national arbitration forum

 

DECISION

 

Wolters Kluwer Health, Inc. v. Belize Domain WHOIS Service Lt

Claim Number: FA0901001241916

 

PARTIES

Complainant is Wolters Kluwer Health, Inc. (“Complainant”), represented by Andrew L. Goldstein, of Freeborn & Peters LLP, Illinois, USA.  Respondent is Belize Domain WHOIS Service Lt (“Respondent”) Wisconsin, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wolterskluwerhealth.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 13, 2009.

 

On January 12, 2009, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <wolterskluwerhealth.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name.  Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 January 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 9, 2009 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@wolterskluwerhealth.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 13, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <wolterskluwerhealth.com> domain name is confusingly similar to Complainant’s WOLTERS KLUWER mark.

 

2.      Respondent does not have any rights or legitimate interests in the <wolterskluwerhealth.com> domain name.

 

3.      Respondent registered and used the <wolterskluwerhealth.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The United States Patent and Trademark Office (“USPTO”) has issued a registration to Complainant, Wolters Kluwer Health, Inc., for the WOLTERS KLUWER mark.  (Reg. No. 2,833,796 issued April 20, 2004).  Complainant uses the WOLTERS KLUWER mark in connection with its business providing health, law, business, government, and science reference manuals in print and electronically.

 

On July 15, 2005, Respondent registered the <wolterskluwerhealth.com> domain name.  The disputed domain name resolves to a parking website with links to commercial websites of Complainant’s competitors and other health-service related websites.

 

Respondent has also been the respondent in multiple other UDRP cases wherein the disputed domain names were transferred to the respective complainants in those cases.  See, e.g., Carnival Plc v. Belize Domain WHOIS Service Lt, FA 997973 (Nat. Arb. Forum June 12, 2007); see also Colorado Mountain Junior College District v. Belize Domain WHOIS Service Lt, FA 1108530 (Nat. Arb. Forum Nov. 28, 2007); see also Inland Empire 66ers Baseball Club of San Bernadino, Inc. v. Belize Domain WHOIS Service Lt, FA 1238043 (Nat. Arb. Forum Dec. 17, 2008).

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds Complainant has established rights in the WOLTERS KLUWER mark pursuant to Policy ¶ 4(a)(i) by registration of the mark with the USPTO.  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

The <wolterskluwerhealth.com> domain name includes Complainant’s WOLTERS KLUWER mark, omitting a space and adding the generic term “health” and the generic top-level domain (gTLD) “.com.”  The omission of a space and the addition of a gTLD are irrelevant to an analysis under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).  Complainant offers many categories of professional reference guides.  One of the board categories of guides offered by Complainant are health guides.  Therefore, the term “health” has an obvious relation to Complainant’s business.  The Panel finds that the addition of “health” to Complainant’s WOLTERS KLUWER mark adds to, rather then detracts from, the confusing similarity that arises from using Complainant’s mark.  Therefore, the <wolterskluwerhealth.com> domain name is confusingly similar to Complainant’s WOLTERS KLUWER mark under Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.  If the Panel finds that Complainant’s allegations establish such a prima facie case, the burden shifts to Respondent to show that it does indeed have rights or legitimate interests in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c).  Since no response was submitted in this case, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  The Panel finds that Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate interests in the <wolterskluwerhealth.com> domain name pursuant to Policy ¶ 4(a)(ii).  However, the Panel will still examine the record in consideration of the factors listed in Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

Under Policy ¶ 4(c)(ii), if Respondent demonstrates it is commonly known by the disputed domain name, then it will have demonstrated rights or legitimate interests in said name.  The Panel finds no evidence in the record suggesting that Respondent is commonly known by the <wolterskluwerhealth.com> domain name.  Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the WOLTERS KLUWER mark, and the WHOIS information identifies Respondent as “Belize Domain WHOIS Service Lt.”  Thus, Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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.”).

 

Respondent may also prove it has rights or legitimate interests in the <wolterskluwerhealth.com> domain name by showing it is being used 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 disputed domain name is being used to direct Internet users to a parking website with a list of links to third-party websites that presumably generate referral fees for Respondent.  Using a domain name that is confusingly similar to Complainant’s mark to direct Internet users to a commercial list of links is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.  Therefore, the Panel finds Respondent does not have any rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has been the respondent in multiple other UDRP cases wherein the disputed domain names were transferred to the respective complainants in those cases.  See, e.g., Carnival Plc v. Belize Domain WHOIS Service Lt, FA 997973 (Nat. Arb. Forum June 12, 2007); see also Colorado Mountain Junior College District v. Belize Domain WHOIS Service Lt, FA 1108530 (Nat. Arb. Forum Nov. 28, 2007); see also Inland Empire 66ers Baseball Club of San Bernadino, Inc. v. Belize Domain WHOIS Service Lt, FA 1238043 (Nat. Arb. Forum Dec. 17, 2008).  The Panel infers that Respondent registers the domain names in these cases to prevent the complainants from reflecting their marks in the disputed domain names.  The Panel finds this constitutes a continuing pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii).  See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).

 

Respondent’s use of the <wolterskluwerhealth.com> domain name disrupts Complainant’s business by luring Internet users away from Complainant’s business to the parking website that contains links for third-party sites.  Some of these links directly compete with Complainant.  The Panel finds Respondent is using the <wolterskluwerhealth.com> domain name to divert Internet users to Complainant’s competitors.  This is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).

 

The website that resolves from the <wolterskluwerhealth.com> domain name displays advertisements and links to sites that are both related and unrelated to Complainant’s WOLTERS KLUWER mark.  The Panel infers that Respondent receives pay-per-click fees for these links and advertisements.  The confusing similarity of the disputed domain name confuses Internet users as to the legitimacy of Respondent’s website and further implies a connection or association with Complainant that does not exist.  Respondent’s pay-per-click advertising is seeking to profit from this confusion.  The Panel finds this constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <wolterskluwerhealth.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: February 26, 2009

 

 

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