Iowa Health System d/b/a UnityPoint Health v. Dmytro Kalach
Claim Number: FA1707001741717
Complainant is Iowa Health System d/b/a UnityPoint Health (“Complainant”), represented by Brandon W. Clark of McKee, Voorhees & Sease PLC, Iowa, USA. Respondent is Dmytro Kalach (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trmc.org>, registered with GoDaddy.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.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 26, 2017; the Forum received payment on July 26, 2017.
On July 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <trmc.org> 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 August 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@trmc.org. Also on August 1, 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 August 17, 2017.
On August 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Iowa Health System d/b/a UnityPoint Health, is a nonprofit healthcare organization. In connection with this business, Complainant submits to use the TRMC mark to promote its goods and services. Complainant argues having common law rights in the TRMC mark based upon secondary meaning given to the mark. Complainant submits that the <trmc.org> domain name is identical or confusingly similar to its common law mark TRMC.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name. Complainant submits that Respondent is not commonly known by <trmc.org> nor has Complainant authorized Respondent to use the TRMC mark. Further, Complainant claims that Respondent failed to use <trmc.org> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Instead, Respondent diverts Internet users otherwise seeking Complainant to Respondent’s resolving website, according to complainant.
Finally, Complainant maintains that Respondent registered and uses <trmc.org> in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users through the creation of a likelihood of confusion between Complainant and Respondent.
B. Respondent
Respondent submits that it was unable to find evidence that TRMC exists as a trademark. Respondent also argues that it uses the <trmc.org> domain name and the website associated to it for informational purposes on medical insurance and similar services. Respondent claims it is neither collecting information about users, nor using the <trmc.org> domain name for fraudulent activities.
Complainant, Iowa Health System d/b/a UnityPoint Health, is a nonprofit healthcare organization. One of Complainant’s hospitals is the Trinity Regional Medical Center, located in Fort Dodge, Iowa. Complainant designates the Trinity Regional Medical Center by its acronym “TRMC”. Complainant admits it had registered the <trmc.org> domain name on January 7, 2000, but let the domain name registration lapse.
Respondent is the current registrant of the <trmc.org> domain name. The domain name currently does not resolve. The domain name used to be linked to a website containing information on medical insurance, and purportedly requesting donations for Complainant.
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 asserts common law rights in the TRMC mark. Registration of a trademark is unnecessary to establish rights per Policy ¶ 4(a)(i) where a complainant can provide evidence of secondary meaning instilled within a mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding, “Complainant has provided evidence of secondary meaning by providing evidence of length of use in the mark; evidence of holding an identical domain name; media recognition; and promotional material/advertising (including letterhead and business cards). Complainant has used its mark in the oil and gas industry since 1997. Complainant has used its mark in the real estate industry since 2004. Complainant’s rights were previously recognized in Klabzuba Oil & Gas, Inc. v. ross micheal, Claim Number: FA1505001619813.”). Here, Complainant asserts that it was the original owner of the <trmc.org> domain name, having registered it January 7, 2000, and provides screenshot evidence of the historical resolving website from May 2013, as well as advertising of the TRMC mark. See Compl., at Attached Ex. 3, 4, 6. The Panel agrees with Complainant and finds Complainant has established secondary meaning in—and therefore has common law rights to—the TRMC mark, which the Panel considers being identical to the <trmc.org> domain name.
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.”).
First, Complainant argues Respondent is not commonly known by <trmc.org> nor has Complainant authorized Respondent to use the TRMC mark. Where there is no evidence in the record indicating a respondent is commonly known by a disputed domain name, WHOIS information can substantiate a finding that a respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Where there is no evidence in the record indicating a complainant’s authorization of a respondent’s use, past panels have found said respondent to not be commonly known by the disputed domain name. 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). The WHOIS information of record names “Dmytro Kalach” as the registrant of the <trmc.org> domain name and Complainant asserts it did not authorize Respondent to use the TRMC mark. The Panel therefore finds Respondent is not commonly known by the disputed domain name.
Next, Complainant argues Respondent failed to use <trmc.org> in connection with a bona fide offering of goods and services or for a legitimate noncommercial or otherwise fair use. Use of a disputed domain name to divert Internet users otherwise seeking a complainant to a respondent’s website for said respondent’s benefit does not represent a bona fide offer per Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel considers that Respondent has been using the disputed domain name to divert Internet users otherwise seeking Complainant to Respondent’s resolving website. The content of the website gave the impression that a connection exists between Complainant and Respondent, whereas no such connection exists. See Compl., at Attached Ex. 3, 5. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the <trmc.org> domain name in bad faith as Respondent intentionally attempts to attract, for commercial gain, Internet users through the creation of a likelihood of confusion between Complainant and Respondent. Use of a disputed domain name to attract Internet users otherwise seeking a complainant to a respondent’s website for respondent’s gain evinces a finding of bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant asserts Respondent uses Complainant’s marks throughout the domain name and resolving website in an effort to create confusion for Internet users visiting the website who may believe Complainant still operates it. See Compl., at Attached Ex. 3, 5. The Panel agrees and considers Respondent’s attempt to impersonate Complainant to be evidence of Respondent’s bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <trmc.org> domain name be TRANSFERRED from Respondent to Complainant.
Flip Jan Claude Petillion, Panelist
Dated: September 5, 2017
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