Vitas Hospice Services, L.L.C. v. Reserved for Customers / MustNeed.com
Claim Number: FA1408001575185
Complainant is Vitas Hospice Services, L.L.C. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Reserved for Customers / MustNeed.com (“Respondent”), Taiwan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitas.net>, registered with Moniker Online Services 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 21, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <vitas.net> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@vitas.net. Also on August 22, 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 September 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant is a leading provider of hospice and related end-of-life care services.
2. Complainant owns rights in the VITAS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,561,416, registered January 18, 1994).
3. Complainant uses the VITAS mark to provide hospice and related end-of-life care services to dying and bereaved individuals.
4. The disputed <vitas.net> domain name is identical to the VITAS mark.
5. Respondent’s conduct does not establish a right or legitimate interest in the disputed domain name or conform to Policy ¶ 4(c)(i)–(iii) in any way that would confer Policy ¶ 4(a)(ii) rights.
6. Respondent has registered and used the <vitas.net> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that is a leader in providing services in hospice and related end-of-life care.
2. Complainant owns rights in the VITAS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,561,416, registered January 18, 1994).
3. The <vitas.net> domain name was registered March 14, 2002.
4. The disputed domain name resolves to a website that promotes hospice and related services that compete with Complainant’s business.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it uses the VITAS mark to provide end-of-life care and counseling services. Complainant notes the VITAS mark has been registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,817,265 registered Jan. 18, 1994). The Panel agrees that this trademark registration sufficiently establishes Policy ¶ 4(a)(i) rights in the trademark here. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s VITAS mark. Complainant claims the <vitas.net> domain name is identical to the VITAS mark, and the Panel agrees because the domain name reproduces the trademark in its entirety and the introduction of the gTLD “.net” is not considered when determining Policy ¶ 4(a)(i) identicalness and See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”)…”).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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); 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s VITAS mark and use it in its domain name in its entirety ;
(b) Respondent registered the disputed domain name on ;
(d) The disputed domain name resolves to a parking site that promotes hospice and related services that compete with Complainant’s business;Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant submits that Respondent has never been commonly known by this <vitas.net> domain name. The Panel notes that the WHOIS information lists the generic and ambiguous description “Reserved for Customers / MustNeed.com” as the registrant of record for the disputed domain name. The Panel finds that the requirement under Policy ¶ 4(c)(ii) has not been satisfied in this proceeding. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name);
(f)Complainant also claims the domain name is being used to promote competing services. The Panel notes the domain name resolves to a website promoting hyperlinks such as “Hospice Home Care” and “Elderly Care Agencies.” See Compl., at Attached Ex. F. The Panel agrees that these offerings are not bona fide under Policy ¶ 4(c)(i) and are not legitimate or noncommercial under Policy ¶ 4(c)(iii). 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)).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims that the competing advertisements promoted through the <vitas.net> domain name’s website are illustrative of an attempt to disrupt Complainant’s business in bad faith. The Panel again notes the types of advertisements viewable on the disputed domain name’s website. See Compl., at Attached Ex. F. The Panel finds these advertisements to be so competitive as to create a disruption in Complainant’s business—a sign of Policy ¶ 4(b)(iii) bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Secondly, Complainant argues that there is a likelihood for Internet users to be confused as to Complainant’s association with Respondent’s <vitas.net> domain name and underlying websites. The Panel takes note of the domain name’s website as illustrated by Exhibit F and confirms that the domain name is used predominately for purposes of promoting hyperlinks related to the types of services promoted under the VITAS mark. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Thus, the Panel finds Policy ¶ 4(b)(iv) bad faith through a likelihood of confusion.
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the VITAS mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vitas.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 18, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page