Brookdale Senior Living, Inc. v.
Claim Number: FA0706001011906
Complainant is Brookdale Senior Living, Inc. (“Complainant”), represented by Robert
L. Brewer, of Bass, Berry & Sims
PLC,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <brookdaleseniorliving.com>, registered with Intercosmos Media Group, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 22, 2007.
On June 21, 2007, Intercosmos Media Group, Inc., confirmed by e-mail to the National Arbitration Forum that the <brookdaleseniorliving.com> domain name is registered with Intercosmos Media Group, Inc., and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc., has verified that Respondent is bound by the Intercosmos Media Group, Inc., 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 June 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 17, 2007 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@brookdaleseniorliving.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 25, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <brookdaleseniorliving.com> domain name is confusingly similar to Complainant’s BROOKDALE mark.
2. Respondent does not have any rights or legitimate interests in the <brookdaleseniorliving.com> domain name.
3. Respondent registered and used the <brookdaleseniorliving.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brookdale Senior Living, Inc., operates senior
living communities throughout the
Respondent registered the <brookdaleseniorliving.com> domain name on July 18, 2005. The domain name at issue resolves to a webpage providing links to third-party healthcare-related websites.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Consistently, panels have found that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Further, rights in a registered mark extend back beyond the registration issuing date to when the application was filed with the trademark authority. As a result, Complainant’s rights in the BROOKDALE mark for use in the promotion and provision of elder care services and living facilities extends back to its November 2003 trademark application date with the USPTO, thereby adequately demonstrating Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Respondent’s <brookdaleseniorliving.com>
domain name is a conglomeration of Complainant’s BROOKDALE mark and the common
term “senior living.” Despite the
addition of “senior living” to Complainant’s BROOKDALE mark to create the <brookdaleseniorliving.com>
domain name, Respondent has failed to adequately distinguish its domain name
from Complainant’s mark because the common term “senior living” describes the
goods and services provided by Complainant under its BROOKDALE mark, rendering
the <brookdaleseniorliving.com>
domain name confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Brown & Bigelow, Inc.
v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity). Further, the omission of spaces between terms
and the inclusion of the generic top-level domain “.com” are rendered moot in
determining confusing similarity under Policy ¶ 4(a)(i), lending additional support
to this Panel’s finding of confusing similarity between the <brookdaleseniorliving.com>
domain name and Complainant’s BROOKDALE mark.
See
The Panel, therefore, concludes Complainant has satisfied Policy ¶ 4(a)(i).
As explained by the panel in F. Hoffman-La Roche AG v. Tomasso Di
Salvatore, D2006-1417 (WIPO Feb. 1, 2007), “[p]roper analysis of paragraph
4(a)(ii) of the Policy shows that the burden of proof shifts from the
Complainant to the Respondent once the Complainant has made out a prima facie
case that the Respondent has no rights or interests in the domain names.” See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the
respondent to show that it does have rights or legitimate interests in a domain
name). Satisfied Complainant has
proffered the requisite initial showing of Respondent’s lack of rights and
legitimate interests in the <brookdaleseniorliving.com>
domain name under Policy ¶ 4(a)(ii), the Panel now looks to whether Respondent
has supplied any evidence demonstrating rights or legitimate interests in the
disputed domain name.
In
light of Respondent’s failure to respond to this proceeding, the Panel infers
Respondent holds no rights or legitimate interests in the <brookdaleseniorliving.com> domain name. See
Am.
Express Co. v. Fang Suhendro, FA 129120
(Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
However, the Panel will now examine the record to determine if there is
any evidence to impart on Respondent rights and legitimate interests in the <brookdaleseniorliving.com>
domain name under Policy ¶ 4(c).
Respondent has put forth no evidence and nothing in the record suggests that Respondent is commonly known by the <brookdaleseniorliving.com> domain name, or that Respondent has anything to do with the provision of elder care services. More aptly, in light of Respondent’s WHOIS information, it appears Respondent is a private provider of WHOIS services to other domain name registrants. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected). Similarly, there is no evidence to indicate that Complainant has authorized Respondent to register domain names incorporating Complainant’s BROOKDALE mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Thus, the Panel finds Respondent is not commonly known by the <brookdaleseniorliving.com> domain name pursuant to Policy ¶ 4(c)(ii).
Moreover, Complainant alleges Respondent has failed to use the <brookdaleseniorliving.com> domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel agrees. Mere resolution of a domain name confusingly similar to Complainant’s mark to a webpage displaying a series of links strikingly related to the goods and services provided by Complainant under that mark is not an appropriate use of the disputed domain name within the scope of Policy ¶¶ 4(c)(i) and (iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
As a result, the Panel concludes Complainant has met its
burden under Policy ¶ 4(a)(ii).
Respondent is currently using the <brookdaleseniorliving.com> domain name to resolve to a series of health-care related links. Such behavior evidences bad faith registration and use under Policy ¶ 4(b)(iii) by diverting Internet users seeking Complainant and its elder care services to third-parties offering competing and related services. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Additionally, by essentially using the <brookdaleseniorliving.com> domain name as a links directory of Complainant’s competitors, the Panel infers that Respondent is commercially benefiting from the confusion generated by the inclusion of Complainant’s BROOKDALE mark in the domain name at issue through referral fees conferred on Respondent as misdirected Internet users click through the provided links in an attempt to reach Complainant. Capitalizing on the confusion generated by the use of another’s mark in a domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Based on the foregoing, the Panel concludes Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brookdaleseniorliving.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 6, 2007
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