Texas Health Resources v. Domain Administrator / Eastern Valley Limited
Claim Number: FA1803001774547
Complainant is Texas Health Resources (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is Domain Administrator / Eastern Valley Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwtexashipandkneecenter.com>, registered with Site Matrix LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2018; the Forum received payment on March 5, 2018.
On March 6, 2018, Site Matrix LLC confirmed by e-mail to the Forum that the <wwwtexashipandkneecenter.com> domain name is registered with Site Matrix LLC and that Respondent is the current registrant of the name. Site Matrix LLC has verified that Respondent is bound by the Site Matrix LLC 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 March 7, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2018 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@wwwtexashipandkneecenter.com. Also on March 7, 2018, 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 March 29, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Complainant is one of the largest faith-based nonprofit health systems in the United States and the largest in North Texas in terms of inpatients and outpatients. Complainant has affiliated with numerous organizations, from all aspects of the health care industry, to better serve the more than seven million people in sixteen counties throughout the North Texas region. Complainant has common law rights in the TEXAS HIP AND KNEE CENTER mark since at least as early as 2003. Complainant owns and uses the <texashipandkneecenter.com> domain name in connection with its organization. Respondent’s <wwwtexashipandkneecenter.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s entire mark and merely prepends “www” and appends the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the wwwtexashipandkneecenter.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to display various generic third-party links to generate click-through fees.
Respondent registered and uses the <wwwtexashipandkneecenter.com> domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with another’s marks as to the source of the website. Further, Respondent engages in typosquatting by merely omitting the period between the “www” and the TEXAS HIP AND KNEE CENTER from Complainant’s domain name. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the TEXAS HIP AND KNEE CENTER mark as Complainant has used the mark in connection with its organization for almost two decades
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Texas Health Resources, of Arlington, TX, USA. Complainant claims common law rights in the mark TEXAS HIP AND KNEE CENTER based on continuous usage and marketing since at least as early as 2003. Since that time Complainant has also continuously used the domain <texashipandkneecenter.com>.
Respondent is Domain Administrator / Eastern Valley Limited, Hong Kong. Respondent’s registrar’s address is listed as Las Vegas, NV. The Panel notes that Respondent registered the <wwwtexashipandkneecenter.com> domain name on or about June 14, 2017.
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 claims it holds common law rights in the TEXAS HIP AND KNEE CENTER mark dating back to 2003 and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant avers that it is one of the largest faith-based nonprofit health systems in the United States, and the largest in North Texas in terms of inpatients and outpatients. Complainant further asserts that it is affiliated with numerous organizations, from all aspects of the health care industry, and serves the more than seven million people in sixteen counties throughout the North Texas region. Finally, Complainant claims to own and use the <texashipandkneecenter.com> domain name in connection with its organization. Based on the evidence of Complainant’s continuous use through advertising, and ownership and use of the <texaskneeandhip.com> domain name, directly and through its predecessors in interest, for more than two decades, the Panel here finds that Complainant does hold common law rights in the name for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <wwwtexashipandkneecenter.com> domain name is identical or confusingly similar to Complainant’s mark as it contains Complainant’s entire mark and merely prepends “www” and appends the gTLD “.com.” Similar changes in a mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding that the addition of “www” takes advantage of a common typing error, and does not distinguish the domain name from the mark or overcome a finding of confusingly similar); 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 here finds that the infringing domain name is confusingly similar to the Complainant’s mark under Policy ¶4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant here has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <wwwtexashipandkneecenter.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other 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 “Domain Administrator / Eastern Valley Limited” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TEXAS HIP AND KNEE CENTER mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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 alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Respondent has not contested any of Complainant’s assertions. Accordingly, the Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant claims that Respondent uses the domain name to display various generic third-party links to generate click-through fees. Using a domain name to offer links to services in direct competition with a complainant generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage in connection with the infringing domain name, which displays links such as “knee surgery doctor” and “hip replacement doctors.” The Panel here finds that Respondent uses the <wwwtexashipandkneecenter.com> domain name to display competing hyperlinks, failing to make 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).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with another’s marks as to the source of the website to generate click-through fees. Using a confusingly similar domain name to offer competing hyperlinks can evince bad faith registration and use per Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As previously noted, Complainant provides a screenshot of the resolving webpage in connection with the infringing domain name, which displays links such as “knee surgery doctor” and “hip replacement doctors.” The Panel here finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv) by displaying hyperlinks to competitive services.
Finally, Complainant claims that Respondent had actual or constructive knowledge of Complainant’s TEXAS HIP AND KNEE CENTER mark at the time of registering the <wwwtexashipandkneecenter.com> domain name. The Panel agrees with Complainant, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and that actual knowledge does adequately evince bad faith registration and use 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). Complainant contends that Respondent must have had actual knowledge of its mark as Respondent only added a prefix and suffix to Complainant’s full mark, and had their domain resolve to a site that advertised links to competitors offering the same services as Complainant. A domain name registration search would have revealed Complainant’s mark/domain name. The Panel here agrees that Respondent did have actual knowledge of Complainant’s mark, and thus finds bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwtexashipandkneecenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 12, 2018
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