Team Health, LLC v. Jacob Anderson / Grejbrim OU
Claim Number: FA2306002050950
Complainant is Team Health, LLC (“Complainant”), represented by Alexandra C. Lynn of Bradley Arant Boult Cummings LLP, Tennessee, USA. Respondent is Jacob Anderson / Grejbrim OU (“Respondent”), Estonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <teamhealthclinic.com>, registered with NameCheap, Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 28, 2023; Forum received payment on June 28, 2023.
On June 28, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <teamhealthclinic.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 28, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2023 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@teamhealthclinic.com. Also on June 28, 2023, 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 July 7, 2023.
On July 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is one of the largest integrated health care providers in the United States.
Complainant has rights in the TEAM HEALTH mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <teamhealthclinic.com> domain name is confusingly similar to Complainant’s TEAM HEALTH mark as it merely adds the generic word “clinic” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <teamhealthclinic.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Respondent been authorized by Complainant to use the TEAM HEALTH mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent’s domain name resolves to a parked website that hosts competing pay-per-click links. Additionally, Respondent is using the domain name to divert users away from Complainant’s domain name.
Respondent registered and uses the <teamhealthclinic.com> domain name in bad faith. Respondent’s website disrupts Complainant’s business as Respondent’s disputed domain name resolves to parked website hosting competing pay-per-click links. Additionally, Respondent registered and uses the <teamhealthclinic.com> domain name to confuse and attract users for commercial gain. Finally, Respondent had actual knowledge of Complainant’s rights to the TEAM HEALTH mark prior to registering the at-issue domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in its email correspondence with the domain name provider Respondent stated: “If I understand correctly, ownership of the domain teamhealthclinic.com should be assigned to Team Health, LLC.” and “[f]rom the registrar's management portal, it doesn't seem that I can proceed without their support. So, I have also contacted udrp@namecheap.com in a separate message to start the transfer process.”
Complainant has trademark rights in TEAM HEALTH.
Respondent responded to the dispute resolution provider via email after receiving the Complaint and therein expressed its willingness to relinquish the at-issue domain name to Complainant.”
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.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)ii or 4(a)iii, when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) In the instant case, Respondent agrees to transfer its at-issue domain name to Complainant stating in its email response the dispute resolution service provider: “If I understand correctly, ownership of the domain teamhealthclinic.com should be assigned to Team Health, LLC.” and “From the registrar's management portal, it doesn't seem that I can proceed without their support. So, I have also contacted udrp@namecheap.com in a separate message to start the transfer process.” Thus, Respondent was in the process of trying to transfer the at-issue domain name to Complainant but was unable to do so because of the registrar’s lock on its transfer.
The Panel, noting that the parties agree as to the disposition of the at-issue domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a prerequisite to Complainant obtaining its requested relief ‑even where Respondent agrees to such relief‑ Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Notably, without requiring a prerequisite finding under paragraph 4(a)(i) a Complainant lacking rights in an at-issue domain name might, via the UDRP, acquire such domain name from a Respondent that also has no rights in such domain name.
Here, Complainant shows it has rights to the TEAM HEALTH mark through its registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Furthermore, the at-issue domain name contains Complainant’s TEAM HEALTH trademark less its domain name impermissible space, followed by the suggestive term “clinic”, and with all followed by the “.com” top-level domain name. The differences between the <teamhealthclinic.com> domain name and Complainant’s trademark are insufficient to distinguish <teamhealthclinic.com> from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <teamhealthclinic.com> is confusingly similar to Complainant’s WARNER BROS mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)
In light of Respondent’s implied consent to transfer the at-issue domain name to Complainant and Complainant’s rights in a mark that is confusingly similar to the at-issue domain name as discussed above, the Panel finds that further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain name should be transferred to Complainant.
Having established that the parties agree to the requested relief and that the at-issue domain name is confusingly similar to a trademark in which the Complainant has rights, the Panel finds that relief shall be GRANTED.
Accordingly, it is Ordered that the <teamhealthclinic.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 13, 2023
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