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Generic Top Level Domain Name (gTLD) Decisions |
Henry Ford Health System v. Domain For
Sale Inc.
Claim Number: FA0203000105976
PARTIES
Complainant
is Henry Ford Health System,
Detroit, MI (“Complainant”) represented by Whitni
Suarez, of MedSeek. Respondent is Domain For Sale Inc., Bronx, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <henryfordhospital.com>,
registered with eNom.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict
in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 21, 2002; the Forum received
a hard copy of the
Complaint on March 25, 2002.
On
March 22, 2002, eNom confirmed by e-mail to the Forum that the domain name <henryfordhospital.com> is
registered with eNom and that Respondent is the current registrant of the
name. eNom has verified that Respondent
is bound by the eNom registration agreement and has thereby agreed to resolve
domain-name disputes
brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
March 27, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of April 16,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@henryfordhospital.com by e-mail.
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
April 24, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra
Franklin 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The disputed domain name <henryfordhospital.com>
is identical to the name of Complainant’s hospital. Complainant holds a registered service mark in HENRY FORD.
2.
Respondent has linked the disputed domain name to <abortionismurder.org>,
which tarnishes the reputation of Complainant and
Complainant’s mark. Furthermore, Respondent has offered to sell
the disputed domain name to Complainant for $985. Finally, Respondent has never been commonly known as HENRY FORD
HOSPITAL. Therefore, Respondent does
not have any rights or legitimate interests in the disputed domain name.
3.
By redirecting Internet users to a website that tarnishes Complainant’s mark
and by attempting to sell the disputed domain name
for $985, Respondent has
registered and used the disputed domain name in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Since 1915, Complainant has been
providing medical services for the Detroit, MI metropolitan community as HENRY
FORD HOSPITAL. Complainant has been
recognized as a leader in research in medicine. Among its accomplishments, Complainant developed Detroit’s first
Mohs micrographic surgery, a procedure to remove skin cancers in
1967; in 1985,
Complainant performed Detroit’s first heart transplant; and in 1995,
Complainant performed the first lung transplant
in Detroit. Complainant registered the HENRY FORD mark
with the United States Patent and Trademark Office on July 8, 1997 (Reg. No.
2,077,011).
Respondent registered the disputed domain
name <henryfordhospital.com>
on February 14, 2002. Respondent has
linked the disputed domain name to <abortionismurder.org>, a website that
offers images that tarnish and diminish
Complainant’s reputation. According to the Complaint, Respondent
offered to sell the disputed domain name to Complainant for $985.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph
4(a) of the 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; 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
Complainant has established its rights to
the HENRY FORD mark by registering the mark with the USPTO and subsequent
continuous use
in relation to hospital care.
The disputed domain name <henryfordhospital.com>
is confusingly similar to
Complainant’s HENRY FORD mark.
Even though the
disputed domain name does not incorporate the spaces of Complainant’s famous
mark, the disputed domain name is confusingly
similar to Complainant’s famous
mark. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) (finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark).
Because
Respondent incorporates Complainant’s mark in its entirety and merely adds the
generic term “hospital,” the disputed domain
name <henryfordhospital.com> is confusingly similar to
Complainant’s HENRY FORD mark. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding that, given the similarity of the
Complainant’s marks with the domain name, consumers
will presume the domain
name is affiliated with the Complainant; the Respondent is attracting Internet
users to a website, for commercial
gain, by creating a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship, or endorsement of
the Respondent’s
website); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of the
Complainant
combined with a generic word or term).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response. Therefore the Panel may presume that
Respondent has no rights or legitimate interests in <henryfordhospital.com>. See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no
legitimate interest in the domain names).
Since a Response was not filed, the Panel will presume that all
allegations in the Complaint are true. See
Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent registered a domain name that
is confusingly similar to Complainant’s mark.
Respondent has linked this domain name to
<abortionismurder.org>.
Respondent has not provided any information that it has a connection
with the “abortion is murder” website, a website that displays
offensive images
that could tarnish Complainant’s reputation as a leader in hospital care in
Michigan. Finally, Respondent offered
to sell the disputed domain name to Complainant for $985. Therefore, the Panel may infer that
Respondent has used the disputed domain name to tarnish Complainant’s mark and
Respondent’s true
motivation is not to use the disputed domain name, but to
sell it to Complainant. These actions
can be considered anything but a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i). See Rittenhouse
Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum
Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to
an “Abortion is Murder”
website and subsequently asking for compensation beyond
out-of-pocket costs to transfer the domain name, Respondent has not
demonstrated
a right or legitimate interest in the disputed domain name); see
also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding
no rights in a domain name where Respondent offered the infringing domain name
for sale and
the evidence suggests that anyone approaching this domain name
through the world wide web would be "misleadingly" diverted
to other
sites).
According to the evidence presented,
Complainant is known as “John Barry” and “Domain For Sale Inc.” Since Respondent has not presented any
evidence that it is commonly known as <henryfordhospital.com>,
Respondent has failed to satisfy
Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name).
Respondent registered the disputed
domain name that is similar to both Complainant’s mark and Complainant’s
business. Respondent has used the
disputed domain name to redirect users to a website that offers offensive
images. Respondent is known as “Domain
For Sale Inc.,” and has offered to sell the disputed domain name to Complainant
for $985. Such actions taken by
Respondent do not demonstrate a legitimate, noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See
Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the domain
name with the intention of selling the domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on Respondent’s name “Domain For
Sale Inc.,” the Panel can infer that Respondent registered the disputed domain
name in bad
faith. See Parfums Christain Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding bad faith where the Respondent’s WHOIS
registration information contained the words, “This
is domain names is for
sale.”). However, considering that
Respondent registered a confusingly similar domain name, linked it to a website
that tarnishes Complainant’s
business and mark, and requested $985 from
Complainant to end the activity, Respondent’s actions can be considered
extortion. Therefore, these predatory
activities by Respondent are evidence that Respondent has registered the
disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(i). See Ingram Micro Inc v. Noton Inc., D2001-0124 (WIPO Mar. 6, 2001)
(finding bad faith registration and use where Respondent attempted to blackmail
the Complainant
into buying the disputed domain names with threats of exposure
to the media and adverse publicity to the Complainant’s employees
and
customers).
By registering the disputed domain name,
Respondent has prevented Complainant from reflecting its mark in the
corresponding domain
name. Further,
Respondent has been involved in a pattern of such activity. See Sears, Roebuck and Co. v. Barry,
FA 105210 (Nat. Arb. Forum Apr. 1, 2002) (finding that by linking <searsrobuck.com> and
<searsdepartmentstore.com> to <abortionismurder.org>,
Respondent had an intent to sell the disputed domains name and thus, registered
the disputed domains
in bad faith); see also Rittenhouse Dev. Co.
v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002)
(finding that “when a party registers and uses a domain name that incorporates
a well-known
mark and connects the domain name with a website that depicts
offensive images,” the party has registered and used the disputed domain
name
in bad faith). Therefore, Respondent
has registered the disputed domain name in bad faith pursuant to Policy ¶
4(b)(ii). See
Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain
names, which infringe upon
others’ famous and registered trademarks); see also Am. Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a bad faith pattern of
conduct where Respondent registered many domain names unrelated
to its business
which infringe on famous marks and websites).
Finally, because of the predatory nature
of Respondent’s actions in relation and use of the disputed domain name, the
Panel concludes
that Respondent has used the disputed domain name in bad
faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the “domain names are so obviously connected with
the Complainants that the use or
registration by anyone other than Complainants
suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make
any active use of the disputed
domain names without creating a false impression of association with the
Complainant”).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby
granted.
Accordingly, it is Ordered that the <henryfordhospital.com> domain
name be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 30, 2002
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