Geisinger Clinic v. Pham Dinh Nhut
Claim Number: FA1611001704942
Complainant is Geisinger Clinic (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mygeisnger.org>, registered with April Sea Information Technology Company Limited.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on November 29, 2016.
On November 30, 2016, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <mygeisnger.org> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2016 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@mygeisnger.org. Also on December 6, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant has rights in the GEISINGER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,362,526, registered on September 24, 1985). Respondent’s <mygeisnger.org> domain name is confusingly similar to the GEISINGER mark because it contains the mark, minus a letter “i,” combined with the generic term “my” and the generic top-level domain (“gTLD”) “.org.”
ii) Respondent is not commonly known by the <mygeisnger.org> domain name because it has not been authorized to use the GEISINGER mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains pay-per-click advertising links including health care related services.
iii) Respondent registered and uses the <mygeisnger.org> domain name in bad faith because the website is used to create a likelihood of confusion with Complainant for commercial gain by using the website to divert consumers seeking Complainant towards other companies offering health care services for profit. Respondent registered the <mygeisnger.org> domain name in bad faith because it had constructive notice of Complainant’s rights in the GEISINGER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <mygeisnger.org> domain name was created on January 26, 2007.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
The Panel notes that Complainant makes requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Vietnamese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Vietnamese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Vietnamese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Complainant believes that Respondent is capable of understanding English, based upon Respondent’s registration of the domain name at issue and his use of the domain name to re-direct consumers to English-language web sites advertising health care services in English.
Although the Panel finds that persuasive evidence has not been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language, after considering the circumstances of the present case such as the absence of the Response, no objection to the Complainant's request for the language of the proceeding being in English, etc., the Panel decides that the proceeding should be in English Pursuant to UDRP Rule 11(a).
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(f), 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 (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 claims rights in the GEISINGER mark through its registration with the USPTO (Reg. No. 1,362,526, registered on September 24, 1985) for use with health care services. As such, the Panel finds that Complainant has rights in the GEISINGER mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant alleges that Respondent’s <mygeisnger.org> domain name is confusingly similar to the GEISINGER mark because it contains the mark, minus a letter “i,” combined with the term “my” and the gTLD “.org.” Complainant claims that the term “my” is generic and, therefore, inconsequential. As the Panel agrees, it finds the <mygeisnger.org> domain name confusingly similar to the GEISINGER mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
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 (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 (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 maintains that Respondent is not commonly known by the <mygeisnger.org> domain name because it has not been authorized to use the GEISINGER mark. As the Panel finds a lack of evidence to the contrary, it finds that Respondent has not been commonly known by the domain name according to Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant contends that Respondent fails to use the <mygeisnger.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website contains pay-per-click advertising links including health care related services. Complainant has provided a screenshot of the resolving page to demonstrate this use. As the Panel finds this evidence sufficient, it agrees that Respondent fails to use the <mygeisnger.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Complainant urges that Respondent registered the <mygeisnger.org> domain name in bad faith because the choice to register the domain name demonstrates awareness of Complainant’s GEISINGER mark. Complainant notes that it owns a <mygeisinger.org> domain name and argues that because the disputed domain name is so similar to such, Respondent was aware of Complainant’s rights. However, the Panel does not find this sufficient to show that Respondent had actual knowledge of the GEISINGER mark at the time it registered the <mygeisnger.org> domain name.
Complainant claims that Respondent uses the <mygeisnger.org> domain name in bad faith because the website is used to create a likelihood of confusion with Complainant for commercial gain. Complainant has provided a screenshot of the resolving page to demonstrate that Respondent is purportedly using the website to divert consumers seeking Complainant towards other companies offering health care services for profit. The Panel finds this evidence sufficient to show that Respondent is attempting to profit through confusion, and thus it finds that Respondent registered and uses the domain name in bad faith. See Staples, Inc. and Staples the Opffice Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mygeisnger.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: January 10, 2017
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