Health and Hospital Corporation of Marion County v. K Wall
Claim Number: FA1401001541656
Complainant is Health and Hospital Corporation of Marion County (“Complainant”), represented by Anthony J. Rose of Meitus Gelbert Rose LLP, Indiana, USA. Respondent is K Wall (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wishardhospital.net>, registered with GoDaddy.com, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2014; the National Arbitration Forum received payment on January 31, 2014.
On January 31, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <wishardhospital.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 February 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2014 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@wishardhospital.net. Also on February 3, 2014, 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 March 3, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Complainant’s mark:
i. Complainant owns the WISHARD mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,463,802, registered July 8, 2008).
ii. Complainant, a Municipal Corporation of the State of Indiana, has operated a hospital in downtown Indianapolis under the WISHARD mark for approximately 40 years. The hospital has been affiliated with Indiana University School of Medicine since 1909.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The <wishardhospital.net> is confusingly similar to the WISHARD mark as the domain name merely adds the term “hospital” and the generic top-level domain (“gTLD”) “.net”. The term “hospital” is not distinctive as Complainant has used the WISHARD mark in connection with a hospital in downtown Indianapolis for almost 40 years.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no rights or legitimate interest in the disputed domain name. Respondent has no authorization to use the WISHARD mark. Respondent is not commonly known by the disputed domain name.
2. Respondent’s use of the <wishardhospital.net> domain name is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
3. The <wishardhospital.net> domain name resolves to a page featuring commercial links and advertisements. The featured commercial links include World of Warcraft, Overstock Clearance, and United Airlines. See Complainant’s Exhibit C. The Panel notes that the resolving page also includes text detailing medical documentation programs apparently associated with the WISHARD hospital. Complainant refers to this content as “official looking jargon and text.”
iii. Policy ¶ 4(a)(iii)
1. Respondent’s current bad faith is evidenced by Respondent’s past pattern of cybersquatting.
2. Respondent is intentionally attempting to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s WISHARD mark as to the source or affiliation of the dispute website. Respondent has created confusion as to Complainant’s role in the resolving website, and Respondent likely commercially benefits from the resulting confusion.
3. Respondent had actual knowledge of Complainant rights in the WISHARD mark at the time Respondent registered the disputed domain name. The resolving page displays the WISHARD mark and logo. See Complainant’s Exhibit C.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Health and Hospital Corporation of Marion County, Indianapolis, IN, USA. Complainant owns USA registrations for the mark WISHARD which it asserts was first used for medical services in 1975 and for which it has continuously been used in the same manner since that time. Complaint also owns several domain names including, but not limited to, <wishardfacts.org>, <askwishard.com> and <thenewwisehard.net>.
Respondent is K Wall, Grand Cayman, Cayman Islands. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain name on or about May 5, 2011.
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, a Municipal Corporation of the State of Indiana, has purportedly operated a hospital in downtown Indianapolis under the WISHARD mark for approximately 40 years. The hospital has been affiliated with Indiana University School of Medicine since 1909. Complainant claims to own the WISHARD mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,463,802, registered July 8, 2008). Previous panels have determined that USPTO registrations demonstrate a complainant’s rights in the mark under the Policy even when the respondent does not reside in the United States. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel here finds that Complainant’s trademark registrations with the USPTO are sufficient to establish its rights in the WISHARD mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <wishardhospital.net> domain name is confusingly similar to the WISHARD mark as the domain name merely adds the term “hospital” and the gTLD “.net”. Complainant asserts that the term “hospital” is not distinctive as Complainant uses the WISHARD mark in connection with a hospital in downtown Indianapolis. Complainant’s position is supported by UDRP precedent. Specifically, in Baylor University v. SZK.com c/o Michele Dinoia, FA 0791668 (Nat. Arb. Forum Oct. 16, 2006), the panel found the <baylorhospital.com> domain name confusingly similar to the BAYLOR mark as the addition of a gTLD and the term “hospital”, which was closely associated with complainant’s medical-related services, were insufficient to negate confusing similarity. The Panel here finds that the <wishardhospital.net> domain name is confusingly similar to the WISHARD mark pursuant to Policy ¶ 4(a)(i) because the term “hospital” is not distinctive as Complainant has used the mark in connection with a hospital, and the addition of a gTLD is irrelevant in the confusingly similar analysis.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interest in the <wishardhospital.net> domain name. Complainant asserts that Respondent has no authorization to use the WISHARD mark. Further, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information indicates that “K Wall” is the registrant of the disputed domain name. Based on the WHOIS record, Complainant’s contentions, and Respondent’s failure to submit a response, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent’s use of the <wishardhospital.net> domain name is not a bona fide offering of goods or services, or a legitimate noncommercial of fair use. Complainant states that the <wishardhospital.net> domain name resolves to a page featuring commercial links and advertisements. Complainant notes that the featured advertisements include World of Warcraft, Overstock Clearance, and United Airlines. Complainant presumes that Respondent commercially benefits from the promotion of the advertisements. The Panel notes that the resolving page also includes text detailing medical documentation programs apparently associated with the WISHARD hospital. Complainant refers to this content as “official looking jargon and text.” Where respondents are likely commercially benefiting by diverting Internet users through a confusingly similar domain name, previous panels have generally found that the respondent lacks rights or legitimate interests in the disputed domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel here finds that Respondent’s use of the <wishardhospital.net> domain name to promote unrelated advertisements for Respondent’s own commercial gain is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and (iii), respectively.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s current bad faith is evidenced by Respondent’s past pattern of cybersquatting. Complainant cites previous UDRP decisions adverse to Respondent to support the claim. See Wells Fargo & Co. v. k wall a/k/a PrivacyProtect.org / Domain Admin, FA 1404146 (Nat. Arb. Forum Oct. 19, 2011); see also UniRush, LLC v. K Wall, FA 1493714 (Nat. Arb. Forum May 27, 2013). Previous panels have recognized evidence of bad faith where a respondent has a history of bad faith as demonstrated by past UDRP decisions. 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). The Panel here finds evidence of bad faith under Policy ¶ 4(b)(ii) as Complainant has included evidence of multiple adverse UDRP decisions against Respondent.
Complainant argues that Respondent is intentionally attempting to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s WISHARD mark as to the source or affiliation of the dispute website. Specifically, Complainant asserts that Respondent has created confusion as to Complainant’s role in the resolving website, and Respondent likely commercially benefits from the resulting confusion. Complainant includes a screenshot of the resolving page, which shows that the page includes Complainant’s mark and logo, text describing medical documentation programs, and advertisements to unrelated third parties including World of Warcraft, Overstock Clearance, and United Airlines. Previous panels have found evidence of bad faith under similar circumstances. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). The Panel here finds Respondent’s regsitration and use of the disptued domain name to redirect Internet users to a website that offers sponsored advertisements evidences bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wishardhospital.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 18, 2014
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