Cardinal Health, Inc. v. Robert George
Claim Number: FA1706001736518
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP, Ohio, USA. Respondent is Robert George (“Respondent”), represented by Christopher Abberton, London, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardinalhealthfinance.com>, registered with Tucows Domains Inc.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2017; the Forum received payment on June 20, 2017.
On June 20, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cardinalhealthfinance.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 June 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2017 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@cardinalhealthfinance.com. Also on June 21, 2017, 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 August 1, 2017.
On August 2, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka as Panelist.
A timely Additional Submission by Complainant was received on August 7, 2017.
On August 11, 2017, the Panel issued a procedural order by which both parties should have presented the certificate of registration of the companies they claim to be, together with an excerpt to the date from the Companies house in England showing the full name of the company, the incorporation number, the headquarters address, the shareholders, the parent company, the directors and the object of activity of Cardinal Health Finance, Inc and of Cardinal Health Finance Limited. The requested documents must have been filed with Forum no later than August 16, 2017.
Both parties have submitted documents in response to the said procedural order within the indicated deadline.
The time period within which the Arbitrator was required to render its Decision had been extended until 21st of August 2017.
The requested documents must be filed with Forum no later than August 16, 2017.
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 Augnotice 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 claims that:
- Complainant is a $103 billion health care services company that provides pharmaceuticals and medical products and services to more than 100,000 locations each day.
- It owns a family of CARDINAL HEALTH marks, including common law rights and registrations obtained through its wholly-owned subsidiary Cardinal Health Technologies, LLC. In addition to the U.S. registrations, Cardinal Health owns trademark registrations for its CARDINAL HEALTH marks in 38 countries around the world including the European registration.
- It further owns a subsidiary Cardinal Health Finance, Inc. having a registered office address at Eversheds House, 70 Great Bridgewater Street, Manchester, M1 5ES. Cardinal Health Finance was incorporated in September 1999.
- It has established common law rights in the CARDINAL HEALTH FINANCE mark due to its incorporation and continuous use of the mark in 1999. See Compl., at Attached Ex. 4.
- <cardinalhealthfinance.com> domain name is identical to Complainant’s CARDINAL HEALTH FINANCE mark because it merely eliminates the spacing and appends the gTLD “.com” to the fully incorporated mark.
- Respondent lacks rights and legitimate interests in the disputed domain name as Complainant has neither licensed or otherwise authorized Respondent to use its CARDINAL HEALTH mark in any fashion and Respondent is not commonly known by the disputed domain name.
- Respondent fails to use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is using the domain name in furtherance of a phishing scheme and is offering services that compete with Complainant’s business.
- Respondent has registered and is using the <cardinalhealthfinance.com> domain name in bad faith as it attempts to disrupt Complainant’s business by unlawfully competing with Complainant’s financial business subsidiary.
- Respondent’s use of the mark on the <cardinalhealthfinance.com> resolving website and email correspondence purporting to itself pass off as Complainant evince Respondent’s actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent contends that:
- it is operating a legitimate loan business called Cardinal Health Finance Limited, that has been incorporated and recognized in England and Wales since 1999. See Resp. at Attached Ex. 1.
- Its business operates in a different area of business than Complainant and therefore the <cardinalhealthfinance.com> domain name cannot be identical or confusingly similar to Complainant’s CARDINAL HEALTH or CARDINAL HEALTH FINANCE marks.
- It is in fact the Cardinal Health Finance corporation and therefore has rights and legitimate interests in the <cardinalhealthfinance.com> domain name.
- It has not registered or used the domain name in bad faith as the disputed domain name is different from Complainant’s mark because the parties offer services in different markets.
- The <cardinalhealthfinance.com> domain name is clearly different from Complainant’s <cardinalhealth.com> domain name and could not possibly be disrupting Complainant’s business.
C. Additional Submissions
By the additional submission, the Complainant asserts that:
- Respondent does not dispute that the domain name is confusingly similar to Complainant’s trademarks.
- Respondent acknowledges that it was aware of Complainant’s services.
- Respondent provides no explanation of how it selected “Cardinal Health” for use in connection with its financing services.
- A potential client of Respondent, Mr. Greave as per emails identified as Exhibits 7 and 8 to the Complaint were directed to Complainant’s Cardinal Health Finance corporate agent in the U.K. mistakenly believing that Respondent was related to Complainant.
- The disputed domain name is owned by Robert George and not by Cardinal Health Finance and the certificate of registration attached to the Response as Exhibit 1 shows no connection to Mr. George.
- Moreover the said certificate indeed appears to be a copy of Complainant’s own registration (see Complaint Ex. 4), allegedly obtained from the Companies House’s website in order to attempt to pass himself off as a legitimate entity. In this sense, Complainant has attached the 2016 Cardinal Health Finance Report registered on Companies House’s website. (Complainant’s Ex. 10). which identifies Cardinal Health Finance’s parent company as Complainant, Cardinal Health Inc., a U.S. corporation at 7000 Cardinal Place Dublin Ohio.
- Respondent had not provided any credible evidence of sales, customers, or other information demonstrating that he actually provides goods and services in connection with the disputed domain name. Respondent’s Exhibit 3 purports to be a loan agreement between Respondent and a customer, but it does not name Robert George (Respondent) as a party to the agreement.
- The Agreement is not signed by Robert George and consequently provides no evidence that Respondent, Robert George, has conducted any legitimate business. In addition, the loan document fails to demonstrate any legitimate business in that this may be a document used in furtherance of the type of scam activity that Mr. Greaves identified in the Complaint. There, Mr. Greaves received loan application and credit application documents (Exs. 2 and 3) in furtherance of the scam.
- Respondent ignores the fact that Complainant’s U.K. entity Cardinal Health Finance, Inc. offers financing services (Complaint Ex. 4). Respondent does not dispute the allegation that he was aware of Complainant’s trademarks and its Cardinal Health Finance entity before registering the disputed domain. Nor does Respondent deny its intent to divert traffic to a disputed domain that is identical to the name of Complainant’s U.K. financing entity.
Complainant is a $103 billion health care services company that provides pharmaceuticals and medical products and services to more than 100,000 locations each day, which owns a family of CARDINAL HEALTH marks, including common law rights and registrations obtained through its wholly-owned subsidiary Cardinal Health Technologies, LLC. Moreover, Complainant owns a subsidiary - Cardinal Health Finance, Inc. registration number 3853401, having a registered office address at Eversheds House, 70 Great Bridgewater Street, Manchester, M1 5ES. Cardinal Health Finance was incorporated in September 1999, as Cardinal Health Finance Limited and re – registrated in October 1999, as unlimited, according to Certificate of Incorporation on re – registration of limited company as unlimited submitted by Complainant, following the Procedural Order of the Panel dated August 11, 2017.
Respondent is an individual, George Robert, which registered the disputed domain name in August 2016. Respondent tries to pass off itself as Complainant, claiming to have a legitimate business in Complainant’s company, Cardinal Health Finance unlimited, registration number 3853401, having a registered office address at Eversheds House, 70 Great Bridgewater Street, Manchester, M1 5ES. Cardinal Health Finance was incorporated in September 1999, as Cardinal Health Finance Limited and re – registered in October 1999 as an unlimited company, without documenting any kind of connection with the said company.
In the said context, on the balance of probabilities, Respondent appears to have registered and used in bad faith a domain name which is similar up to confusion with Complainant’s registered and common law trademarks, without justifying any legitimate rights and interests.
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 is a health care services company that specializes in direct-to-home medical supply distribution and medical and surgical product manufacturing. Complainant uses the CARDINAL HEALTH mark to promote its business. Complainant has rights in the mark through registration with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 2,255,186, registered June 22, 1999). Registration with a trademark authority evinces rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has rights in the CARDINAL HEALTH mark under Policy ¶ 4(a)(i).
Moreover, Complainant also contends it has established common law rights in the CARDINAL HEALTH FINANCE mark due to its incorporation and continuous use of the mark in 1999. See Compl., at Attached Ex. 4. Common law rights are established by relevant evidence of a secondary meaning. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”) Complainant contends it incorporated its subsidiary CARDINAL HEALTH FINANCE on September 30, 1999 and has used the mark continuously in connection with financial leasing, credit granting, and security and commodity contracts and as a tradename. See Compl., at Attached Ex. 4. Therefore, the Panel holds that Respondent has established common law rights in the CARDINAL HEALTH FINANCIAL mark.
Complainant contends the <cardinalhealthfinance.com> domain name is identical to Complainant’s CARDINAL HEALTH mark because it merely eliminates the spacing and appends the gTLD “.com” and the term “finance” to the fully incorporated mark. The addition of a gTLD and elimination of spaces between words does not distinguish a domain name from a mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Further, adding a generic term may not overcome a finding of confusing similarity. See Cardinal Health Inc. v. Whois Privacy Protection Service Inc. / Comdot Internet Services Private Limited, D2008-0213 (WIPO April 23, 2008) (finding the addition of the generic term “care” in the disputed domain name <cardinalheathcare.com> did not eliminate the confusing similarity with complainant’s CARDINAL HEALTH marks). Therefore, the Panel holds that <cardinalhealthfinance.com> domain name is confusingly similar with Complainant’s CARDINAL HEALTH marks and identical to Complainant’s CARDINAL HEALTH FINANCE common law mark.
Respondent contends that Respondent is operating a legitimate loan business called Cardinal Health Finance Limited, that has been incorporated and recognized in England and Wales since 1999. See Resp. at Attached Ex. 1. Respondent contends that Respondent’s business operates in a different area of business than Complainant and therefore the <cardinalhealthfinance.com> domain name cannot be identical or confusingly similar to Complainant’s CARDINAL HEALTH or CARDINAL HEALTH FINANCE marks. Nevertheless, Respondent does not dispute Complainant’s rights, or assert that the domain name’s textual elements are facially different.
As, according to WIPO Overview 3.0 (“[Policy ¶ 4(a)(i)] typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. . . In some cases, such assessment may also entail a more holistic aural or phonetic comparison of Complainant’s trademark and the disputed domain name to ascertain confusing similarity.”), this Panel shall disregard Respondent’s arguments under Policy ¶ 4(a)(i) as they will be addressed under Policy ¶¶ 4(a)(ii) and (iii).
Considering the above, this Panel concludes that Complainant succeeded to prove the first element as per Policy ¶ 4(a)(i), as the disputed domain name is confusingly similar to Complainant’s registered t CARDINAL HEALTH marks and identical to Complainant’s CARDINAL HEALTH FINANCE common law mark.
Under this element, the Panel finds that Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its CARDINAL HEALTH or CARDINAL HEALTH FINANCE marks in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where Complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that Respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the <cardinalhealthfinance.com> WHOIS information lists “ROBERT GEORGE” as the registrant. Therefore, the Panel holds that Respondent is not commonly known by <cardinalhealthfinance.com>.
Complainant further alleges that Respondent has registered the <cardinalhealthfinance.com> domain name as part of a phishing scheme. A respondent’s registration and use of a domain name for the purpose of phishing for Internet users’ personal information is evidence of a lack of rights and legitimate interests in the name and a failure to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that Respondent’s apparent phishing attempt provides further indication that Respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Virtu Financial Operating, LLC v. Lester Lomax, FA1409001580464 (Forum Nov. 14, 2014) (finding that 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 under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) where Respondent was using the disputed domain name to phish for Internet users personal information by offering a fake job posting on the resolving website). Here, Complainant provides email evidence that Respondent used <cardinalhealthfinance.com> to lure Internet users into providing information under the guise of Complainant’s employee, Michael Duncan Adelbert. See Compl., at Attached Ex. 7. Further, at Exhibit 6—copies of Respondent’s webpages at the infringing site—show that Complainant’s common law CARDINAL HEALTH FINANCE mark is listed in a left hand column with copied information of Complainant’s address at 70 Great Bridgewater Street, Manchester, M1 5ES at the top of the home page. Despite the fact that Respondent argues that Respondent is in fact the Cardinal Health Finance corporation and therefore has rights and legitimate interests in the <cardinalhealthfinance.com> domain name, the documents submitted by both Complainant and Respondent following the Procedural Order dated August 11, 2017, refer to the very same company Cardinal Health Finance, registration number 3853401, having a registered office address at Eversheds House, 70 Great Bridgewater Street, Manchester, M1 5ES. In reality, such evidence indicates that Respondent tries in bad faith to pass off as Complainant’s Cardinal Health Finance. Upon this evidence, the Panel finds that Respondent is attempting to impersonate an employee of Complainant or Complainant itself for the purpose of collecting Internet users’ personal information. Having concluded so, the Panel further holds that use of the disputed domain name for a phishing scheme violates Policy ¶ 4(a)(ii).
Considering the above, this Panel concludes that Complainant succeeded to prove the second element as per Policy ¶ 4(a)(ii).
Complainant asserts that Respondent is disrupting its business by attempting to divert potential customers away from Complainant by offering information that directly competes with Complainant. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Complainant has provided screenshot evidence of Respondent’s resolving webpage which displays Complainant’s CARDINAL HEALTH FINANCIAL mark and advertises for similar financial services as Complainant’s subsidiary. See Compl., at Attached Ex. 6. As such, the Panel holds that Respondent has acted in bad faith under Policy ¶ 4(b)(iii).
Complainant also contends that Respondent had at least constructive notice of Complainant’s rights in the mark due to Complainant’s trademark registration. Although, arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name).). Here, Respondent prominently featured the CARDINAL HEALTH FINANCE mark on the <cardinalhealthfinance.com> resolving website and used the mark in emails to lure Complainant’s customers into providing personal information. See Compl., at Attached Exs. 6–7. Moreover, despite the very fact that Respondent argues that Respondent is in fact the Cardinal Health Finance corporation, considering the documents submitted by both Complainant and Respondent following the Procedural Order dated August 11, 2017, which refer to the very same company Cardinal Health Finance, registration number 3853401, having a registered office address at Eversheds House, 70 Great Bridgewater Street, Manchester, M1 5ES, indicates more that Respondent tries in bad faith to pass off as Complainant’s Cardinal Health Finance, in a very complex phishing scheme which besides violating Policy ¶ 4(a)(ii), indicates that Respondent had actual knowledge of Complainant’s rights when <cardinalhealthfinance.com> was registered and subsequently used.
Accordingly, the Panel finds that Complainant succeeded to meet the burden of proof of bad faith registration and use under 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 <cardinalhealthfinance.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka
Panelist
Dated: August 20, 2017
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