WebMD Corporation v. Ferotech Solution
Services
Claim
Number: FA0508000549226
Complainant is WebMD Corporation (“Complainant”), represented
by Matthew J. Urbanawiz, of Alston & Bird LLP,
1201 W. Peachtree Street, Atlanta, GA 30309.
Respondent is Ferotech Solution
Services (“Respondent”), represented by Mark E. Wiemelt, 10
South LaSalle Street, Suite 3300, Chicago, IL 60603.
The
domain name at issue is <webmdhelp.com>, registered with Wild
West Domains.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 29, 2005.
On
August 29, 2005, Wild West Domains confirmed by e-mail to the National
Arbitration Forum that the <webmdhelp.com> domain name is
registered with Wild West Domains and that Respondent is the current registrant
of the name. Wild West Domains has
verified that Respondent is bound by the Wild West Domains registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
September 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 27, 2005 by which Respondent could file a response to
the Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@webmdhelp.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 5, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <webmdhelp.com>
domain name is confusingly similar to Complainant’s WEBMD mark.
2. Respondent does not have any rights or
legitimate interests in the <webmdhelp.com> domain name.
3. Respondent registered and used the <webmdhelp.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
WebMD Corporation, is a leading provider of health information services to
consumers, physicians and healthcare professionals, and practice management
services. Complainant has used the
WEBMD mark since 1998 to identify a variety of healthcare related services
directed to all aspects of the healthcare industry.
Complainant’s
website located at <webmd.com> domain name currently receives more than
22 million visitors per month, making it a leading online destination and
making the WEBMD brand among the most recognized and trusted in
healthcare. Complainant’s WEBMD mark
has attained widespread and substantial fame.
Complainant has
registered its WEBMD with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 2,394,818 issued October 17, 2000).
Respondent
registered the <webmdhelp.com> domain name on December 22,
2004. Respondent’s domain name resolves
to a website that features goods and services that directly compete with those
of 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."
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(e), 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 (Nat. Arb. 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.”).
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 has
established rights in the WEBMD mark through registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
Additionally, Respondent’s <webmdhelp.com> domain
name is confusingly similar to Complainant’s mark, as the domain name fully
incorporates Complainant’s WEBMD mark in its entirety and adds the generic term
“help.” Such a change is not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Magnum Piering,
Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the
generic term “INC” does not change the confusing similarity); see also Am.
Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding
that the addition of the generic word “Net” to the complainant’s ICQ mark,
makes the <neticq.com> domain name confusingly similar to the
complainant’s mark).
Furthermore, the
addition of the top-level domain “.com” is irrelevant in determining whether
the <webmdhelp.com> domain name is confusingly similar to Complainant’s
mark. See Blue Sky Software Corp.
v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has
been satisfied.
Complainant
asserts that Respondent does not have rights or legitimate interests in the <webmdhelp.com>
domain name. When a complainant establishes
a prima facie case pursuant to Policy
¶ 4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once the
complainant asserts that the respondent does not have rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights or legitimate
interests in the domain name); 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 does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar.
9, 2000) (finding that by not submitting a response, the respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name).
Moreover,
Respondent is not commonly known by the <webmdhelp.com> domain
name. Thus, the Panel concludes that
Respondent has not established rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where respondent was not
commonly known by the mark and never applied for a license or permission from
complainant to use the trademarked name); see
also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see
also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum
Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Furthermore,
Respondent is using the <webmdhelp.com> domain name to operate a
commercial website that features goods and services that compete with
Complainant. The Panel finds that
Respondent’s use of a domain name that is confusingly similar to Complainant’s
mark to divert Internet users to its website for Respondent’s own commercial
gain does not constitute a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. 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).”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where the
respondent attempted to profit using the complainant’s mark by redirecting
Internet traffic to its own website).
The Panel finds
that Policy ¶ 4(a)(ii) has
been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to its
own commercial website. Respondent
registered and used the disputed domain name in bad faith under Policy ¶
4(b)(iv), as Respondent is using the <webmdhelp.com> domain name
to intentionally attract, for commercial gain, Internet users to its website,
by creating a likelihood of confusion with Complainant as to the source,
sponsorship, affiliation or endorsement of its website. See
H-D Michigan, Inc. v. Petersons Auto,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name
was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the
respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness); see also G.D. Searle &
Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website).
Furthermore,
Respondent has used the <webmdhelp.com> domain name, which contains Complainant’s WEBMD mark, to redirect
Internet users to Respondent’s own website which features products and support
services that directly compete with Complainant’s goods and services. This suggests that Respondent had actual
knowledge of Complainant’s rights in the mark when it registered the domain
name and chose the disputed domain name based on the goodwill Complainant has
acquired in its WEBMD mark.
Furthermore, Complainant’s registration of the WEBMD mark with the USPTO
bestows upon Respondent constructive notice of Complainant’s rights in the
mark. Respondent’s registration of a
domain name containing Complainant’s mark in spite of Respondent’s actual or
constructive knowledge of Complainant’s rights in the mark is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about the Complainant’s mark when it registered the subject
domain name”); see
also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4,
2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the
USPTO, a status that confers constructive notice on those seeking to register
or use the mark or any confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has
been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <webmdhelp.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 17, 2005
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