Westchester County Health Care Corporation v. Abadaba S.A.
Claim Number: FA1105001390429
Complainant is Westchester County Health Care Corporation (“Complainant”), represented by Holly Pekowsky of Amster, Rothstein & Ebenstein, New York, USA. Respondent is Abadaba S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westchestermedicalcenter.com>, registered with Fabulous.com Pty Ltd.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2011; the National Arbitration Forum received payment on May 25, 2011.
On May 24, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <westchestermedicalcenter.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 26, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2011 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@westchestermedicalcenter.com. Also on May 26, 2011, 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 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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. Respondent’s <westchestermedicalcenter.com> domain name is identical to Complainant’s WESTCHESTER MEDICAL CENTER mark.
2. Respondent does not have any rights or legitimate interests in the <westchestermedicalcenter.com> domain name.
3. Respondent registered and used the <westchestermedicalcenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Westchester County Health Care Corporation, is a medical center which provides a range of medical services, including cardiac surgery, obstetrics and gynecology, and brain surgery, among others, and provides cancer education and translational research. Complainant has used the WESTCHESTER MEDICAL CENTER mark for over 12 years in connection with its medical, research, and health-related services. Complainant holds a trademark registration for its WESTCHESTER MEDICAL CENTER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,398,979 issued Oct. 31, 2000).
Respondent, Abadaba S.A., registered the <westchestermedicalcenter.com> domain name on November 15, 2004. The disputed domain name resolves to a directory website featuring various links to websites unrelated to Complainant’s services and websites potentially in competition with Complainant’s medical and cancer treatment services.
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.
Complainant maintains that it has established its rights in the WESTCHESTER MEDICAL CENTER mark. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the panel found that the complainant had established rights in a mark where the mark was registered with a trademark authority. See also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). Previous panels have determined that it is not necessary for a complainant to hold a trademark registration within the same country as respondent’s location or operation of business. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Here, Complainant holds a trademark registration for its WESTCHESTER MEDICAL CENTER mark with the USPTO (Reg. No. 2,398,979 issued Oct. 31, 2000). The Panel concludes that Complainant has proven its rights in the WESTCHESTER MEDICAL CENTER mark through registration with a trademark authority pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <westchestermedicalcenter.com> domain name is identical to its WESTCHESTER MEDICAL CENTER mark. The disputed domain name contains Complainant’s entire mark and only changes it by deleting the spaces between the words of the mark and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting spaces between words of mark does not adequately change the disputed domain from Complainant’s mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). Also, the Panel finds that the affixation of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that Respondent’s disputed domain name is identical to Complainant’s WESTCHESTER MEDICAL CENTER mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel determined 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). Here, Complainant has presented a prima facie case in support of its allegations against Respondent. Respondent failed to submit a response to the Complaint, which may be interpreted as a waiver to any claims of rights or legitimate interest under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel opts to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before making any determination.
Complainant argues that Respondent is not commonly known by the <westchestermedicalcenter.com> domain name. The WHOIS information identifies Respondent as “Abadaba S.A.,” which is not similar to the disputed domain name. There is also no indication that Complainant has authorized or licensed Respondent to use its WESTCHESTER MEDICAL CENTER mark within the domain name and therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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); IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s <westchestermedicalcenter.com> domain name redirects Internet users to a directory website with links to third-party websites, some related to and some unrelated to Complainant’s medical center and services. Respondent likely collects click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to lead Internet users to websites, potentially Complainant’s competitors, is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
While Complainant does not specifically make this argument, the Panel may discover that Respondent’s registration and use of the <westchestermedicalcenter.com> domain name disrupts Complainant’s business. Consumers and Internet users searching for Complainant’s medical services may find Respondent’s website and opt for the treatment and medical services provided by one of the competing third-party links instead. The Panel finds that this process is disruptive to Complainant’s medical center and business and is evidence of bad faith use and registration 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 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).
The Panel infers that Respondent receives click-through fees from the previously mentioned third-party links. Respondent’s use of Complainant’s entire WESTCHESTER MEDICAL CENTER mark within the identical domain name creates a likelihood of confusion as to Complainant’s association with the resolving website and services offered by the featured links. Respondent attempts to capitalize off this confusion by collecting click-through fees. The Panel concludes that such registration and use of the <westchestermedicalcenter.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. 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)); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <westchestermedicalcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 30, 2011
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