HealthSouth Corporation v. VistaPrint Technologies Ltd
Claim Number: FA1409001581088
Complainant is HealthSouth Corporation (“Complainant”), represented by Michael S. Denniston of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <healthsouth.co>, registered with TUCOWS DOMAINS INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on September 23, 2014; the National Arbitration Forum received payment on September 23, 2014.
On September 23, 2014, TUCOWS DOMAINS INC. confirmed by e-mail to the National Arbitration Forum that the <healthsouth.co> domain name is registered with TUCOWS DOMAINS INC. and that Respondent is the current registrant of the name. TUCOWS DOMAINS INC. has verified that Respondent is bound by the TUCOWS DOMAINS INC. 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 September 23, 2014, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of October 14, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administra-tive, and billing contacts, and to postmaster@healthsouth.co. Also on Septem-ber 23, 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 October 21, 2014, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 holds registrations for the HEALTHSOUTH trademark, on file with the United States Patent and Trademark Office ("USPTO"), including Reg. No. 2,249,329, registered June 1, 1999.
Complainant uses the HEALTHSOUTH mark to identify the health care and related educational services it provides, including publications and other print materials relating to health care.
Respondent registered the <healthsouth.co> domain name on or about Sep-tember 5, 2014.
The domain name is confusingly similar to Complainant’s HEALTHSOUTH mark.
Respondent has not been commonly known by the “healthsouth” name or the <healthsouth.co> domain name.
Complainant has not authorized Respondent’s use of the HEALTHSOUTH mark.
Respondent uses the domain name to promote its own website business in an effort to profit from the misleading character of the domain name.
Respondent has also used the domain name to send an e-mail purporting to be from the President and CEO of Complainant to the CFO of Complainant fraud-ulently requesting a significant wire transfer.
Such uses of the domain name do not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has a history of registering infringing Internet domain names.
Respondent was aware of Complainant’s rights in the HEALTHSOUTH mark at the time of its registration of the domain name.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the HEALTHSOUTH trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark auth-ority, the United States Patent and Trademark Office ("USPTO"). See, for ex-ample, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010).
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Bermuda). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <healthsouth.co> domain name is substantively identical to the HEALTHSOUTH trademark. The domain name contains the entire mark, merely adding the country-code top-level domain (“ccTLD”) “.co,” which identifies Colombia. This alteration of the mark, made in creating the domain name, does not save the result from the realm of identity or confusing similarity under the standards of the Policy. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007): finding, under Policy ¶ 4(a)(i), that:
the addition of a ccTLD [to the mark of another in forming a domain name] is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the “healthsouth” name or the <healthsouth.co> domain name, and that Complainant has not authorized Respondent’s use of the HEATHSOUTH mark. Moreover, the pertinent WHOIS record identifies the domain name registrant only as “VistaPrint Technologies Ltd,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). On the point, see M. Shanken Commc’ns v. WORLDTRAVEL-ERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <healthsouth.co> domain name to profit by employing it to promote its own online business. Such use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the panel there finding that:
Respondent's use of a domain name confusingly similar to Com-plainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncom-mercial or fair use under Policy ¶ 4(c)(iii).
Complainant also alleges, again without protest from Respondent, that Respond-ent has used the e-mail suffix associated with the <healthsouth.co> domain name in an attempt to commit fraud by employing it to send an e-mail message purporting to be from the President and CEO of Complainant to its CFO request-ing a significant wire transfer. As with the other asserted employment of the domain name, this use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use under Policy ¶ 4(c)(iii).
See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Nat. Arb. Forum May 5, 2014), the panel there finding that a respondent lacked rights and legit-imate interests in a disputed domain name where that respondent used the domain name to send e-mails to various IT hardware suppliers in an attempt to impersonate a UDRP complainant in order to defraud those suppliers.
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent has been a party to several prior UDRP proceedings in which it has been found to have registered and used in bad faith domain names which were confusingly similar to the marks of others. See, for example, Solazyme, Inc. v. VistaPrint Technologies Ltd, FA 1574178 (Nat. Arb. Forum Sept. 11, 2014); and Zoetis Inc. v. VistaPrint Technologies Ltd, FA 1550102 (Nat. Arb. Forum May 5, 2014). Under Policy ¶ 4(b)(ii), this pattern of bad faith registration and use stands as evidence of bad faith registration and use of the domain name in the instant case. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009):
These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).
We are also convinced by the evidence that Respondent employs the disputed <healthsouth.co> domain name, which is substantively identical to Complainant’s HEALTHSOUTH trademark, to profit by using it to promote its own business. Under Policy ¶ 4(b)(iv), this demonstrates bad faith in the registration and use of the domain name. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. For-um June 2, 2006), the panel there finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent used a domain name that was confusingly similar to the mark of a UDRP complainant to divert to its own website Internet users searching for the website of that complainant, likely profiting in the process.
Bad faith in the registration and use of the contested domain name is also shown in Respondent’s undenied fraudulent attempt to employ it to send an e-mail pur-porting to be from the President and CEO of Complainant to the CFO of Com-plainant requesting a significant wire transfer. See National Oilwell Varco, L.P. v. Craig Wood / NOV, FA 1575951 (Nat. Arb. Forum September 22, 2014):
We are persuaded by the evidence that Respondent’s use of the <nov-inc.com> domain name to commit a commercial fraud while purporting to act in the name of Complainant, all as alleged in the Complaint, demonstrates bad faith in the registration and use of the domain name.
Finally under this head of the Policy, it is evident that Respondent knew of Com-plainant and its rights in the HEALTHSOUTH trademark at the time of Respond-ent’s registration of the <healthsouth.co> domain name. This is further proof of Respondent’s bad faith in the registration and use of the domain name. See, for example, Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum April 10, 2006).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <healthsouth.co> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 29, 2014
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