national arbitration forum

 

DECISION

 

Children's Hospital Central California v. Nikita, Gamulin

Claim Number: FA1007001337796

 

PARTIES

 

Complainant is Children's Hospital Central California (“Complainant”), represented by Thomas R. Burke, of Davis Wright Tremaine LLP, California, USA.  Respondent is Nikita, Gamulin (“Respondent”), Russia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <valleychildrens.org>, registered with Network Solutions LLC (R63-LROR).

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.

 

On July 28, 2010, Network Solutions LLC (R63-LROR) confirmed by e-mail to the National Arbitration Forum that the <valleychildrens.org> domain name is registered with Network Solutions LLC (R63-LROR) and that Respondent is the current registrant of the name.  Network Solutions LLC (R63-LROR) has verified that Respondent is bound by the Network Solutions LLC (R63-LROR) 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 July 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@valleychildrens.org.  Also on July 28, 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 August 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <valleychildrens.org> domain name is confusingly similar to Complainant’s VALLEY CHILDREN’S HOSPITAL mark.

 

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

 

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

 

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

 

FINDINGS

 

Complainant, Children's Hospital Central California, is the second largest children’s hospital in the state of California and is affiliated with more than 450 physicians.  Complainant uses its VALLEY CHILDREN’S HOSPTIAL mark in conjunction with pediatric health care services and charitable fundraising and has used the mark continuously for this purpose since 1949.  Complainant held a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its VALLEY CHILDREN’S HOSPITAL mark (Reg. No. 2,426,883 filed February 10, 2000; issued February 6, 2001) which is no longer “live.”

 

Respondent, Nikita, Gamulin, registered the disputed domain name on September 20, 2002.  The disputed domain name resolves to a website that previously displayed competing commercial links from which Respondent presumably receives click-through fees.  The disputed domain name currently resolves to a website featuring blog posts that include “hospital” and “children’s” in their titles and also includes “Children’s Hospital Central California—Pediatric Healthcare is proudly powered by WordPress.”

 

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 finds that Complainant need not establish rights based on a registered trademark and that a finding of common law rights in its VALLEY CHILDREN’S HOSPITAL mark is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); 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 VALLEY CHILDREN’S HOSPITAL mark through its continuous use of the mark in association with pediatric health services and charitable fundraising in Central California since 1985.  Complainant also provides evidence of a prior trademark registration for its VALLEY CHILDREN’S HOSPITAL mark with the USPTO (Reg. No. 2,426,883 filed February 10, 2000; issued February 6, 2001).  Complainant contends that consumers widely associate Complainant with the VALLEY CHILDREN’S HOSPITAL mark.  The Panel finds that Complainant has provided sufficient evidence to support a finding of common law rights in the VALLEY CHILDREN’S HOSPITAL mark pursuant to Policy ¶ 4(a)(i).  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name); see also Bond & Co. Jewelers, Inc. v. Texas  Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name).

 

Complainant argues that Respondent’s <valleychildrens.org> domain name is confusingly similar to Complainant’s VALLEY CHILDREN’S HOSPITAL mark.  The disputed domain name removes both the spaces between the terms in Complainant’s mark and the term “hospital,” while adding the generic top-level domain (“gTLD”) “.org.”  The Panel finds that the deletion of the term “Hospital” from Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark.  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark).  The Panel also finds that the deletion of spaces between terms in Complainant’s mark and the addition of a gTLD do not distinguish the disputed domain name from the mark as spaces are impermissible in domain names and a TLD is a required element.  See Bond & Co. Jewelers, Inc. v. Texas Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  The Panel consequently finds that Respondent’s <valleychildrens.org> domain name is confusingly similar to Complainant’s VALLEY CHILDREN’S HOSPITAL mark.

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)).  Nevertheless, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to make a complete determination regarding Respondent’s rights or legitimate interests in the disputed domain name.

 

Complainant asserts that it is not aware of any evidence suggesting that Respondent is commonly known by the disputed domain name.  The WHOIS information for the disputed domain name indicates that the registrant is “Nikita, Gamulin,” which the Panel finds is not similar to the disputed domain name.  The Panel finds that without evidence in the record to the contrary, Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant alleges that Respondent’s disputed domain name previously resolved to a website that featured commercial click-through links that competed with Complainant in the pediatric health care industry.  The Panel finds that Respondent’s prior use of the disputed domain name to profit through the display of competing third-party links was not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

 

Complainant indicates that after Respondent received a cease and desist letter from Complainant, Respondent changed the content on the website resolving from the disputed domain name.  Complainant asserts that Respondent’s disputed domain name currently resolves to a website featuring blog posts that include “hospital” and “children’s” in their titles and also includes “Children’s Hospital Central California—Pediatric Healthcare is proudly powered by WordPress.”  Complainant further asserts that Respondent’s inclusion of Complainant’s name on the resolving website creates a false suggestion that the website is legitimate and owned or sponsored by Complainant.  The Panel finds that Respondent’s attempt to pass itself off as Complainant is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent’s attempts to pass itself off as the complainant online is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).

 

Complainant alleges that after Complainant contacted Respondent about Respondent’s improper uses of the disputed domain name, Respondent offered to sell the disputed domain name to Complainant for $4,000.  Complainant indicates that Respondent also threatened to auction the disputed domain name.  The Panel finds that Respondent’s offer to sell the disputed domain name to Complainant, or auction it to the public, is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).

 

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

 

Registration and Use in Bad Faith

 

Complainant argues that when it contacted Respondent regarding Respondent’s infringing use of the disputed domain name, Respondent offered to sell the disputed domain name to Complainant for the amount of $4,000 or in the alternative, indicated that it would auction the disputed domain name to the public.  The Panel finds that Respondent’s offer to sell or auction off the disputed domain name is evidence of Respondent’s bad faith under Policy ¶ 4(b)(i).  See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Complainant asserts that Respondent previously used the disputed domain name to display third-party links that competed with Complainant.  The Panel finds that Respondent’s prior use constituted a disruption of Complainant’s business and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); 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). 

 

Complainant alleges that Respondent’s prior use of the domain name to display third-party links that competed with Complainant was Respondent’s attempt to intentionally attract Internet users for Respondent’s own commercial gain.  The Panel finds that Respondent’s attempt to use the confusingly similar disputed domain name was evidence of Respondent’s bad faith under Policy ¶ 4(b)(iv) as Respondent likely profited from the receipt of click-through fees associated with the displayed third-party links.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Asbury Auto. Group, Inc. v. Texas Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

Complainant argues that Respondent is currently using the disputed domain name to resolve to a website featuring blog posts with headings including the terms “hospital” and “children’s.”  Complainant indicates that at the bottom of the resolving website, Respondent has included the language “Children’s Hospital Central California—Pediatric Healthcare is proudly powered by WordPress” which contains Complainant’s name and implies that the resolving website is legitimately affiliated with Complainant.  The Panel finds that Respondent’s attempt to pass itself off as Complainant is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii).  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

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

 

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 <valleychildrens.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  September 2, 2010

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum