Generic Top Level Domain Name (gTLD) Decisions

Emory Healthcare, Inc., Atlanta, GA, USA
COMPLAINANT,

vs.

Gulf South Limited, Roswell, GA, USA
RESPONDENT.

DECISION
Claim Number: FA0005000094892

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are emoryhealthcare.com, emoryclinic.com, emoryhospital.com and emoryhospiTal.org, all registered with Network Solutions, Inc. (“NSI”).

PANELIST

            Charles A. Kuechenmeister.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 05/24/2000; The Forum received a hard copy of the Complaint 05/24/2000.

On 05/29/2000, NSI confirmed by e-mail to The Forum that the domain names emoryhealthcare.com, emoryclinic.com, emoryhospital.com and emoryhospiTal.org are registered with NSI and that the Respondent is the current registrant of the name.  NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy (“UDRP”).

On 05/26/2000, The Forum sent a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 06/21/2000 by which Respondent could file a Response to the Complaint, to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On 06/21/2000, having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On 06/21/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Charles A. Kuechenmeister as Panelist.

Having reviewed the communications records in the case file, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the UDRP, the 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 the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a wholly owned subsidiary of Emory University (“Emory”).  Emory has rights in a number of service marks that consist in whole or in part of the term EMORY, including but not limited to the marks.  Respondent is a domain name pirate who registered the contested domain names to "hold them hostage," primarily for sale to Emory, as the trademark owner, or to a competitor, or to prevent Emory from using these names in its domain names.  Complaint, pp. 1, 5.  Based upon the foregoing, Complainant asserts (1) that the contested domain names are identical or confusingly similar to a trademark or service mark in which Emory has rights; (2) that Respondent has no rights or legitimate interests in respect of the contested domain names; and (3) that the contested domain names have been registered and are being used in bad faith.  Complaint, p. 6.

B. Respondent

            Respondent did not file a Response  in this matter.

FINDINGS

The Complainant has furnished medical and healthcare services in the Atlanta, Georgia area for decades, using the names and marks EMORY HEALTHCARE, Emory Clinic, Emory HospitalS and EMORY UNIVERSITY HOSPITAL.  Complaint, p. 1.

Without Complainant’s knowledge or consent, Respondent registered the contested domain names between 01/04/1999 and 01/12/1999.  When contacted about these registrations by Complainant, Respondent failed or refused to communicate with the Complainant and continues to do so.  Complaint, p. 6.  The nature of Respondent's business does not appear from the evidence submitted.  Additional findings are more fully set forth below under the title DISCUSSION.

DISCUSSION

Paragraph 4(a) of the UDRP provides that the Complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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

Respondent's use of Complainant's name, EMORY, coupled with the names of health care services and facilities which themselves are virtually identical to the names of health care services and facilities, e.g. "healthcare," "hospital," "clinic," used for many years by Emory in connection with its healthcare operations, renders the contested domain names identical to or confusingly similar to Complainant's tradenames.  They are in fact identical.

Rights or Legitimate Interests

Complainant's EMORY HEALTHCARE and EMORY HEALTHCARE & Design [sic] marks are subject to U.S. Registration Nos. 2,222,078, and 2,225,907, respectively.  This is conclusive evidence of Complainant's right to the exclusive use of EMORY HEALTHCARE.  Complaint, p. 4; Maffett Declaration, Exhibit A to Complaint ("Maffett"), ¶20.  Complainant's demonstrated use of EMORY UNIVERSITY HOSPITALS, often referred to simply as EMORY HOSPITALS, to describe or refer to its adult care hospital on the Emory University campus and the other hospitals owned or operated by Emory demonstrate a convincing common law right to the mark EMORY HOSPITALS.  Maffett, ¶¶16-18 and exhibits therein referred to.  Similarly, Complainant's use of the EMORY CLINIC to describe and refer to its clinic facility since as early as 1953 demonstrate its common law right to use that mark.  Maffett, ¶¶15 and exhibits therein referred to.

Respondent registered the contested domain names between 01/04/1999 and 01/12/1999, but Respondent has not developed or even opened a web site under any of them.  Complaint, p. 5, McGrath Declaration, Exhibit B to Complaint ("McGrath"), ¶8.  The Respondent refused to respond to communications from Complainant regarding negotiations to transfer the contested domain names to Complainant.  Complaint, p. 6.  There is no evidence it offers or proposes to offer any bona fide goods or services under any of said names, or that it is commonly known by any of the said names.  See, UDRP ¶ 4(c)(i), (ii).  It is clear that the Respondent registered these domain names to sell them to the Complainant or a competitor, or simply to prevent Complainant from using them.

Bad Faith

The Panelist may consider only the information provided in the Complaint in absence of a response.  Rules ¶ 14.  It is an accepted rule of law that failure to respond operates as an admission of the truth of well pleaded allegations.  See, Board of Regents v. Stinson-Head, Inc., 504 So. 2d 1374, 1375 (Fla. Dist. Ct. App. 1987) (applying this rule in an arbitration case).  The Respondent’s failure to submit a response constitutes an admission to the Complainant’s contentions.

Even without relying on Respondent's constructive admission, however, its bad faith is affirmatively demonstrated by the evidence submitted.  Respondent registered the names over a year ago but is not yet operating any web sites using any of them.  McGrath, ¶8.  Its failure or refusal to communicate with Complainant, even for the purpose of offering defense or justification for having registered the names itself, despite repeated contacts or attempted contacts by Complainant, evidences a continuing use of the names, albeit passively, in bad faith.  The Administrative Contact for EMORYCLINIC.COM is “domain4sale,” which is common internet parlance for “this name has been registered for the purpose of selling it to the highest bidder.”  McGrath, ¶¶6, 7.  Respondent's having registered over fifty other domain names, many of which contain the famous trademarks of others, including the marks “Walt Disney” and “Magic Kingdom,” (McGrath, ¶¶4 & 5), demonstrates a pattern of conduct in this regard.  Its conduct thus meets two of the indicia of bad faith set forth in UDRP 4(b): 

(1) the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(2) the respondent has registered the domain name in order to prevent the owners of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

Based upon the foregoing, Respondent is found to have registered and to be using the contested domain names in bad faith, in violation of the UDRP.

DECISION

BASED UPON the findings above set forth, the Panelist hereby orders that the relief requested by Complainant be GRANTED, and that the contested domain names, emoryhealthcare.com, emoryclinic.com, emoryhospital.com and emoryhospiTal.org, be transferred from Respondent to Complainant.

Dated:  5 July 2000               Honorable Charles A. Kuechenmeister, Arbitrator