Cardinal Health, Inc. v. zhangwei / zhang wei
Claim Number: FA2008001908971
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, United States. Respondent is zhangwei / zhang wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardinalhealth.co>, registered with NameScout Corp..
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2020; the Forum received payment on August 18, 2020.
On August 19, 2020, NameScout Corp. confirmed by e-mail to the Forum that the <cardinalhealth.co> domain name is registered with NameScout Corp. and that Respondent is the current registrant of the name. NameScout Corp. has verified that Respondent is bound by the NameScout Corp. 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 August 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 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@cardinalhealth.co. Also on August 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 September 17, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CARDINAL HEALTH mark established by its ownership of its portfolio of registered trademarks and service marks described below and the goodwill that it has established in the mark by its extensive use by Complainant delivering pharmaceuticals and medical products and services to more than 100,000 locations every day, employing 50,000 people world-wide.
Complainant submits that the disputed domain name <cardinalhealth.co> is identical to Complainant’s CARDINAL HEALTH and argues that Respondent merely removes the space from between the two words in Complainant’s CARDINAL HEALTH mark and adds the Colombian country-code Top-Level Domain (“ccTLD”) extension <.co> to create the disputed domain name.
Complainant submits that panels have held that such changes fail to distinguish a domain name at issue from a complainant’s mark. See Retail Royalty Company and AEO Management Co. v DUANZUOCHUN FA1428749 (Forum March 6, 2012) (finding deletion of space in AMERICAN EAGLE mark and use of <.co> ccTLD for the disputed domain name was confusingly similar to the complainant’s mark).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the name “Cardinal Health”; the WHOIS information for the disputed domain name lists the registrant as “zhangwei / zhang wei ”; and there is presently no evidence of any connection between the Respondent’s name and the disputed domain name. See Tercent Inc. v. Lee Yi, FA0139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that it has not authorized, licensed, or endorsed Respondent’s use of its CARDINAL HEALTH mark in the disputed domain name and argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Referring to a screenshot which has been submitted in an annex to the Complaint, Complainant asserts that review of the website to which the disputed domain name resolves shows that the disputed domain name redirect users to an unknown domain, which prompts them to install an unknown browser extension. Complainant argues that this prompt suggests an attempt by Respondent to install malware into the user’s device which does not constitute a bona fide offering of good or services or a legitimate noncommercial use. See Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name).
Additionally, Complainant has submitted a screenshot to illustrate that Respondent sometimes uses the subdomain <market.cardinalhealth.co> that resolves to an unrelated third-party website. Complainant argues that such redirection of traffic by Respondent is likely to be for commercial gain and is not a bona fide offering of goods or services or a legitimate noncommercial fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”)
Complainant further submits that notably, Respondent has been involved in previous proceedings under the Policy where panels have found that Respondent lacked rights or legitimate interests in the domain names at issue. See Google LLC v. ZhangWei / S Jon Grant / jerry, FA 1896568 (Forum July 21, 2010); Republic Services, Inc. v. Zhangwei, FA 1869021 (Forum Nov. 26, 2019); BeenVerified, Inc. v. ZHANGWEI, FA 1730641 (Forum June 6, 2017). Complainant submits that this reflects a discernible pattern of Respondent’s cybersquatting, which illustrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services and is not using it for any legitimate noncommercial or fair use.
Complainant argues that Respondent registered the disputed domain name in bad faith, arguing that Respondent had constructive knowledge of Complainant’s trademarks by virtue of Complainant’s trademark registrations. See Barney’s Inc. v. BNY Bulletin Board, No. D2000-0059 (WIPO 2000) (“Under Section 22 of the United States Trademark Act, the Respondent is charged with knowledge of Complainant’s rights in its trademark.”).
Moreover, Complainant submits that Respondent’s use of Complainant’s entire trademark CARDINAL HEALTH in the disputed domain name demonstrates actual notice of Complainant’s trademarks.
Complainant further submits that Respondent registered the disputed domain name in bad faith and argues that this is illustrated by Respondent’s attempt to install malware and redirect users to an unknown Internet location, prompting them to install an unknown security extension. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum June 9, 2015) (“In addition, Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.”).
Moreover, Complainant argues that Respondent’s use of the disputed domain name to redirect to third-party websites, further indicate bad faith. See State Fair of Texas v. Granbury.com, FA 95288 (Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to another website).
Finally, Complainant argues that the abovementioned prior rulings against Respondent by panels established under the Policy, infers bad faith on the part of Respondent is this present proceeding. See Accor SA v. Jan Everno, The Management Group II, D2017-2212 (WIPO Jan. 8, 2018) (“The Respondent’s bad faith in this proceeding can be inferred from the rulings entered against the Respondent in prior UDRP proceedings.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of pharmaceuticals, medical and health care products and is the owner of the following portfolio of registered trademarks and service marks:
· United States registered trademark CARDINAL HEALTH registration number 2.960, 790, registered on June 7, 2005 on the Principal Register for goods in international class 10;
· United States registered service mark CARDINAL HEALTH, registration number 2,960,791, registered on the Principal Register on June 7 2005 for services in international class 35;
· United States registered service mark CARDINAL HEALTH, registration number 2,9,53,177, registered on the Principal Register on May 17, 2005 for services in international classes 39, 42 and 44;
· United States registered trademark CARDINAL HEALTH (design) registration number 2.940, 663, registered on April 12, 2005 on the Principal Register for goods in international class 9;
· United States registered service mark CARDINAL HEALTH (design) registration number 2,990,225, registered on the Principal Register on May 17, 2005 for services in international classes 42 and 44;
· United States registered trademark CARDINAL HEALTH registration number 2.255,186, registered on June 22, 1999 on the Principal Register for goods in international class 9;
· United States registered trademark CARDINAL HEALTH (design) registration number 2.953,042, registered on May 17, 2005 on the Principal Register for goods in international class 9;
· United States registered trademark CARDINAL HEALTH (design) registration number 2.953,043, registered on May 17, 2005 on the Principal Register for goods in international class 25;
· United States registered service mark CARDINAL HEALTH registration number 2.308,398, registered on January 18, 2000 on the Principal Register for services in international class 42;
· United States registered service mark CARDINAL HEALTH registration number 2.249,206, registered on June 1, 1999 on the Principal Register for services in international class 35.
The disputed domain name <cardinalhealth.co> was registered on February 11, 2020 and resolves to a website which prompts users to install an unknown browser extension and sometimes Respondent uses the subdomain <market.cardinalhealth.co> that resolves to an unrelated third-party website
There is no information available about Complainant except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation of the details of the registration of the disputed domain name for the purposes of this Complaint.
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”).
Complainant has provided clear, convincing and uncontested evidence of its rights in the CARDINAL HEALTH mark established by its ownership of its portfolio of registered trademarks and service marks described above and the goodwill that it has established in the mark by its extensive use by Complainant providing pharmaceuticals and medical products and services.
The disputed domain name <cardinalhealth.co> consists of Complainant’s CARDINAL HEALTH mark with the space between the words “CARDINAL” and “HEALTH” removed and the addition of the Colombian country-code Top-Level Domain (“ccTLD”) extension <.co>.
The removal of a space between words in a trademark is commonplace in a domain name and in the context of the present Complaint the ccTLD <.co> extension may be disregarded under the first element confusing similarity test, as it a standard requirement for registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the trademark CARDINAL HEALTH in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that Respondent is not commonly known by the name “Cardinal Health”;
· that the WHOIS information for the disputed domain name lists the registrant as “zhangwei / zhang wei ”;
· that there is presently no evidence of any connection between the Respondent’s name and the disputed domain name;
· that Complainant has not authorized, licensed, or endorsed Respondent’s use of its CARDINAL HEALTH marks in the disputed domain name;
· that the screenshot which has been submitted in an annex to the Complaint, shows that the disputed domain name redirect users to an unknown web location, which prompts them to install an unknown browser extension which suggests an attempt by Respondent to install malware into the user’s device;
· that Respondent sometimes uses the subdomain <market.cardinalhealth.co> to redirect Internet traffic from which Respondent is likely to be making a commercial gain;
· that Respondent has been involved in several proceedings under the Policy where panels ruled against it for a lack of rights or legitimate interests in the disputed domain names; and
· that it follows that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial fair use.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his or her rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden. In the circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
As the disputed domain name is identical to Complainant’s distinctive trademark, it is improbable that the registrant was unaware of Complainant, its name and mark when the disputed domain name was registered.
This Panel finds therefore that, given the distinctive character of Complainant’s trademark and the substantial reputation and goodwill the Complainant has acquired in the use of the mark, on the balance of probabilities the registrant of the disputed domain name was aware of Complainant, its name and mark when the disputed domain name was chosen and registered.
This Panel finds therefore, that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s mark in mind in order to take predatory advantage of Complainant’s name, mark reputation and goodwill.
The uncontested evidence adduced shows that the web location to which the disputed domain name resolves, intercepts traffic to invite the user to install a “secured search extension”. There is no obvious reason why this interception should be put in place. Complainant has alleged that it is there to place malware on the device of the unsuspecting user.
Additionally, it would appear that occasionally Respondent is using a sub-domain to divert Internet traffic to what appears to be a third-party website that purports to offer medical products. This, in itself, is sufficient to make a finding of bad faith use of the disputed domain name.
A number of complaints under the Policy have been successfully brought by other trademark owners against respondents bearing the same name as Respondent. Complainant alleges that these are the same person as Respondent. In the absence of any explanation or denial this Panel finds that this unanswered allegation lends further weight to the finding that the disputed domain name is being used in bad faith.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith as Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cardinalhealth.co> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________
James Bridgeman SC
Panelist
Dated: September 17, 2020
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