national arbitration forum

 

DECISION

 

Memorial Sloan-Kettering Cancer Center v. – a/k/a John Bonk

Claim Number: FA1005001323580

 

PARTIES

Complainant is Memorial Sloan-Kettering Cancer Center (“Complainant”), represented by Cameron A. Myler, of Frankfurt Kurnit Klein & Selz, P.C., New York, USA.  Respondent is a/k/a John Bonk (“Respondent”), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mskfirst.org>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2010.

 

On May 10, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mskfirst.org> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 May 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 8, 2010 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@mskfirst.org.  Also on May 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 14, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <mskfirst.org> domain name is identical to Complainant’s MSKFIRST.ORG mark.

 

2.      Respondent does not have any rights or legitimate interests in the <mskfirst.org> domain name.

 

3.      Respondent registered and used the <mskfirst.org> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Memorial Sloan-Kettering Cancer Center, asserts common law rights in its MSKFIRST.ORG mark which has been used in connection with hospital services, and patient treatment, care and services since at least 2000. 

 

Respondent, - aka John Bonk, registered the disputed domain name in late 2009.  The disputed domain name resolves to a website providing links to information and services directed toward cancer patients, in direct competition with Complainant.

 

Complainant originally registered the <mskfirst.org> domain name in 2000 and in the fall of 2009 the registration of the disputed domain name was due to be renewed.  Complainant inadvertently failed to review the registration of the disputed domain name at that time. 

 

Complainant alleges that Respondent has been the respondent in numerous other UDRP proceedings where the disputed domain names were ordered to be transferred to the respective complainants in those cases.  See Comair Ltd. v. John Bonk, D2009-0094 (Mar. 18, 2009); see also Ticketmaster v. John Bonk, D2008-1491 (Nov. 25, 2008).

 

DISCUSSION

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 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 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.

 

Identical and/or Confusingly Similar

 

The Panel first finds that Complainant need not have a trademark registration with a governmental agency in order to establish rights in a mark.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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).

 

Complainant asserts common law rights in its MSKFIRST.ORG mark based on its use in connection with hospital services and patient treatment and care, as well as the distribution of information to patients and potential patients since 2000.  Complainant states that it originally registered the disputed domain name in 2000 in connection with these services but inadvertently allowed its registration to lapse in the fall of 2009.  Complainant states that the MSKFIRST.ORG mark has been used by Complainant in connection with hospital services in print ads, radio commercials, and paid searches.  Complainant asserts that its use of the MSKFIRST.ORG mark since 2000 in connection with life-saving services provided by Complainant to cancer patients and that Complainant’s mark has become famous and recognized worldwide by consumers as identifying Complainant’s unique goods and services.  The Panel therefore finds that Complainant, by its continuous use of its MSKFIRST.ORG mark to promote services to cancer patients, has established sufficient secondary meaning in the mark to establish common law rights in the MSKFIRST.ORG mark pursuant to Policy ¶ 4(a)(i).  See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).

 

Respondent’s <mskfirst.org> domain name is identical to Complainant’s MSKFIRST.ORG mark.  Respondent’s mark incorporates the entirety of Complainant’s mark and thus the Panel finds that Respondent’s disputed domain name is identical to Complainant’s mark.  See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”); see also Shirmax Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes. Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive rather than disjunctive sense in holding that “mere identicality of a domain name with a registered trademark is sufficient to meet the first element [of the Policy], even if there is no likelihood of confusion whatsoever”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name.  Policy ¶ 4(a)(ii) requires that Complainant first make a prima facie case in support of its allegations before the burden shifts to Respondent to prove that it does have rights and legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that, based on the allegations made in the Complaint, Complainant has established a sufficient prima facie case.  The Panel infers from Respondent’s failure to respond to these proceedings that Respondent does not have rights and legitimate interests in the disputed domain name.  See 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.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).  However, the Panel will analyze the record to determine whether Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

Complainant asserts that Respondent has never been commonly known by the disputed domain name and that Complainant has not licensed or otherwise authorized Respondent to use Complainant’s MSKFIRST.ORG mark in any matter.  The WHOIS information for the disputed domain name does not suggest that Respondent is commonly known by the disputed domain name and, therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant argues that Respondent’s disputed domain name resolves to a website providing links to information and services directed toward cancer patients, in direct competition with Complainant.  The Panel finds that Respondent’s use of the identical disputed domain name for such a purpose is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites). 

 

Complainant asserts that it originally registered the <mskfirst.org> domain name in 2000 and that in the fall of 2009 the registration of many of Complainant’s domain names were due to be renewed.  While Complainant’s <mskfirst.com> domain name was successfully renewed, it came to the attention of Complainant in late 2009 that the <mskfirst.org> domain name had not been renewed.  When Complainant attempted to renew the disputed domain name at that time it discovered that Respondent had registered the disputed domain name.  The Panel may find that Complainant’s prior registration of the disputed domain name is further evidence that Respondent lacked rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”); see also Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in numerous other UDRP proceedings where the disputed domain names were ordered to be transferred to the respective complainants in those cases.  See Comair Ltd. v. John Bonk, D2009-0094 (WIPO Mar. 18, 2009); Ticketmaster v. John Bonk, D2008-1491 (WIPO Nov. 25, 2008).  The Panel finds that Respondent’s status as respondent is several prior adverse UDRP proceedings is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Respondent’s use of the disputed domain name to display third-party links, offering services that compete with Complainant in the cancer patient treatment industry, constitutes a disruption of Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

Respondent’s uses the disputed domain name to display links to third-party websites from which Respondent presumably receives click-through fees.  The Panel finds that Respondent is using the disputed domain name to redirect Internet users seeking Complainant to Respondent’s website, from which Respondent receives click-through fees, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

The Panel also finds that Complainant’s initial registration of the disputed domain name and Respondent’s subsequent domain name registration is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mskfirst.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  June 24, 2010

 

 

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