Cardinal Health, Inc. v. Christine Shaver
Claim Number: FA2003001888765
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, United States. Respondent is Christine Shaver (“Respondent”), United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardinelhealth.com>, registered with Google 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 18, 2020; the Forum received payment on March 18, 2020.
On March 19, 2020, Google LLC confirmed by e-mail to the Forum that the <cardinelhealth.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2020 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@cardinelhealth.com. Also on March 24, 2020, 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 April 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is a health care services company. Complainant has rights in the CARDINAL HEALTH trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,249,206, registered Jun. 1, 1999). Respondent’s <cardinelhealth.com> domain name is confusingly similar to Complainant’s CARDINAL HEALTH trademark as it is a misspelling of Complainant’s trademark and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <cardinelhealth.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s CARDINAL HEALTH trademark. Additionally, Respondent fails to use the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to make an active use of the disputed domain name. Additionally, Respondent uses <cardinelhealth.com> in an attempt to pass off as Complainant in order to conduct a fraudulent email scheme.
Respondent registered and uses the <cardinelhealth.com> domain name in bad faith. Respondent uses the disputed domain name to conduct an email phishing scheme. Respondent also had constructive and/or actual knowledge of Complainant’s rights in the CARDINAL HEALTH trademark prior to the registration of the disputed domain name <cardinelhealth.com>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,249,206 CARDINAL HEALTH (word), registered June 1, 1999 for services in class 35;
No. 2,255,186 CARDINAL HEALTH (word), registered June 11, 1999 for goods in class 9;
No. 2,308,398 CARDINAL HEALTH (word), registered January 18, 2000 for services in class 42;
No. 2,960,790 CARDINAL HEALTH (word), registered June 7, 2005 for goods in class 10;
No. 2,960,791 CARDINAL HEALTH (word), registered June 7, 2005 for services in class 35;
No. 2,953,177 CARDINAL HEALTH (word), registered May 17, 2005 for services in classes 39, 42, 44;
No. 2,940,663 CARDINAL HEALTH (fig), registered April 12, 2005 for goods in class 9;
No. 2,953,042 CARDINAL HEALTH (fig), registered May 17, 2005 for services in classes 35, 42;
No. 2,953,043 CARDINAL HEALTH (fig), registered May 17, 2005 for goods in class 25; and
No. 2,990,225 CARDINAL HEALTH (fig), registered August 30, 2005 for services in classes 42, 44.
Respondent registered the disputed domain name <cardinelhealth.com> on February 20, 2020
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the CARDINAL HEALTH trademark through its registration of the trademark with the USPTO. Registration of a trademark with the USPTO is sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registrations for the CARDINAL HEALTH trademark (e.g., Reg. No. 2,249,206, registered Jun. 1, 1999). Therefore, the Panel finds that Complainant has adequately shown rights in the CARDINAL HEALTH trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <cardinelhealth.com> domain name is confusingly similar to Complainant’s trademark because the disputed domain name incorporates a misspelling of the CARDINAL HEALTH trademark and adds the “.com” gTLD.
A simple misspelling of a trademark along with the addition of a gTLD is not enough to distinguish a disputed domain name from a complainant’s trademark. See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Here, Complainant argues that Respondent’s domain name includes the entire CARDINAL HEALTH trademark, merely replacing the second letter “a” in the word “cardinal” with the letter “e” and adding the “.com” gTLD. Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Complainant argues that Respondent does not have rights or legitimate interests in the <cardinelhealth.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CARDINAL HEALTH trademark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same).
Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The WHOIS information for the disputed domain name in this case shows the registrant’s name as “CHRISTINE SHAVER” and nothing in the record indicates that Respondent is authorized to use Complainant’s trademark or is commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent makes no legitimate use of the disputed domain name. Failure to make active use of a domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. 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).”). Here, Complainant provides a screenshot of <cardinelhealth.com> which resolves to an error message. The Panel agree with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Additionally, and more important for the outcome and conclusion, the Complainant claims that the Respondent uses the <cardinelhealth.com> domain name to pass off as Complainant in furtherance of a phishing scheme. Use of an email address associated with a disputed domain name to pass of as a complainant in furtherance of a phishing scheme is definitely not indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant claims that Respondent registered the disputed domain name to pose as Complainant to solicit payment from Complainant’s customers. Complainant provides emails between Respondent and Complainant’s customers. Thus, the Panel agree that Respondent’s use of the domain name indicates it lacks rights and legitimate interests in the same per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <cardinelhealth.com> domain name in bad faith. Complainant alleges Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of an email phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may indeed constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As noted previously, Complainant claims that Respondent registered <cardinelhealth.com> to pose as Complainant through email in order to solicit payment from Complainant’s customers. Complainant argues that Respondent disrupts Complainant’s business by creating confusion and defrauding parties involved with Complainant. The Panel agrees, and find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that Respondent registered the <cardinelhealth.com> domain name with constructive and actual knowledge of Complainant's rights in the CARDINAL HEALTH trademark. The Panel notes that any 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. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). Registering a domain name with actual knowledge of another’s rights therein may be indicative of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s trademark prior to registering the <cardinelhealth.com> domain name is apparent from the notoriety of Complainant’s trademark and from Respondent’s use of the domain name to impersonate Complainant in order to conduct a phishing scheme. Therefore, Panel find that Respondent registered the <cardinelhealth.com> domain name with actual knowledge of Complainant’s CARDINAL HEALTH trademark, thus demonstrating bad faith per 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 <cardinelhealth.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 18, 2020
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