Norton Healthcare, Inc. v. Web Master
Claim Number: FA0702000910555
Complainant is Norton Healthcare, Inc. (“Complainant”), represented by Trent
Martinet, 1050 17th St., Ste. 1500, Denver, CO, 80265. Respondent is Web Master (“Respondent”), General Delivery, Georgetown Grand Caym,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <nortonhospital.com>, registered with eNom.
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 February 2, 2007; the National Arbitration Forum received a hard copy of the Complaint February 5, 2007.
On February 6, 2007, eNom confirmed by e-mail to the National Arbitration Forum that the <nortonhospital.com> domain name is registered with eNom and that Respondent is the current registrant of the name. eNom verified that Respondent is bound by the eNom 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 February 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 1, 2007, 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@nortonhospital.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 2007, 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, <nortonhospital.com>, is confusingly similar to Complainant’s NORTON HEALTHCARE mark.
2. Respondent has no rights to or legitimate interests in the <nortonhospital.com> domain name.
3. Respondent registered and used the <nortonhospital.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Norton Healthcare Inc., is a provider of
hospital and medical care, as well as rehabilitation services, in the
Complainant holds a service mark registration with the United States Patent and Trademark Office (“USPTO”) for the NORTON HEALTHCARE mark (Reg. No. 2,359,882 issued June 20, 2000).
On June 30, 2001, Respondent registered the <nortonhospital.com> domain
name. Respondent’s website contains
misleading links such as “
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 with extrinsic proof in this proceeding that it holds rights to and legitimate interests in the NORTON HEALTHCARE mark by virtue of its registration with the USPTO. Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The disputed domain name, <nortonhospital.com>, contains the predominant portion of Complainant’s NORTON HEALTHCARE mark and removes the term “healthcare,” replacing it with the term “hospital,” which has a similar meaning and relates to the services that Complainant provides under its registered mark.
Because Respondent has failed to sufficiently distinguish
the disputed domain name from the mark, the Panel finds that the <nortonhospital.com> domain name is
confusingly similar to the mark according to Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also WestJet Air Ctr.,
Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001)
(finding that the <westjets.com> domain name is confusingly similar to
the complainant’s mark, where the complainant holds the
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant established that it has rights to and legitimate
interests in the mark contained within the disputed domain name and Complainant
alleges that Respondent lacks such rights and legitimate interests in the <nortonhospital.com> domain
name. Under Policy ¶ 4(a)(ii), the burden first lies with Complainant to make a prima
facie case in support of its allegations.
Once Complainant has made such a case, the burden shifts to Respondent
to demonstrate that it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii).
See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima
facie case has been established by the complainant under Policy ¶ 4(c), the
burden then shifts to the respondent to demonstrate its rights or legitimate
interests in the disputed domain name); see also ALPITOUR S.p.A. v.
Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶
4(a)(ii) requires that the complainant must show that the respondent has no
rights to or legitimate interests in the subject domain name and that once the
complainant makes this showing, the burden of production shifts to the
respondent to rebut the complainant’s allegations).
Respondent did not respond to the Complaint, which raises a presumption that Respondent lacks rights and legitimate interests in the <nortonhospital.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).
However, the Panel examines the
record to determine if Respondent has rights or legitimate interests under
Policy ¶ 4(c). Respondent lists
itself as “Web Master” in the WHOIS information, and no other information in
the record indicates that Respondent is commonly known by the <nortonhospital.com> domain
name. Complainant also alleges that it
has not authorized or licensed Respondent to register a domain name containing
a variation of its registered NORTON HEALTHCARE mark. As a result, the Panel finds that Respondent
is not commonly known by the contested domain name pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see
also Coppertown Drive-Thru Systems,
LLC v. Snowden, FA 715089 (Nat.
Arb. Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The disputed domain name that Respondent registered, <nortonhospital.com>, resolves to a pay-per-click website with links such as “Louisvillehospitals,” “Birth Announcements,” and “Nortonsuburban hospital,” which describe Complainant and Complainant’s area of services but resolve to websites wholly unrelated to Complainant. The Panel presumes that Respondent is generating click-through revenue through this website. By redirecting Internet users seeking information on Complainant’s health care and hospital services to its own website for commercial gain, Respondent is not using the contested domain name in connection with 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 Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Complainant satisfied Policy ¶ 4(c)(ii).
Complainant also alleges that Respondent acted in bad faith
in registering and using a domain name containing Complainant’s protected
mark. Respondent registered and is using
the <nortonhospital.com> domain name in bad faith because it is
presumably earning click-through fees for each consumer it diverts to
third-party websites unrelated to Complainant via misleading links. In T-Mobile USA, Inc. v.
utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006), the panel held
that the registration and use of a domain name confusingly similar to a
complainant’s mark to direct Internet traffic to a commercial “links page” in
order to profit from click-through fees or other revenue sources constitutes
bad faith under Policy ¶ 4(b)(iv)).
Here, Respondent’s registration and use is likely to mislead consumers
seeking Complainant’s services as to the source, sponsorship, affiliation, or
endorsement of Respondent’s website with Complainant’s hospital and healthcare
services. Such use supports the
inference that Respondent seeks to and is likely profiting from such confusion. Consequently, the Panel finds that Respondent
registered and is using the <nortonhospital.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See The Ass’n of Junior Leagues Int’l Inc.
v. This Domain Name My Be For
The Panel finds that Complainant satisfied Policy ¶ 4(b)(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 <nortonhospital.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 20, 2007.
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