Carilion Clinic v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2103001939477
Complainant is Carilion Clinic (“Complainant”), represented by Michael J. Hertz of Woods Rogers PLC, Virginia, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue (“the Domain Names”) are <carionclinic.org>, <crilionclinic.org>, <carilionclini.org>, <cariliionclinic.org>, <carilionclonic.org>, <carilioncliic.org>, <carilioclinic.org> and <cariolionclinic.org>, registered with Internet Domain Service BS Corp.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 29, 2021. The Forum received payment on March 29, 2021.
On March 30, 2021, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the Domain Names are registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the names. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 March 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2021 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@carionclinic.org, postmaster@crilionclinic.org, postmaster@carilionclini.org, postmaster@cariliionclinic.org, postmaster@carilionclonic.org, postmaster@carilioncliic.org, postmaster@carilioclinic.org and postmaster@cariolionclinic.org. Also on March 30, 2021, 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 April 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Carilion Clinic, operates a non-profit healthcare organization in Virginia. In 2002 it registered the domain name <carilion.org>, which resolves to its main website at “www.carilion.org”.
Complainant has rights in the CARILION mark through its registration with the United States Patent and Trademark Office (“USPTO”). The Domain Names are confusingly similar to Complainant’s CARILION mark.
Respondent lacks rights and legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names and is neither an authorized user or licensee of the CARILION mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the Domain Names to host inactive websites.
Respondent registered and uses the Domain Names in bad faith. Respondent may use emails associated with four of the Domain Names (<carilioncliic.org>, <carilionclini.org>, <crilionclinic.org>, and <cariolionclinic.org>) to pass itself off as Complainant and potentially defraud Complainant’s customers and vendors. Such use disrupts Complainant’s business and may lead to commercial gain for Respondent. Additionally, Respondent engaged in typosquatting when registering the Domain Names. Respondent also fails to make active use of the Domain Names. Furthermore, Respondent possessed constructive and/or actual knowledge of Complainant’s trademark rights prior to registering the Domain Names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it has rights in the CARILION mark through its registration with the USPTO, Reg. No. 1,514,880, registered November 29, 1988. Each of Respondent’s <carionclinic.org>, <crilionclinic.org>, <carilionclini.org>, <cariliionclinic.org>, <carilionclonic.org>, <carilioncliic.org>, <carilioclinic.org> and <cariolionclinic.org> domain names is confusingly similar to Complainant’s CARILION mark. Each of the Domain Names begins with Complainant’s mark or a phonetic equivalent or misspelling of that mark, followed by the generic term “clinic” or a misspelling of that term, none of which differences detract from the distinctiveness of the CARILION mark. The inconsequential “.org” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Domain Names were registered as follows: <carionclinic.org> (September 25, 2020); <cariolionclinic.org> (September 25, 2020); <crilionclinic.org> (October 19, 2020); <carilionclini.org> (November 9, 2020); <carilioclinic.org> (November 9, 2020); <carilioncliic.org> (November 14, 2020); <carilionclonic.org> (November 16, 2020); and <cariliionclinic.org> (November 23, 2020). Each of the Domain Names resolves to a parking page displaying medical-related and other links, which lead to websites offering goods and services for sale.
These circumstances, coupled with Complainant’s assertions, constitute a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii). Accordingly, the burden shifts to Respondent to show he does have rights or legitimate interests. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Names under Policy ¶ 4(a)(ii).
Complainant has established this element.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that Respondent was well aware of Complainant’s mark when registering the Domain Names because each of the Domain Names is a typosquatted version of Complainant’s mark or the generic word “clinic”, which is part of Complainant’s name. Hence the Domain Names were registered in bad faith. Further, they are being used primarily for the purpose of disrupting Complainant’s business. Respondent has used the domain names intentionally to attempt to take advantage of the goodwill and brand recognition of Complainant’s mark for commercial gain by attracting Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.
The Panel therefore finds that Respondent registered and is using the Domain Names in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant has established this element
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carionclinic.org>, <crilionclinic.org>, <carilionclini.org>, <cariliionclinic.org>, <carilionclonic.org>, <carilioncliic.org>, <carilioclinic.org>, and <cariolionclinic.org domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: April 26, 2021
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