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Generic Top Level Domain Name (gTLD) Decisions |
DECISION
William Beaumont Hospital v. Wildfire Media
File Number: FA009000095564
PARTIES
The Complainant is William Beaumont Hospitals, Royal Oaks, Michigan ("Complainant"). The Respondent is Wildfire Media, Oak Park, Michigan ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name in issue is "beaumonthospital.com" registered with "registrars.com."
PANELIST
The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the Panelist in this proceeding.
Judge Irving H. Perluss (Retired) is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") on September 11, 2000.
On September 8, 2000, "registrars.com" confirmed by e-mail to The Forum that the domain name "beaumonthospital.com" is registered with "registrars.com" and that the Respondent is the current registrant of the name. Respondent has agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Dispute Resolution Policy ("Policy").
On September 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 2000, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.
A response was filed on October 2, 2000. Thereafter, Complainant filed an additional response on October 5, 2000. Finally, Respondent filed a late response on October 12, 2000, which the Panelist has read and considered.
On October 6, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant registered the service mark "Beaumont" with the United States Patent and Trademark Office on February 11, 1986, and the service mark "William Beaumont Hospital" with that Office on April 29, 1986. It also has common law rights in the marks "Beaumont," "Beaumont Hospital" and "William Beaumont Hospital," which Complainant has utilized for many years. It asserts, accordingly, that the domain name in issue is identical to Complainant’s marks.
2. Respondent has no rights or legitimate interest in the domain name, because prior to its registration of the domain name in issue, the name was not used in commerce by Respondent.
3. Respondent’s registration and use of the domain name in issue were in bad faith because Oak Park, Michigan, and Royal Oak, Michigan, the addresses of Complainant and Respondent, are only three miles apart. Thus, it follows that Respondent registered the domain name in issue with full knowledge of Complainant’s prior rights in the marks "Beaumont," "Beaumont Hospital" and "William Beaumont Hospital."
4. Respondent sought to sell the domain name in issue to Complainant for an exorbitant price.
B. Respondent
1. Complainant does not have a registered or common law mark with respect to the domain name in issue.
2. Complainant did register the domain names "beaumont.edu" and "beaumonthospital.org," because it is an educational and nonprofit entity. It obviously chose not to register the domain name "beaumonthospital.com" when it registered its domain names because ".com" is utilized for profit entities which Complainant is not. Because of its prior registration of the domain name in issue, Respondent does have rights and a legitimate interest in the domain name.
3. Respondent did not register and/or use the domain name in bad faith because it did not offer to sell the domain name to Complainant. The conversation between counsel related to negotiations for settlement of the litigation.
FINDINGS
1. Complainant registered its marks "Beaumont" and "William Beaumont Hospital" with the United States Patent and Trademark Office on February 11, 1986, and April 29, 1986, respectively, and, because of their long usage, Complainant, in addition, has common law rights to the marks "Beaumont," "Beaumont Hospital" and "William Beaumont Hospital."
2. Respondent registered the domain name "beaumonthospital.com" with "registrars.com" on January 7, 2000.
3. Complainant registered the domain name "beaumonthospital.edu" with the registrar NETREX.NET on June 14, 1993, and the domain name "beaumonthospital.org" with the same registrar on April 28, 2000.
4. Complainant is a well-known hospital and it has been included on U.S. News and World Reports Best Hospitals list for at least two years. It has created substantial goodwill. Its marks are famous and they are entitled to the higher protection afforded by law.
5. There has been no evidence submitted and, therefore, the Panelist cannot find that there has been actual "use" by Respondent or a transferee of the domain name in issue.
6. Complainant has charged that on or about August 11, 2000, Respondent allowed a third party to use the domain name in issue to identify a website, by sale or otherwise, but no evidence has been submitted to support the charge. The Panelist, accordingly, cannot find that there has been such utilization of the domain name in issue.
DISCUSSION
Paragraph 4(a) of the ICANN Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Complainant first charges that the domain name in issue is identical to its mark. It is to be remembered that the domain name in issue uses ".com." A domain name combination must include a top-level domain, which can be "com.," "net.," "org.," gov.," or "edu." among others. The combination also must include a second-level domain, which can be any word not already reserved in combination with the top-level domain. (See Avery Dennison Corporation v. Jerry Sumpton (9th Cir. 1999) [1999] USCA9 436; 189 F.3d 868, 871.)
The top-level domain "org." customarily is in usage by nonprofit organization and the top-level domain "edu." is utilized by educational institutions. These top-level domain names, accordingly, properly were registered by Complainant.
In 4 McCarthy (4th ed. 1996) Trademarks and Unfair Competition, §25:72.1, it is said:
The 1997 IAHC (International Ad Hoc Committee) recommended the adoption worldwide of seven new generic top-level domains (gTLDS) in addition to existing ones:
This new agreement is called the Generic Top Level Domain Memorandum of Understanding (gTLD-MoU) and was published on February 4, 1997. While implementation of the seen new top-level domains was originally scheduled for 1998, transfer of Internet authority to ICANN in 1999 put that plan on hold. One reason for the opening of new top-level domains was to permit more domain names to be available to companies with the same name. Under trademark law, several concurrent users can legally coexist in different territories (parts of the U.S. or in separate nations) or in different product and service markets. But there can only be one domain name. Thus, although there are several concurrent users of marks like ACME, BEST or NATIONAL, there can only be one ‘acme.com,’ ‘best.com,’ and ‘national.com.’ the new gTLDs would permit, for example, four different companies using the name or mark ACME to have ‘acme.firm’ (for a furniture company; ‘acme.web’ (for an Internet service provider); ‘acme.rec’ (for an owner of a soccer team); and ‘acme.info’ (for a trade journal). [Emphasis supplied.]
It is recognized that it has been held that the ".com" top-level domain indicator normally is of no importance in distinguishing the marks. (See Brookfield Communications, Inc. v. West Coast Entertainment Corp. (9th Cir. 1999) [1999] USCA9 225; 174 F.3d 1036, 1055, 50 U.S.P.Q. 1545, 1558.)
Nevertheless, by a parity of reason with Professor McCarthy’s treatise, it follows that the domain name "beaumonthospital.com" is not identical to Complainant’s marks. (See Avery Dennison Corporation v. Jerry Sumpton, supra, at 880-881.)
It must be held, however, that the domain name in issue, although not identical, clearly is confusingly similar to Complainant’s marks.
The first required element of the Policy has been met by Complainant.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy informs a Respondent that, without limitation, he may demonstrate that he has rights to and a legitimate interest in a domain name for purposes of Paragraph 4(a)(ii), as follows:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panelist cannot find that Respondent can demonstrate any of the factors listed, nor can he establish any other basis for finding that he has rights and a legitimate interest in the domain name, other than the registration of the domain name in issue.
Registration and Use in Bad Faith
The Panelist has considered the circumstances, which, for purposes of Paragraph 4(a)(iii) of the Policy, would be evidence of the registration and use of the domain name in bad faith, as follows:
(i) Circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
Complainant here urges that there was an offer by Respondent’s counsel to sell the domain name in issue to Complainant for an exorbitant price. After considering the declarations submitted, the Panelist has concluded that any offer was made in course of settlement negotiations by counsel and, indeed, was not authorized by Respondent, his client.
The Panelist, thus, has concluded that the evidence does not support this factor.
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engage din a pattern of such conduct.
Assuming, arguendo, that Respondent did act here to prevent Complainant from registering its marks in a corresponding domain name, there is no evidence of a "pattern."
The evidence, accordingly, does not support this factor.
(iii) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
The Panelist has concluded that the evidence does establish that the domain name in issue was registered in bad faith. Obviously, there would be confusion as to the "source, sponsorship, affiliation or endorsement."
The Panelist is troubled, however, by the ultimate question as to whether the domain name under the circumstances here presented is being "used in bad faith."
The problem is pointed up by Paragraphs 4 and 5a of the Second Staff Report on Implementation Documents for Uniform Dispute Resolution Policy, relating to abusive registration, submitted for the Board Meeting of October 24, 1999, where it is stated:
These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrators-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO. [Emphasis in original.]
Thus, if Respondent were actually using the domain name, Complainant would prevail with respect to this factor. The rub, however, is that there is no evidence of any "use" at all by Respondent of the domain name in issue, and the Policy requires bad faith registration and use.
Complainant does charge that Respondent is allowing a third party, by sale or otherwise, to use the domain name in issue. The Panelist has searched the file and can find no proof of this allegation.
There is no way he can determine that there is "bad faith use."
Complainant, accordingly, has not demonstrated the presence of this factor, and it cannot here prevail. In passing, it is to be noted that the registration of a domain name by a registrar does not necessarily correspond with the established principles of trademark law. (See, Delta and Matsuura, Law of the Internet (Updated 2000) §5.04(B), p. 5-56.)
DECISION
The claim of Complainant William Beaumont Hospital against Wildfire Media seeking to have the domain name of "beaumonthospital.com" transferred to it, be and the same is hereby denied.
Judge Irving H. Perluss (Retired)
Dated: October 20, 2000
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