Vitas Hospice Services, L.L.C. v. Lisa Katz / Domain Protection LLC
Claim Number: FA1707001741763
Complainant is Vitas Hospice Services, L.L.C. (“Complainant”), represented by Theodore R. Remaklus of Wood, Herron & Evans, LLP, Ohio, USA. Respondent is Lisa Katz / Domain Protection LLC (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vitashealthcare.com>, registered with Fabulous.com Pty Ltd.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2017; the Forum received payment on July 27, 2017.
On July 27, 2017, Fabulous.com Pty Ltd confirmed by e-mail to the Forum that the <vitashealthcare.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 July 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 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@vitashealthcare.com. Also on July 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a pioneer and leader in the hospice care movement, and has been since 1978. Complainant is the largest provider of end-of-life care in the United States. Complainant registered the VITAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,817,265, registered Jan. 18, 1994).
2. Respondent’s <vitashealthcare.com>[1] domain name is identical or confusingly similar to Complainant’s mark as it contains the entire VITAS mark and merely adds the descriptive term “healthcare” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests in the <vitashealthcare.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the VITAS mark.
4. Respondent also does not use the domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the resolving webpage for the domain name, and instead redirects users to a health insurance plans search page. This could confuse potential users into believing Complainant was no longer in operation.
5. Respondent registered and uses the <vitashealthcare.com> domain name in bad faith. Respondent disrupts Complainant’s business by attempting to attract, for Respondent's own commercial gain, Internet users to Respondent's website by creating a likelihood of confusion with Complainant's VITAS mark. Respondent clearly knew of the VITAS mark at the time of registration as there would be no other reason to register the confusingly similar domain name in connection with an inactive website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the VITAS mark. Respondent’s domain name is confusingly similar to Complainant’s VITAS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vitashealthcare.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 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 (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.”).
Complainant registered the VITAS mark with the USPTO (e.g. Reg. No. 1,817,265, registered Jan. 18, 1994). Registration of a mark with the USPTO confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark.”). Accordingly, the Panel finds that Complainant has established rights in the VITAS mark.
Complainant next argues that Respondent’s <vitashealthcare.com> domain name is identical or confusingly similar to Complainant’s VITAS mark as it contains the mark in its entirety and merely adds the descriptive term “healthcare” and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <vitashealthcare.com> domain name is confusingly similar to the VITAS mark under Policy ¶4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <vitashealthcare.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <vitashealthcare.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other uncontracted assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Lisa Katz / Domain Protection LLC” as the registrant. Complainant has shown that no evidence exists to show that Respondent has ever been legitimately known by the VITAS mark. The Panel agrees. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant has shown that Respondent has never been legitimately affiliated with Complainant, has never been known by the <vitashealthcare.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <vitashealthcare.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant has shown that the <vitashealthcare.com> domain name redirects users to an inactive website. Failure to make active use of a confusingly similar domain name can show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not 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).”). Complainant provides a screenshot of the resolving webpage, which appears to be a search engine for health insurance providers. Complainant has demonstrated that this could confuse potential users into believing Complainant was no longer in operation. Accordingly, the Panel finds that Respondent does not make an active use of the <vitashealthcare.com> domain name and has thus failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <vitashealthcare.com> domain name in bad faith to disrupt Complainant’s business by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain name to commercially benefit. Using a domain name which is substantially identical to a mark in which a complainant has rights to disrupt a complainant’s business can show bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also 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 agrees.
Further, Complainant claims that Respondent had actual knowledge of Complainant’s VITAS mark. The Panel agrees with Complainant that because the domain name incorporates Complainant’s mark in its entirety and adds a generic term related to Complainant’s business, Respondent certainly had actual knowledge of Complainant's rights in the mark prior to registering the <vitashealthcare.com> domain name and finds that actual knowledge does adequately show bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Thus, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has 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 <vitashealthcare.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 25, 2017
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