national arbitration forum

 

DECISION

 

Carondelet Health v. ZJ c/o Yi Zhang

Claim Number: FA0706001000186

 

PARTIES

Complainant is Carondelet Health (“Complainant”), represented by Amy Sokol, of Carondelet Health, 1000 Carondelet Drive, Kansas City, MO 64114.  Respondent is ZJ c/o Yi Zhang (“Respondent”), Zhangyang 1661-2304, Shanghai CN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <carondelethealth.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of 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 June 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.

 

On June 8, 2007, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <carondelethealth.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 June 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 2007 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@carondelethealth.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 11, 2007, 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 (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.

 

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 <carondelethealth.com> domain name is confusingly similar to Complainant’s CH CARONDELET HEALTH mark.

 

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

 

3.      Respondent registered and used the <carondelethealth.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Carondelet Health, is a not-for-profit provider of health care services, continuously using the mark CARONDELET HEALTH since 1997.  In conjunction with these services, Complainant has registered the CH CARONDELET HEALTH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,263,473 issued July 20, 1999).

 

Respondent registered the <carondelethealth.com> domain name on November 2, 1999.  Respondent’s domain name resolves to a website displaying a list of commercial links, both related and unrelated to the health care field in which Complainant operates.

 

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

 

Complainant asserts rights in the CH CARONDELET HEALTH mark through registration with the USPTO.  Panels have consistently held that registration of a mark with a trademark authority sufficiently establishes rights in the mark pursuant to Policy ¶ 4(a)(i).  Accordingly, the Panel finds Complainant has established rights in the CH CARONDELET HEALTH mark through its trademark registration.  See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

The Panel finds Respondent’s <carondelethealth.com> domain name is confusingly similar to Complainant’s CH CARONDELET HEALTH mark.  Respondent’s domain differs from Complainant’s registered mark CH CARONDELET HEALTH only by omission of the prefatory initials “CH” and the addition of the generic top-level domain “.com.”  Neither of these modifications is sufficient to move Respondent’s <carondelethealth.com> domain name out of the realm of confusing similarity with Complainant’s registered mark.  See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").

 

The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Before the burden shifts to Respondent to demonstrate rights or legitimate interests in the disputed domain name, Complainant must first set forth a prima facie case demonstrating Respondent’s lack thereof.  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations); see also F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”).  Satisfied Complainant has met its initial burden, the Panel now turns to consider whether Respondent has proffered any evidence demonstrating rights or legitimate interests in the disputed domain name.

 

By failing to respond to Complainant’s allegations, the Panel may infer that Respondent holds no rights or legitimate interests in the <carondelethealth.com> domain name and assumes the only motivating factor behind Respondent’s registration of the disputed domain name was knowledge of Complainant’s CH CARONDELET HEALTH mark.  See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Compañia de Radiocomunicaciones Móviles S.A. v. Bolinhas, D2000-0915 (WIPO Oct. 5, 2000) (finding that because Respondent defaulted and did not demonstrate that it had any rights or legitimate interests, the “Panel assumes that there were no other motives for Respondent having registered the three domain names at issue but Respondent’s actual or most likely knowing of the famous or well known marks MOVICOM and BELL SOUTH”).  However, the Panel will nevertheless examine whether evidence in the record indicates Respondent possesses rights or legitimate interests in the <carondelethealth.com> domain name under Policy ¶ 4(c).

 

Given Respondent’s WHOIS information, there is nothing to suggest Respondent is commonly known by the <carondelethealth.com> domain name.  See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).  Respondent has also failed to put forth any evidence and there is no evidence in the record to suggest Respondent is licensed  to register domain names incorporating Complainant’s CH CARONDELET HEALTH mark or that Respondent is in some way associated with, affiliated with or sponsored by Complainant.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).  Accordingly, the Panel finds Respondent is not commonly known by the <carondelethealth.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Further, Respondent is using the disputed domain name to direct Internet users to a page of commercial links, both related and unrelated to the health care industry in which Complainant operates, presumably for the purpose of earning click-through fees as users attempt to reach Complainant.  Such use by Respondent does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(i) or evidence a legitimate noncommercial or fair use of the <carondelethealth.com> domain name under Policy ¶ 4(c)(iii).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also 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).

 

The Panel concludes that Complainant has met the requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s use of the <carondelethealth.com> domain as a collection of related and unrelated links to Complainant’s CH CARONDELET HEALTH mark permits the Panel to infer Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) for purposes of disrupting Complainant’s health services enterprise.  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website.  It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

Similarly, considering Respondent’s essentially complete inclusion of Complainant’s CH CARONDELET HEALTH mark, the Panel infers that use of the <carondelethealth.com> domain name to resolve to a series of links both related and unrelated to Complainant’s CH CARONDELET HEALTH mark is an attempt by Respondent to capitalize on the likelihood of confusion and association with Complainant as Internet users navigate through Respondent’s site while attempting to reach Complainant, further evidencing bad faith registration and use under Policy ¶ 4(b)(iv). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The Panel concludes that Complainant has met the requirements of 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 <carondelethealth.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  July 18, 2007

 

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