLLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vanderbiltmedicalcenter.com>, registered with Nameview, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically June 27, 2008; the National Arbitration Forum received a hard copy of the Complaint July 10, 2008.
On July 4, 2008, Nameview, Inc., confirmed by e-mail to the National Arbitration Forum that the <vanderbiltmedicalcenter.com> domain name is registered with Nameview, Inc., and that Respondent is the current registrant of the name. Nameview, Inc., verified that Respondent is bound by the Nameview, Inc., registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 12, 2008, 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 postmaster@vanderbiltmedicalcenter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <vanderbiltmedicalcenter.com>, is confusingly similar to Complainant’s VANDERBILT mark.
2. Respondent has no rights to or legitimate interests in the <vanderbiltmedicalcenter.com> domain name.
3. Respondent registered and used the <vanderbiltmedicalcenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Respondent registered the <vanderbiltmedicalcenter.com> domain name December 25, 2001. Respondent’s disputed domain name resolves to a website offering links to third-party websites displaying medically related content which compete with Complainant.
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."
Given 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(e), 14(a) and 15(a) of the Rules and draw will such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
The Panel finds Complainant established rights in the VANDERBILT mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent disputed domain name, <vanderbiltmedicalcenter.com>, is confusingly similar to Complainant’s VANDERBILT mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s VANDERBILT mark with the additions of the descriptive term “medical center,” and the generic top-level domain “.com.” The Panel finds these alterations do not distinguish Respondent’s disputed domain name from Complainant’s mark. Thus, the Panel finds Respondent’s <vanderbiltmedicalcenter.com> domain name is confusingly similar to Complainant’s VANDERBILT mark pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights or
legitimate interests in the disputed domain name. Complainant is required to make a prima facie showing in support of its
allegations and then the burden shifts to Respondent to prove otherwise. The Panel finds Complainant established a prima facie case. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume Respondent lacks rights and legitimate
interests in the disputed domain name.
The Panel, however, will examine the record to determine whether facts
there show that Respondent does have such rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s
Submission constitutes a prima facie case under the Policy, the burden
effectively shifts to Respondent. Respondent’s failure to respond means that
Respondent has not presented any circumstances that would promote its rights or
legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”).
Complainant provides evidence that
Respondent’s disputed domain name resolves to a website that displays links to
competing third-party websites. The
Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and services.”);
see also Or. State Bar v. A
Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of
goods and services because Respondent is using a mark confusingly similar to
the Complainant's to sell competing goods.”).
Complainant alleges that Respondent
is not commonly known by the disputed domain name. The WHOIS information and record do not
reflect that Respondent has ever been known by the disputed domain name or
authorized to use Complainant’s VANDERBILT mark. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369
(Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to
support the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website displaying links to third-party websites advertising medically related content that directly competes with Complainant’s business. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”).
Complainant contends that Respondent profits from its use of the confusingly similar disputed domain name in the form of click-through fees. Respondent’s attempt to profit from the goodwill Complainant has established in its VANDERBILT mark is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Complainant satisfied the elements of ICANN 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 <vanderbiltmedicalcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 1, 2008.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum