Cardinal Health, Inc. v. MARK WILSON / MARK WILSON
Claim Number: FA1704001726573
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is MARK WILSON / MARK WILSON (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardinalhealthcare.us>, registered with Domain.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2017; the Forum received payment on April 12, 2017.
On April 12, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <cardinalhealthcare.us> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2017 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@cardinalhealthcare.us. Also on April 19, 2017, 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.
A timely Response was received and determined to be complete on May 9, 2017.
On May 15, 2017, an Additional Submission was filed by Complainant.
On May 24, 2017, an Additional Submission was filed by Respondent. The submission was filed after the deadline for submissions and thus did not comply with Supplemental Rule 7 and was not considered.
On May 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Mark McCormick 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 usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the pharmaceutical industry. In furtherance of its business efforts, Complainant has registered several iterations of the CARDINAL HEALTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,960,790, registered June 7, 2005). See Compl., at Attached Ex. 2. Respondent’s <cardinalhealthcare.us> is confusingly similar to the CARDINAL HEALTH mark as the mark is incorporated completely—minus the space—with the addition of the generic suffix “care” and the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in <cardinalhealthcare.us>. Respondent is not commonly known by the terms of the domain name based on the WHOIS information on record, and due to the lack of authorization from Complainant to use its marks in commerce. Further, Respondent has used the domain name to mimic Complainant and to trade off the goodwill associated with Complainant’s mark. Respondent has adopted the same font and contrast between the word “Cardinal” and “Health” in Complainant’s mark to conjure an association with Complainant, or to pass itself off as Complainant—failing to create any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Respondent registered or used <cardinalhealthcare.us> in bad faith. Respondent’s resolving website purports to sell pharmaceutical products and nursing services which directly competes with Complainant’s offerings, demonstrating bad faith under Policy ¶ 4(b)(iii). Further, Respondent had actual or constructive knowledge, and engaged in typosquatting; both of which constitute bad faith under a nonexclusive consideration of Policy ¶ 4(a)(iii).
B. Respondent
Respondent chose the name “Cardinal Healthcare” to further the interests of a group of healthcare service businesses. Respondent does not compete with Complainant in any way. Respondent uses the domain name for his email transmissions and for his legitimate purposes at the resolving website. Respondent has extensively used social media to promote his offerings.
As for Respondent’s logo, it was merely a common-sense design using Respondent’s school colors, with the logo incorporating two cardinals in flight.
C. Additional Submission
In its additional submission, Complainant asserts that Respondent further demonstrated his bad faith by offering to sell the disputed domain name to Complainant for $1.3 million. Complainant also alleges Respondent does not dispute that he was aware of Complainant’s rights before registering the domain name and offered no evidence of a bona fide use and also asserts that Respondent does compete with Complainant’s goods and services in unlawfully disrupting Complainant’s business.
Complainant has registered its CARDINAL HEALTH mark with the USPTO. Respondent’s <cardinalhealthcare.us> mark incorporates Complainant’s mark except for the generic suffix “care” and the .us ccTLD. Respondent is not commonly known by the domain name or in the CARDINAL HEALTH mark. Nevertheless, Respondent uses the domain name to sell pharmaceutical products and services which compete with goods and services marketed by Complainant. Respondent was aware of Complainant's mark and its use at the time he registered and started using the disputed domain name to compete with Complainant’s business. Moreover the $1.3 million price requested by Respondent as the price for Complainant to acquire the mark is far beyond the value of any of his out-of-pocket costs.
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.
Complainant’s USPTO registration of its CARDINAL HEALTH mark gives it rights in the mark. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006). Respondent’s incorporation of the mark in the disputed domain name makes it confusingly similar to Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004).
Complainant has demonstrated that Complainant has satisfactorily shown its rights and that Respodnent’s domain name is confusingfly similar within the meaning of Policy ¶4(a)(i).
Because Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, the burden shifted to Respondent to prove that he has rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Respondent is not commonly known by the disputed domain name nor has he been authorized by Complainant to register it. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007). No evidence exists that Respondent has rights and legitimate interests in Complainant’s mark within the meaning of Policy ¶4(c)(i).
Complainant has established that Respondent registered and uses the disputed domain name to sell products to compete with Complainant’s products. This is a disruptive use. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015). The evidence is sufficient to show that Respondent had actual knowledge of Complainant’s rights and mark at the time he registered his domain name. This conclusion is reinforced by Respondent’s mimicking of Complainant’s logo. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007). This conclusion is also supported by Respondent’s threat to “BOT release” the disputed domain name if Complainant did not pay him $1.3 million. See Tennessee Walking Horse Celebration Ass’n v. Tennessee Walking Horse Breeders and Exhibitors’ Ass’n, No. FA1206001448966 (July 17, 2016).
Complainant has established that Respondent registered and used the domain name in bad faith within the meaning of Policy ¶4(a)(iii).
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cardinalhealthcare.us> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: May 31, 2017
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