HealthSouth Corporation v. Jucco Holdings
Claim Number: FA0608000771228
Complainant is HealthSouth Corporation (“Complainant”), represented by Michael S Denniston of Bradley Arant Rose & White LLP, 1819 Fifth Avenue North, Birmingham, AL, 35213. Respondent is Jucco Holdings (“Respondent”), 655 Flower Street, #337, Los Angeles, CA, 90017, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <insidehealthsouth.com>, registered with Nameking.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 4, 2006; the National Arbitration Forum received a hard copy of the Complaint August 7, 2006.
On August 7, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <insidehealthsouth.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. verified that Respondent is bound by the Nameking.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 31, 2006, 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@insidehealthsouth.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <insidehealthsouth.com>, is confusingly similar to Complainant’s HEALTHSOUTH mark.
2. Respondent has no rights to or legitimate interests in the <insidehealthsouth.com> domain name.
3. Respondent registered and used the <insidehealthsouth.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, HealthSouth Corporation, is one of the nations largest providers of outpatient surgery, diagnostic imaging and rehabilitative healthcare services. Complainant operates healthcare facilities nationwide, as well as in Puerto Rico and Australia. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the HEALTHSOUTH mark (Reg. No. 2,144,242 issued March 17, 1998).
Respondent registered the <insidehealthsouth.com> domain name March 19, 2002. Respondent is using the disputed domain name to redirect Internet users to Respondent’s commercial website that features content that competes with 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 will draw such inferences as the Panel 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 Complainant to 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 established using extrinsic proof in this
proceeding that it has rights in the HEALTHSOUTH mark through registration of
the mark with the USPTO. See America Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also 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.”).
The disputed domain name that Respondent registered, <insidehealthsouth.com>, is confusingly similar to Complainant’s HEALTHSOUTH mark because the domain name incorporates Complainant’s mark in its entirety and adds the term “inside” and the generic top-level domain “.com.” The Panel finds that such minor additions to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established its rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant alleged that Respondent does not have such rights or legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii) the burden is on Complainant to prove Respondent lacks rights or legitimate interests in the disputed domain name. Once Complainant makes a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent is using the <insidehealthsouth.com>
domain name to redirect Internet users to Respondent’s commercial website that
features information about competing healthcare facilities. Respondent’s use of a domain name that is
confusingly similar to Complainant’s HEALTHSOUTH mark to redirect Internet
users interested in Complainant’s services to a website that offers services in
competition with Complainant is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks); see
also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that the respondent was not using the domain name within the
parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain
name to take advantage of the complainant's mark by diverting Internet users to
a competing commercial site).
Moreover, Complainant asserts, without contradiction from Respondent, that Respondent is not commonly known by the <insidehealthsouth.com> domain name and is not authorized to use a domain name featuring Complainant’s mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) a respondent is not a licensee of a complainant; (2) complainant’s prior rights in the domain name precede that respondent’s domain name registration; (3) that respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where a respondent was not commonly known by the mark and never applied for a license or permission from a complainant to use the trademarked name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant alleged that Respondent acted in bad faith in registering and using a domain name that contained in its entirety Complainant’s registered mark. Respondent is using the <insidehealthsouth.com> domain name to redirect Internet users to Respondent’s commercial website that features competing healthcare services. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use under to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Based on the uncontested evidence presented by Complainant, the Panel infers as well that Respondent receives click-through fees for diverting Internet users to a website offering services that attempt to compete with Complainant’s healthcare services. Respondent’s domain name incorporating Complainant’s entire mark may create confusion as to Complainant’s affiliation with the disputed domain name and resulting website. Thus, Respondent’s use of the <insidehealthsouth.com> domain name amounts to bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <insidehealthsouth.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 22, 2006.
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