Rush University Medical Center v. Nazar Grushchak
Claim Number: FA1801001768684
Complainant is Rush University Medical Center (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Nazar Grushchak (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rush.health>, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2018; the Forum received payment on January 24, 2018.
On January 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rush.health> 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 January 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2018 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@rush.health. Also on January 25, 2018, 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 February 14, 2018.
On February 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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 is a renowned academic health system whose mission is to improve the health of the patients and the diverse communities it serves with nationally recognized health care, education, research, and a commitment to community partnerships. In 1837, Complainant’s Rush Medical College was the first medical school in Chicago, and one of the earliest in the Midwest. Complainant has rights in the RUSH mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,481,615, registered Aug. 28, 2001). Complainant contends that Respondent’s <rush.health> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and appends the generic top-level domain (“gTLD”) “.health.”
Complainant further contends that Respondent has no rights or legitimate interests in the <rush.health> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Nazar Grushchak.” nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to host a parked webpage containing click-through links to redirect uses to sponsored third-party commercial websites. As Respondent hosts this parked webpage, Respondent has failed to make any demonstrable preparations to use the domain name for any legitimate purpose.
Finally Complainant contends that Respondent registered and uses the <rush.health> domain name in bad faith. Respondent registered the domain name to create a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website containing for-profit click-through links. Further, Respondent has owned the domain name for two months and has failed to make any demonstrable preparations to use the domain name in connection with any legitimate purpose. Additionally, Respondent failed to respond to Complainant’s attempts to resolve this issue outside of legal proceedings.
B. Respondent
Respondent contends that it does have rights and legitimate interests in the <rush.health> domain name, and did not register or use the domain name in bad faith. Respondent acquired the domain name to use in connection with its intended start-up business, to provide a rushed delivery of medicine via drone service to individuals located in rural Ukraine. Further, the domain name consists of the descriptive terms “rush” and “health,” which Respondent does not need Complainant’s permission to use. Additionally, Complainant, by its own admission, only uses its mark in the United States, which Respondent has no intention of targeting that population. Finally, Respondent allowed its subscription with Squarespace to end, which allowed GoDaddy to use the resolving domain to display various generic third-party links unaffiliated with Respondent, and certainly not done in bad faith.
Respondent finally claims that Complainant is engaging in reverse domain name hijacking, which the Clerk will reflect at the end of this memo.
The Panel finds that:
(1) The domain name <rush.health> is confusingly similar to Complainant’s registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain name <rush.health>.
(3) The Respondent has registered and is using the domain name <rush.health> 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 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 claims rights in the RUSH mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,481,615, registered Aug. 28, 2001). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the RUSH mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <rush.health> domain name is confusingly similar to Complainant’s mark as it incorporates the mark in its entirety and appends the gTLD “.health.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The Panel therefore finds that the <rush.health> domain name is identical to the RUSH mark under Policy ¶4(a)(i).
Complainant must show that Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that Complainant has discharged the onus of proof for the second criterion: Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once Complainant has made a prima facie showing, the burden of production shifts to Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent has no rights or legitimate interests in the <rush.health> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Nazar Grushchak” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the RUSH mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Since the Panel agrees that Respondent is not commonly known by the <rush.health> domain name, the Panel holds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the disputed domain name to resolve in a website that contains a series of hyperlinks redirecting users to competing and unrelated services, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to competitive or unrelated services generally does not constitute 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 provides a screenshot of the resolving webpage, which displays the “GoDaddy” mark on the top of the domain and displays links such as “Sem Rush” and “Rush Working Man.” The Panel agrees that Respondent hosts a domain containing third-party hyperlinks. The Panel therefore holds that Respondent lacks rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) & (iii).
Further, Complainant avers that Respondent has failed to make any demonstrable preparations to use the <rush.health> domain name for any legitimate purpose. Failure to make demonstrable preparations to legitimately use a domain name can evince a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). The Panel is reminded of Complainant’s Exhibit B, which shows a parked webpage containing third-party hyperlinks. Accordingly, the Panel agrees that Respondent has not demonstrated any demonstrable preparations to use the <rush.health> domain name. Therefore the Panel holds that Respondent lacks rights and legitimate interests in the same domain name.
Complainant argues that Respondent registered and uses the <rush.health> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering third-party hyperlinks. In this regard the Panel notes that Respondent registered the <rush.health> domain name on December 14, 2017. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). As noted above, Complainant provides a screenshot of the resolving webpage which appears to be hosted by the registrar, GoDaddy, and contains hyperlinks such as “Harga” and “Zerg Rush.” Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant claims that Respondent has owned the domain name for two months and has failed to make any demonstrable preparations to use the domain name in connection with any legitimate purpose. Failure to show any demonstrable preparations to use a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted previously, the resolving domain appears to be a parked webpage hosted by GoDaddy containing links to third-party webpages. Since the Panel agrees that Respondent has not shown any demonstrable preparations to use the <rush.health> domain name, the Panel finds bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant contends that Respondent failed to respond to Complainant’s attempts to resolve this matter outside of legal proceedings. Failure to respond to cease and desist letters may contribute towards a finding of bad faith. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Complainant provides a copy of the letter it allegedly sent to Respondent, to which Respondent allegedly did not respond. The Panel is of the view of that Respondent’s failure to respond to Complainant’s cease and desist letter as additional evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii).
Reverse Domain Name Hijacking
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel is of the view that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rush.health> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: February 20, 2018
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