Claim Number: FA0809001224412
Complainant is North Shore-Long Island Jewish Health System, Inc. (“Complainant”), represented by Holly
Pekowsky, of Amster, Rothstein & Ebenstein, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nslij.org>, registered with Wild West Domains, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2008.
On September 15, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <nslij.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 23, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 14, 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@nslij.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 16, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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:
Complainant is one of the largest healthcare systems in the
Complainant owns the domain names <nslij.com> and <northshorelij.com>.
Complainant owns a federal trademark rights in the NORTH SHORE-LIJ mark, which has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,443,693, issued June 10, 2008).
Complainant also owns and utilizes the NS-LIJ mark, and has done so since at least 1999.
Services provided to the public under the NS-LIJ mark have been extensively advertised and promoted, and have received extensive favorable press coverage, as a result of which Complainant receives billions of dollars annually in business revenues.
As a consequence of the extensive advertising and promotion of its NS-LIJ mark over a long period of years preceding Respondent’s registration of the disputed domain name, Complainant’s mark has acquired secondary meaning and Complainant has acquired valuable rights in the mark under the common law.
Respondent registered the disputed domain name on November 27, 2003, and is using the disputed domain name to resolve to an unrelated political commentary website, which also offers for sale various merchandise.
Respondent’s <nslij.org> domain name is substantively identical to Complainant’s NS-LIJ mark.
Respondent does not have any rights to or legitimate interests in the <nslij.org> domain name.
Respondent registered and uses the <nslij.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 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. 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 a 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
For Complainant to have rights in the NS-LIJ mark, it is not
necessary for it to have a registered trademark, so long as Complainant can
demonstrate sufficient common law rights through the mark’s acquisition of secondary
meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require
a trademark registration if a complainant can establish common law rights in
its mark); see also
The
Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.
In this case, Complainant has alleged operation under its NS-LIJ
mark for 11 years. It has submitted extensive
advertising and media documents displaying its marks, including the NS-LIJ mark, that date back to 1999. In light of this and the undenied allegations
of the Complaint in support of its position on the point, we conclude that Complainant
has common law rights in the NS-LIJ mark pursuant to Policy ¶ 4(a)(i) through a showing of acquired secondary meaning. See Jerry Damson, Inc. v.
Respondent’s <nslij.org> domain name contains Complainant’s entire NS-LIJ mark, omitting only the hyphen, and adding the generic top-level domain “.org.” Punctuation and top-level domain modifications to a mark are irrelevant under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.") See also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007): “[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”
Accordingly, the disputed domain name is identical to the mark in this case pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <nslij.org> domain name. From our review of the Complaint, we are satisfied that Complainant has made out a prima facie case supporting its allegations under this heading. Therefore Respondent now carries the burden to prove that it does have rights or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest in a domain is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
In light of Complainant’s prima facie showing and Respondent’s failure to respond to the Complaint, we are permitted to conclude that Respondent has no rights to or legitimate interests in the disputed domain name recognizable under the Policy. We will nonetheless examine the record to determine if there is any basis for concluding that Respondent has such rights or interests.
In this connection, we first note that the WHOIS information for the disputed domain name identifies Respondent as “FLAG.” There is no other evidence submitted by either party indicating that Respondent is commonly known by the disputed domain name or some variation thereof. Therefore we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, where the pertinent WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We also observe that there is no dispute as to Complainant’s
allegation that Respondent’s domain name resolves to a website that features
unrelated political commentary, and offers various merchandise for sale. We infer from this that Respondent intends to
receive commercial gain through this use of the domain in question, and
therefore conclude that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial use under Policy ¶ 4(c)(iii). See
Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)
(finding that a respondent’s use of a domain name to redirect Internet users to
websites unrelated to a complainant’s mark is not a bona fide use under
Policy ¶ 4(c)(i)); see also Vapor Blast Mfg. Co. v. R
& S Tech., Inc., FA 96577 (Nat.
Arb. Forum Feb. 27, 2001) (finding that a respondent’s commercial use of a contested
domain name suggests that that respondent lacks rights to or legitimate
interests in the domain).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
We have already come to the conclusion that Respondent’s disputed domain name resolves to a website that features political commentary and offers merchandise for sale having no relation to Complainant’s business. Respondent has thus created a likelihood of confusion as to the possibility that Complainant is either the source or endorser of the disputed domain name and corresponding website, so as to tarnish Complainant’s mark. The Panel also finds that this activity constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002):
While
an intent to confuse consumers is not required for a
finding of trademark infringement, intent to deceive is strong evidence of a
likelihood of confusion.
See also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding
bad faith where the domain name there in question is obviously connected with a
complainant’s well-known marks, thus creating a likelihood of confusion for a
respondent’s illicit commercial gain).
The Panel thus finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <nslij.org> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 20, 2008
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