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Southwest Catholic Health Network Corporation d/b/a Mercy Healthcare Group v. Federal Consumer Protection Group Project [2005] GENDND 274 (30 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Southwest Catholic Health Network Corporation d/b/a Mercy Healthcare Group v. Federal Consumer Protection Group Project

Case No. D2005-0247

1. The Parties

Complainant is Southwest Catholic Health Network Corporation, an Arizona corporation, doing business as Mercy Care Plan and Mercy Healthcare Group, Phoenix, Arizona, United States of America (“Complainant”). Complainant is represented by Lewis and Roca LLP of Phoenix, Arizona, United States of America.

The Respondent is Federal Consumer Protection Group Project, Phoenix, Arizona, United States of America.

2. The Domain Name and Registrar

The disputed domain name <mercyhealthcaregroup.com> (the “Disputed Domain Name”) is registered with Register.Com, Inc. (“Register.com”).

3. Procedural History

The Complaint was received by e-mail on March 5, 2005, and in hard copy on March 7, 2005, by the WIPO Arbitration and Mediation Center (the “Center”). On March 7, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the Disputed Domain Name. On March 8, 2005, Register.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2005. On March 14, 2005, Respondent’s representative sent an e-mail communication to the Center questioning its jurisdiction in and the validity of this proceeding. On March 15, 2005, the Center assured Respondent’s representative that this proceeding was valid and that Respondent agreed as part of its registration agreement with Register.com to be bound by the Policy. Further, the Center informed Respondent’s representative that Register.com, as an ICANN-approved registrar, had agreed to implement all decisions issued under the Policy, regardless of whether Respondent participates or not. Finally, the Center informed Respondent’s representative that if he is unhappy with the result of this proceeding, he may challenge it in a court of appropriate jurisdiction. Respondent did not submit any response in this proceeding. Accordingly, the Center notified Respondent of its default on April 8, 2005.

The Center appointed Steven Auvil as the sole panelist in this matter on April 15, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, located in Phoenix, Arizona, manages health care benefits for Arizona’s program for economically disadvantaged recipients and other qualifying individuals under Medicaid. Since 1994, Complainant has managed health care benefits for a group health program for small businesses and public employers in the State of Arizona. As a result, according to the Complaint, Arizona consumers have come to recognize the MERCY CARE PLAN and MERCY HEALTHCARE GROUP service marks as indicative of Mercy Care and its services. Complainant also operates an Internet web site as <mercycareplan.com> displaying its trademarks, including its MERCY HEATLHCARE GROUP trademark, and offering health care benefits services. As part of its mission, Mercy Care makes available on its web site copies of newsletters addressing important health-related topics in order to educate the public.

Respondent, also located in Phoenix, Arizona, registered the Disputed Domain Name on April 9, 2003. Complainant contends that the Disputed Domain Name has in the past operated as a web site that virtually mirrored the web site design of Complainant’s web site. Complainant submitted web site pages evidencing that the web site design was the same, the colors were the same, the MERCY CARE PLAN mark and a crucifix design appeared at the top left portion of both web sites, the SCHALLER ANDERSON OF ARIZONA, LLC name and a flower design appeared at the top right portion of both web sites, the slogan “Mercy Care – Always There” appeared at the top center of both web sites, and the slogan “Family Service Community” appeared in purple, green and blue in the middle center of both web sites. Further, according to the Complaint, Respondent at one time appeared to have copied much of the text from Complainant’s web site.

Complainant contends that in March 2004, Respondent began posting on the Disputed Domain Name web site a purported “gripe site” criticizing Complainant’s services. However, Complainant also contends and submitted evidence in this proceeding that the gripe site was nonfunctional. For example, none of the links connected users to any information, except for the “Forum” link, which did connect users to a discussion forum. However, Complainant submitted evidence that the forum discussion occurring through this link had nothing to do with Complainant, Complainant’s services, health care or insurance. Instead, Complainant submitted a significant amount of evidence indicating that the discussions that did occur concerned S&M, torture, bondage, swinger’s parties, couples seeking women, couples seeking men, and other similar topics. Indeed, Complainant submitted evidence confirming that searches for the words “healthcare” and “insurance” produced no postings on those topics. A search of the word “Mercy” produced only one posting that related to sadomasochism.

In addition, Complainant submitted evidence indicating that the “Mercy Healthcare Group Forum” contained banner advertisements for international dating service web sites, web sites that Complainant contends are associated with Respondent. Complainant submitted evidence that a forum search for “Ken” revealed that a person named “Ken” functioned as “administrator” and was actively involved in the web site’s discussion forum, posting approximately 15 messages. Kenneth Agee is Respondent’s representative in this proceeding. Pictures within the banner advertisements depict women in sexually suggestive scenes and in provocative clothing. Mouse-clicking on the banner advertisements took Internet users to web sites featuring additional photographs and statistical information on women. Internet users could purchase catalog subscriptions featuring pictures and statistical information on single foreign women for $19 to $95 per month, order addresses of single foreign women for $7 to $9 per address, or make travel arrangements to meet single foreign women in international destinations for $2,795 to $11,745 per tour.

The Disputed Domain Name currently resolves to a web site that appears to be a one page “gripe” site criticizing Complainant and Complainant’s business. Links to public agencies and resources appear to be functional. The forum link button does not now link to adult-themed content, but to a web page inviting users to click another link if they believe they have been “scamed” [sic] by Complainant’s business. However, this link does not work.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar to its common law MERCY HEALTHCARE GROUP mark, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith. Complainant requests that the Disputed Domain Name be transferred to Complainant.

B. Respondent

Respondent did not respond to Complainant’s contentions. Accordingly, Respondent did not deny those contentions.

6. Discussion and Findings

To obtain relief, paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed representations, pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences as it considers appropriate, pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Panel is persuaded that Complainant has common law rights in the mark MERCY HEALTHCARE GROUP and did so at the time that Respondent registered the Disputed Domain Name. By failing to file a response, Respondent has not contested Complainant’s common law trademark rights in the MERCY HEALTHCARE GROUP service mark. It is well settled that common law rights can provide the basis of a valid complaint under the Policy. See, e.g., Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218 (June 14, 2000). It is also well settled that eliminating spaces within a trademark and adding the “.com” suffix does not distinguish a domain name from being confusingly similar to a trademark. Nora Baumberger v. SAND WebNames - For Sale, WIPO Case No. D2001-0502 (June 7, 2001).

The Panel therefore concludes that the Disputed Domain Name is confusingly similar to the MERCY HEALTHCARE GROUP mark, a common law trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent was not licensed by Complainant to use the mark MERCY HEALTHCARE GROUP. Further, Complainant contends that the Disputed Domain Name bears no relationship to the business of Respondent, and Respondent has not presented any arguments in rebuttal. Nothing in the record suggests that Respondent has at any time used the Disputed Domain Name in connection with a bona fide offering of goods or services, or that Respondent is commonly known by the Disputed Domain Name. Respondent has not presented any arguments or evidence that it is making a legitimate noncommercial or fair use of the Disputed Domain Name, and it does not appear that it could make such a showing. In this instance, the Panel is free to infer and does infer that Respondent has no such rights or a legitimate interest in the Disputed Domain Name. See, e.g., Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000).

For these reasons, the Panel concludes that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Finally, Complainant persuasively argues that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainant essentially argues that Respondent’s bad faith is reflected in the fact that, with actual knowledge of Complainant’s trademark rights, Respondent (1) attempted to attract, for commercial gain, web traffic intended for Complainant’s web site to a web site promoting dating and adult-themed services, and (2) nothing in the record suggests that Respondent has a bona fide reason for Respondent’s choice of the Disputed Domain Name.

The Panel is persuaded that Respondent knew of Complainant’s rights in the mark MERCY HEATLHCARE GROUP when Respondent registered the Disputed Domain Name. The record indicates that both parties to this proceeding reside in Phoenix, Arizona. Further, the Panel is persuaded that Respondent was familiar with Complainant’s service mark MERCY HEALTHCARE GROUP when the Disputed Domain Name was registered because, inexplicably, for several months Respondent designed the Disputed Domain Name web site to “look and feel” exactly like Complainant’s web site before employing it as a criticism of Complainant and its business.

One issue that arises here is why the Disputed Domain Name web site was initially designed to “look and feel” like Complainant’s web site. Respondent has not offered an explanation. However, the Panel is persuaded that Respondent’s copying of Complainant’s web site, in addition to using a domain name that incorporates Complainant’s service mark, evidences Respondent’s bad faith and lack of intent to use the Disputed Domain Name in connection with a bona fide offering of services.

Another issue that arises is whether the Disputed Domain Name was registered as a legitimate “gripe site.” Complainant contends that the criticism featured on Respondent’s web site is simply a ruse for Respondent’s adult-themed forums and business opportunities. In light of the evidence submitted to support this contention and Respondent’s failure to lodge any arguments in rebuttal, the Panel is persuaded that this is the case.

Other panels have found the use of complainants’ domain names for dating and adult-themed services to constitute bad faith use of domain names. See, e.g., Volksbank eG Wolfsburg v. 01040980.com, WIPO Case No. D2004-0048 (April 16, 2004). The Volksbank panel concluded that where “Respondent is likely to be obtaining a fee for such pointing of the disputed domain name, this cannot realistically constitute a bona fide offering of the services in question.” Id. The panel continued, “Anyone typing in the disputed domain name to a web browser would not be looking for pornography or a date, but rather the Volksbank Wolfsburg website. Clearly, the content that does appear is designed to tempt the user into other things rather than his original intended purpose.” Id. “The fact that such confusion may be dispelled and replaced by annoyance or disgust once the nature of the website is revealed does not negate the fact of initial confusion.” Id. In another case in which the disputed domain name resolved to a web site offering dating services the panel similarly concluded that such use was not bona fide. See CareerBuilder, Inc. v. John Morgan, WIPO Case No. D2003-0907, (January 13, 2004).

Still other panels have found use of a complainant’s name or mark in connection with adult-themed activity to constitute bad faith in violation of the Policy. See, Estee Lauder Cosmetics Ltd; Make-Up Art Cosmetics Inc. v. Telmex Management Services, WIPO Case No. D2001-1428, (February 8, 2002) (adult escort services offered by respondent likely to tarnish complainant’s mark); BarryDiller v. Internetco Corp., WIPO Case No. D2000-1734, (March 9, 2001) (respondent tarnishes complainant’s common law mark by associating complainant’s name with adult-themed activity). To be sure, Respondent can use domain names to communicate views, post sexual forums, and offer dating services, but Respondent must not be permitted to divert consumers to its web site by causing initial interest confusion through the use of a domain name that is virtually identical to Complainant’s trademark. See, e.g., Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279, (June 7, 2000)

There is no evidence in the record suggesting Respondent has ever made a bona fide commercial or noncommercial use of the Disputed Domain Name. The evidence indicates that, before the commencement of this proceeding, the Disputed Domain Name resolved to a web site that was a mirror-image of Complainant’s web site and then began offering dating services and adult-themed content. In addition, considering that (1) Respondent never filed a Response submitting any evidence that it ever made any bona fide use of the Disputed Domain Name, (2) the Complainant owns common law trademark rights in MERCY HEALTHCARE GROUP, (3) Complainant and Respondent reside in the same city and state, and (4) the Disputed Domain Name incorporates Complainant’s trademark, the Panel fails to see any legitimate reason for Respondent’s choice of the Disputed Domain Name in any case. See, e.g., eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259, (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”).

All of these factors demonstrate Respondent’s bad faith in registering the Disputed Domain Name.

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <mercyhealthcaregroup.com> be transferred to Complainant.

Steven Auvil
Sole Panelist

Dated: April 30, 2005