Centura Health Corporation v. Artur Bojarov
Claim Number: FA2012001924549
Complainant is Centura Health Corporation (“Complainant”), represented by Chad T. Nitta of Kutak Rock LLP, Colorado, USA. Respondent is Artur Bojarov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <penrosepathologyresidency.org>, registered with OpenTLD B.V.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 10, 2020; the Forum received payment on December 10, 2020.
On January 19, 2021, OpenTLD B.V. confirmed by e-mail to the Forum that the <penrosepathologyresidency.org> domain name is registered with OpenTLD B.V. and that Respondent is the current registrant of the name. OpenTLD B.V. has verified that Respondent is bound by the OpenTLD B.V. 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 January 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2021 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@penrosepathologyresidency.org. Also on January 22, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 16, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made then following contentions.
Complainant, Centura Health Corporation, is a non-profit, Christian healthcare system based in Colorado. Complainant has rights in the PENROSE HOSPITAL mark through its registration with the Colorado Secretary of State (e.g., ID No. 19971208001, formed December 23, 1997). See Compl. Ex. 1. Complainant also asserts common law rights in the PENROSE mark. Respondent’s <penrosepathologyresidency.org> domain name is confusingly similar to Complainant’s PENROSE mark, as the disputed domain name adds the descriptive terms “pathology” and “residency” along with the “.org” generic top-level domain (“gTLD”).
Complainant also contends that Respondent lacks rights and legitimate interests in the <penrosepathologyresidency.org> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the PENROSE mark. Additionally, Respondent does not use the disputed domain name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent fails to make active use of the disputed domain name. Also, at various points, the domain name directed users to a website which contained Complainant’s logo in the banner, attempting to pass off as Complainant.
Respondent registered and uses the <penrosepathologyresidency.org> domain name in bad faith. At multiple times, the disputed domain name directed users to a website which mimicked the Complainant’s own. Respondent’s attempts to pass off as Complainant to disrupt Complainant’s business. The disputed domain currently redirects to an inactive website, which is also evidence of bad faith. Further, Respondent’s use of a privacy service creates a rebuttable presumption of bad faith registration. Finally, Respondent had actual knowledge of Complainant’s rights in the PENROSE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a non-profit, Christian healthcare system based in Colorado.
2. Complainant has established its trademark rights in the PENROSE HOSPITAL mark through its registration with the Colorado Secretary of State (e.g., ID No. 19971208001, formed December 23, 1997). Complainant has also established its common law rights in the PENROSE mark.
3. Respondent registered the disputed domain name on April 29, 2014.
4. Respondent fails to make active use of the disputed domain name and has caused the domain name to direct internet users to a website which contained Complainant’s logo in the banner, attempting to pass itself off as 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PENROSE HOSPITAL mark through its registration with the Colorado Secretary of State. Generally, registration of a mark with a state authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See MadisonFlatFeeHomes.Com. LLC v. Stuart Meland, FA 1724843 (Forum May 10, 2017) (“Registration of a mark with a state authority can sufficiently evince rights in a mark.”). Complainant provides evidence of its registration with the Colorado Secretary of State (e.g., ID No. 19971208001, formed December 23, 1997). See Compl. Ex. 1. Thus, the Panel finds Complainant has rights in the PENROSE HOSPITAL mark pursuant to Policy ¶ 4(a)(i).
Complainant also claims common law rights in the PENROSE mark given its extensive use of the PENROSE mark through various hospitals, affiliates, urgent care centers, clinics, and other entities within Complainant’s business. Trademark registration is unnecessary under Policy ¶ 4(a)(i) when a complainant can establish common law rights. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must demonstrate that a secondary meaning has been established through long-term continuous use and significant advertising expense. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Here, Complainant argues it would be impractical to register all of its PENROSE related marks, as that would include 26 different marks across its facilities. Complainant provides evidence of its various PENROSE marks and their use. See Compl. Ex. 2. The Panel therefore finds Complainant has common law rights in the PENROSE mark.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PENROSE and PENROSE HOSPITAL marks. Complainant argues that Respondent’s <penrosepathologyresidency.org> domain name is confusingly similar to Complainant’s PENROSE and PENROSE HOSPITAL marks, only adding the terms “pathology” and “residency” and the “.org” gTLD to Complainant’s PENROSE mark, and merely omitting the term “hospital” and adding the same terms in the case of Complainant’s PENROSE HOSPITAL mark. Adding descriptive and/or generic terms along with a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). 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.”). Omitting a term also does not necessarily distinguish a domain name from a mark under Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a)Respondent has taken the PENROSE and PENROSE HOSPITAL marks and used them in its domain name, adding the terms “pathology” and “residency” to Complainant’s PENROSE mark, and merely omitting the term “hospital” and adding the same terms in the case of Complainant’s PENROSE HOSPITAL mark, which does not negate the confusing similarity present;
(b)Respondent registered the disputed domain name on April 29, 2014;
(c) Respondent fails to make active use of the disputed domain name, and has caused the domain name to direct internet users to a website which contained Complainant’s logo in the banner, attempting to pass itself off as Complainant;
(d)Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant argues that Respondent lacks rights and legitimate interests in the <penrosepathologyresidency.org> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the PENROSE mark. When a response is lacking, relevant WHOIS information and lack of authorization may demonstrate that a Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, the WHOIS information indicates that the registrant is “Anonymize Inc.,” an anonymous individual and nothing else suggests that Respondent was authorized to use the mark. The Panel therefore finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f)Complainant also argues that Respondent lacks rights and legitimate interests in the <penrosepathologyresidency.org> domain name as it is not used for any bona fide offer for goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent makes inactive use of the disputed domain name, which does not qualify as either a bona fide offer of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant claims that the domain name currently resolves to a blank or inactive website. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii);
(g) Complainant maintains that Respondent lacks rights and legitimate interests in the <penrosepathologyresidency.org> domain name as it has, at various points, directed Internet users to a website which uses Complainant’s logo and mark in the header of the website. Respondent attempts to pass itself off as Complainant, which does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Complainant provides evidence of the disputed domain name directing to a website where Respondent displays a directory of links with Complainant’s logo as a banner at the top of the page. See Compl. Ex. 3. The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <penrosepathologyresidency.org> domain name in bad faith as Respondent has previously attempted to pass itself off as Complainant. Under Policy ¶ 4(b)(iv), using a confusingly similar domain name to pass off as Complainant displays bad faith. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Complainant provides a screenshot for the resolving website for the disputed domain name, which displays Complainant’s logo, name, and PENROSE mark prominently in the header. See Compl. Ex. 3. Thus, the Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent’s attempt to pass itself off as Complainant is evidence of Respondent’s actual knowledge of Complainant’s trademark rights. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights prior to registration is sufficient to establish bad faith, and can be shown by the Respondent’s use of the disputed domain name. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Respondent uses one of Complainant’s many programs related to its PENROSE mark, and previously had the disputed domain name direct users to a website with Complainant’s logo, name, and PENROSE mark prominently featured in the header. See Compl. Ex. 3. As the Panel agrees that actual knowledge was present, it finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the PENROSE and PENROSE HOSPITAL marks and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <penrosepathologyresidency.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 19, 2021
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