Cerner Corporation v. Domain Privacy Group
Claim Number: FA1307001512608
Complainant is Cerner Corporation (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon, Missouri, USA. Respondent is Domain Privacy Group (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cernermexico.com>, registered with DOMAIN.COM, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2013; the National Arbitration Forum received payment on August 1, 2013.
On Aug 1, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <cernermexico.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the DOMAIN.COM, LLC 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 August 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2013 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@cernermexico.com. Also on August 1, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
Complainant’s Contentions
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <cernermexico.com> domain name on May 15, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its CERNER mark.
2. Respondent’s <cernermexico.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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.
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.”).
Complainant uses the CERNER mark to provide business consulting and software services to businesses in the healthcare industry. Complainant states that it has registered the CERNER mark with the USPTO (e.g., Reg. No. 1,458,174 registered September 22, 1987). The Panel finds this USPTO registration to be sufficient evidence of Complainant’s rights in the mark as Respondent apparently resides in the United States as well. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant next argues that Respondent has registered the confusingly similar <cernermexico.com> domain name. Complainant argues that the domain name merely adds the gTLD “.com” and the geographic term “mexico” to Complainant’s trademark. The Panel agrees that the gTLD is irrelevant to this analysis. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). In AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) the panel concluded that the addition of a geographic term to a registered mark enhances the confusing similarity of the domain name. The Panel therefore finds that the <cernermexico.com> domain name is confusingly similar to the CERNER mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has not been commonly known by the <cernermexico.com> domain name, and Complainant notes that the WHOIS record illustrates that Respondent is “Domain Privacy Group.” Complainant states that it has not otherwise authorized or licensed Respondent’s use of Complainant’s mark in the domain name. The Panel agreess that there is no basis in the record to find that Respondent is commonly known by the <cernermexico.com> domain name under Policy ¶ 4(c)(ii). See 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 next argues that Respondent uses the <cernermexico.com> domain name to pass itself off as a Mexico-based branch of Complainant. Complainant claims that the domain name’s website features the CERNER mark explicitly in promoting a variety of healthcare and computer services that compete directly with Complainant’s business under the CERNER mark. The Panel notes that the <cernermexico.com> domain name’s resolving website promotes itself as “Cerner Mexico” and provides descriptions of the services it purportedly offers. See Complainant’s Ex. 2F. In Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) the panel agreed that a respondent’s scheme to pass itself off as the complainant generated neither a Policy ¶ 4(c)(i) bona fide offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel agrees that Respondent’s efforts to present itself as “Cerner Mexico” represent a clear attempt at “passing off” that illustrates neither a Policy ¶ 4(c)(i) bona fide commercial offering, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent’s use of this <cernermexico.com> domain name to run a competing business illustrates an attempt to disrupt Complainant’s business. The Panel notes that Respondent purports to offer its own consulting services through the domain name, whilst using the CERNER mark. See Complainant’s Ex. 2F. In Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) the panel agreed that the use of a confusingly similar domain name to offer competing services served as evidence of Policy ¶ 4(b)(iii) bad faith disruption. The Panel agrees that Respondent’s use of the contested domain name to operate a competing business under the CERNER mark evidences Policy ¶ 4(b)(iii) bad faith.
Complainant next argues that Respondent’s use of this confusingly similar domain name in connection with a “passing off” scheme illustrates Respondent’s intent to confuse Internet users into believing that Complainant sponsors or operates the content viewable on the <cernermexico.com> domain name’s websites. The Panel notes that the domain name’s resolving website features the CERNER mark in promoting Respondent’s own purported business, while using descriptions and stories that refer explicitly to Complainant. See Complainant’s Ex. 2F. The Panel concludes that Respondent’s bad faith use and registration may be based upon Policy ¶ 4(b)(iv), as Respondent is capitalizing on the likelihood that Internet users will mistakenly believe they are dealing with Complainant. See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant also asserts that Respondent had actual knowledge of Complainant’s rights when registering the <cernermexico.com> domain name, as evidenced by Complainant’s explicit use of the CERNER mark in the domain name’s website. Complainant also claims that Respondent should be found to be on constructive notice of Complainant’s trademark registrations. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights at the time Respondent registered the disputed domain name. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cernermexico.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated September 10, 2013
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