Intermountain
Health Care Inc. v. Rodney Cyr and The Environmental Coalition
Claim Number: FA0911001294382
PARTIES
Complainant is Intermountain Health Care Inc. (“Complainant”), represented by Michael
E. Mangelson, of Stoel Rives LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <intermountainhealthcare.mobi>,
registered with Go Daddy Software, Inc.
PANEL
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.
Robert A. Fashler as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received on
Complainant’s Additional Submission was timely received on
Respondent did not file an Additional Submission.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a
Complainant has been using the trademark INTERMOUNTAIN HEALTHCARE (the
“Mark”) on a continuous and extensive basis since at least as early as 1975 in
association with its services, including hospital, medical and healthcare
services, educational services in the fields of healthcare, and insurance
underwriting and administration of insurance plans.
Complainant holds eight registrations for the Mark (either alone or in
a design format) in the United States Patent and Trademark Office (the
“USPTO”), under numbers 1,913,834, 2,733,735, 2,908,387, 3,309,180, 3,309,181,
3,309,182, 3,309,183, 3,309,184, and 3,309,185 (the “Registrations”). The
Registrations cover various components of Complainant’s services. The first
Registration issued in 1995, and the other Registrations issued between 2003
and 2007.
Complainant has established an enviable reputation for its services
through extensive and continuous marketing efforts.
The Respondent’s domain name <intermountainhealthcare.mobi> (the
“Domain Name”) is identical to the mark. The Domain Name is also confusingly
similar to the Mark.
Respondent registered the Domain Name more than 30 years after
Complainant began using the Mark and 13 years after the first Registration
issued.
Nowhere in the record, including Respondent’s WHOIS information, does
Respondent indicate that it is or ever has been commonly known by the words
“Intermountain Healthcare” or any derivation thereof. Until some time after the
cease and desist letter discussed in the following paragraph, Respondent used
the Domain Name only to resolve to a website (“Respondent’s Website”) that
copied content directly from Complainant’s website (“Complainant’s Website”) in
violation of copyrights owned by Complainant.
On
On
Also on
There are so many different ways people could
use the term inter mountain health care could be used [sic] on the
internet. It could be a forum, or a
blog, or used nationally with a different application then a regional
hospital. Possibly
internationally. Possibly a
holistic food manufacturer may like the name for their product. Or, a demographic company may want the name
for intra, inter and urban health care.
This may be an incredible name for the hospitals little regional application,
but many others may think their application has merit to the name as well. It is way too broad and general, lacking
uniqueness, to have the audacity to think [sic] the linking of common words
offer some international cyber rights.
On
Here is our response on the domain name. Being a big fish in a little pond is nice, however others would certainly like to have this .mobi
TLD as well.
At some time after those communications, Respondent redirected the Domain Name, so that it now resolves to a website providing general information on the .mobi top level domain.
The WHOIS database for the Domain Name identifies The Environmental Coalition as the owner of the Domain Name. The name The Environmental Coalition is not remotely related to Intermountain Healthcare.
There is a lack of evidence showing that Respondent is commonly known by the Domain Name.
Given Complainant’s long-standing exclusive rights in the Mark, Respondent cannot legitimately refer to itself by any derivation of the Mark.
Complainant has not given Respondent any license, permission, or authorization to use the Mark or to register a domain name incorporating the Mark.
By copying Complainant’s copyrighted material and displaying it on Respondent’s Website, Respondent was attempting to pass itself off as Complainant, which evidences Respondent’s lack of rights and legitimate interests in the Domain Name.
Redirecting the Domain name to a generic website providing information about the .mobi top level domain also indicates Respondent’s lack of legitimate rights and interests in the Domain Name.
Respondent demonstrated a lack of legitimate rights and interests in the Domain Name by offering to sell the Domain Name to Complainant.
It is appropriate to conclude that Respondent had knowledge of the Mark at the time that it registered the Domain Name for the following reasons:
(a)
the Mark was generally well known as a consequence of
significant use and publicity over 30 years;
(b)
the Domain Name is obviously connected with the Mark;
(c)
Respondent used the Domain Name in an attempt to pass
off its business as that of Complainant; and
(d) Respondent had constructive notice of the mark as a consequence of the Registrations, the earliest of which issued more than 13 years prior to registration of the Domain Name.
Respondent demonstrates bad faith by registering the Domain Name with knowledge that the Domain Name was identical to the Mark.
Respondent demonstrated bad faith by attempting to pass itself off as Complainant, creating a likelihood of confusion with the Mark as the source or sponsorship of the website associated with the Domain Name.
Respondent’s primary purpose in registering the Domain Name was the bad faith purpose of selling the Domain Name to Complainant for consideration in excess of Respondent’s costs directly related to the Domain Name. Specifically, Respondent demonstrated that bad faith purpose when Respondent offered to sell the Domain Name to Complainant for $3,000. Respondent further demonstrated bad faith when in response to Complainant’s refusal to buy the Domain Name for $3,000, Respondent then threatened to sell it to others.
Merely by registering a domain name
that is so obviously connected with Complainant’s well-known Mark strongly
suggests bad faith.
B. Respondent
It is difficult to paraphrase or characterize the Response, so the
entire Response is reproduced as follows:
Someone from Intermountain Healthcare Regional
Hospital (IMHC) IT department initially called The Environmental Coalition. This person
spoke at length with an intern who handles our web matters. The intern asked me if they could use the Go
Daddy website instant converter tool to show them how it looks after a site has
been converted to .mobi. During the
telephone conversation the person from IMHC told our intern they thought the
domain www.intermountainhealthcare.mobi was worth $3,000 - $5,000. We mentioned that we don’t know about valuing
a domain, The Environmental Coalition prefers to do thing for our members as
gesture of a favorable relationship…by the way there is no cost associated with
being a member.
Following that, we received a letter from an external
IMHC hired lawyer. At that time, our
intern realized he mistakenly left the office immediately following the
conversation with the IMHC person and the domain was unchanged from the .mobi
state he had shown earlier. When this
was realized the domain was immediately placed back in its original state – so
as not to show the IMHC site conversion.
The Environmental Coalition is working on a research
study concerning healthcare in the mountainous regions of the
Also, The Environmental Coalition has received
considerable donations in the form of hotel stays when traveling on business
from InterMountain Management ~ who is a nationwide hotel developer. We thought of transferring the domain to
them, as reciprocity for their kindness towards our organization over the years…their
employees could use it as reference for InterMountain Management Human
Resources department posting of their healthcare matters.
We received the initial letter from IMHC outsourced
legal counsel and we responded by asking IMHC to call us. Mr. Morris Linton called saying he was the
senior legal counsel for IMHC, and obviously has handled multi-million dollar
lawsuits, belligerently asking – what are we doing with their property. I attempted to explain to him that there are
other uses for the name and even though they are a small regional hospital
concern they did not have rights across all industries and uses. He said his expertise was not in this area
and threatened legal action if the domain was not transferred to them
immediately. It was relayed to him that
we were told the domain was worth $3,000 to IMHC. A contentious offer of $500.00 was refused
The Environmental Coalition because we would use it for our purposes. The irony is if they had taken a simple plain
speaking approach in the beginning, by discussing what we intended to use it
for and how we might consider transferring the name to them, there was an
excellent possibility that we may not have used it for our purposes, or for the
purposes of a constituent. But now we
are certainly going to use the domain www.intermountainhealthcare.mobi in-house
or transfer it to an existing member company.
Intermountain Healthcare is not a famous name or
company: Item 5.a (of the IMHC complaint) the first sentence states “providers
that serves the medical needs of the Intermountain West Region of the
We would like to keep the domain
www.intermountainhealthcare.mobi for our purposes.
Respondent did not provide any attachments or exhibits together with
that written submission.
C. Complainant’s Additional
Submission
Complainant strongly disputed the facts that were asserted and implied
in the Response.
Complainant contends that the following statement made in the Response
is false:
The Environmental Coalition has received
considerable donations in the form of hotel stays when traveling on business
from InterMountain Management ~ who is a nationwide hotel developer. We thought of transferring the domain to
them, as reciprocity for their kindness towards our organization over the
years…their employees could use it as reference for InterMountain Management
Human Resources department posting of their healthcare matters.
Complainant says that it contacted InterMountain Management, LLC to
verify the truth of the allegations made by Respondent. On
I am contacting you in response to your
conversation with Nikki Tinnerello and Tod Cagle regard [sic] InterMountain
Management’s relationship to The Environmental Coalition and Mr. Rodney Cyr.
I am the IT Coordinator for InterMountain
Management. The first contact we had
from Mr. Cyr came in the form of a voicemail he left for our company’s owner
(Dewey Weaver) a month or two ago.
Mr.Weaver called me into his office to listen to the voicemail and see
if it was anything we needed to respond to.
In the voicemail, Mr. Cyr introduced himself (with no mention of the
name of his company that I can recall), and he stated that he owned the domain
name “InterMountainHealthCare.mobi”. He
said that he would like to offer to give us the domain for possible use by our
human resource department.
I visited the domain to find a simple
placeholder website. Considering that we
already own our own domain (intermtn.biz), and provide our employees with a
privately accessible extranet site as a subdomain, I decided that we really had
not use for the domain he was offering.
I assumed that he was contacting us from a list of companies that might
share an interest in his domain, so I didn’t feel the need to respond to his
query, and we have not heard from him since.
I spoke with Mr. Weaver this morning, and he
has never heard of the Environmental Coalition or Mr. Rodney Cyr, outside of
the cold-call voicemail I mentioned above.
Mr. Weaver approves all charitable donations, and he has never donated
anything to this organization nor to Mr. Cyr.
We certainly don’t have a longstanding relationship with Mr. Cyr or his
company, as his letter claims.
Please let me know if you need any additional
information or if you require any further clarification from us regarding this
matter.
Complainant also disputes all factual allegations set out in the
Response in relation to communications that Respondent says occurred between
“someone from
Complainant’s Additional Submission also:
(a)
denies all additional factual statements and arguments
made, suggested or implied by Respondent; and
(b) points out that the Response does not dispute the existence of the Registrations, does not prove that Respondent has any rights or legitimate interests in the Domain Name, and does not provide any explanation, let alone evidence, of how its registration and use of the Domain Name was not in bad faith.
D. No Additional Submission
Filed by Respondent
Respondent has not filed an Additional Submission in reply to
Complainant’s Additional Submission.
FINDINGS
For the reasons set forth below, the Panel
finds that Complainant has proven all of the elements of Paragraph 4 (a) of the
Policy and orders that the Domain Name be transferred to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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;
(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.
A. Defaults by Respondent
For the most part, the Response fails to address the three elements at issue in this proceeding and provides no evidence of any of its allegations. Accordingly, the Response substantially fails to satisfy the requirements of Paragraph 5 (b) (i) of the Rules, because it does not respond specifically to the statements and allegations made in the Complaint and does not set out the bases for Respondent to retain registration and use of the Domain Name.
The Response does not comply with Paragraphs 5 (b) (iii), (vii) or (viii) of the Rules. Paragraph 5 (b) (viii) is particularly relevant because it requires the Respondent to conclude the Response with the following certification in the Response:
Respondent certifies that the information
contained in this Response is to the best of Respondent's knowledge complete
and accurate, that this Response is not being presented for any improper
purpose, such as to harass, and that the assertions in this Response are
warranted under these Rules and under applicable law, as it now exists or as it
may be extended by a good-faith and reasonable argument
Pursuant to Rule 14 (b), the Panel finds that Respondent is substantially in default of Rule 5 (b).
B. Credibility
The Response raises serious questions about Respondent’s credibility.
Respondent asserts facts about an
alleged relationship with InterMountain
Management, LLC . In its Additional Submission,
Complainant submitted new evidence, which, if true, would reveal Respondent’s
allegations of fact to be completely fabricated. That evidence consisted of an
unsworn statement in an email from an individual employed by InterMountain
Management, LLC, Mr. Josef Cook. In that email, Mr
Cook addressed his own experiences as well as experiences recounted to him by
the owner of InterMountain Management, LLC, Mr. Dewey
Weaver.
It cannot be denied that the evidence tendered by Complainant on this
subject is unsworn and contains hearsay. However, the Panel still considers the
email to be reliable and admissible in the context of a UDRP proceeding. Of
equal, if not greater, importance Respondent had the opportunity to contradict
Complainant’s evidence with its own Additional Submission, but it chose not to
do so.
Respondent and Complainant also disagree on whether or not another
event alleged by Respondent actually occurred.
Respondent appears to be asserting that the Domain Name resolved to a
website displaying content copied from Complainant’s website only as a consequence
of some telephone conversation between “someone from
The only other evidence reflecting Respondent’s state of mind can be
found in the two emails from Mr. Cyr provided by Complainant. Both are repeated
verbatim above in this decision. Those communications are palpably
disingenuous. Respondent’s obvious intent is to manipulate Complainant into
paying a significant amount for the Domain Name. The implicit threat to sell
the Domain Name to others is thinly veiled.
For the foregoing reasons, the Panel expressly finds that Respondent lacks credibility.
Complainant holds rights in the
Mark by virtue of the Registrations, which all issued in the USPTO before the
Domain Name was registered. Under
The Domain Name - intermountainhealthcare.mobi - incorporates the
entire Mark - INTERMOUNTAIN HEALTHCARE. The only differences are: (i)
the space between the words “intermountain” and “healthcare” have been removed,
and (ii) the generic top-level domain “.mobi” has been added. The Panel finds that the Domain Name is identical to Complainant’s INTERMOUNTAIN
HEALTHCARE mark under Paragraph 4 (a)(i) of the
Policy. See George
Weston Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum
The Panel finds that Complainant
has satisfied its burden under Paragraph 4 (a) (i) of the Policy.
Under Paragraph 4(a) (ii) of the
Policy, Complainant must establish a prima facie case that Respondent
lacks rights and legitimate interests in the Domain Name. As the requirement is
to prove a negative and the relevant information is, for the most part, within
the exclusive knowledge of Respondent, Complainant’s burden is light. Once Complainant satisfies
that burden, the onus shifts to Respondent to prove that it does have rights or
legitimate interests. See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Complainant provided evidence that
Respondent’s Website displayed material about Complainant that was copied from
Complainant’s Website and which clearly identified Complainant and its
business, products and services. Complainant contends that such activity
constitutes passing off and demonstrates that Respondent lacks rights and
legitimate interests in the Domain Name. Respondent addressed that allegation
as follows:
Someone from Intermountain Healthcare
Regional Hospital (IMHC) IT department initially called The Environmental
Coalition. This person spoke at length with an intern
who handles our web matters. The intern
asked me if they could use the Go Daddy website instant converter tool to show
them how it looks after a site has been converted to .mobi….
Following that, we received a letter from an
external IMHC hired lawyer. At that
time, our intern realized he mistakenly left the office immediately following
the conversation with the IMHC person and the domain was unchanged from the
.mobi state he had shown earlier. When
this was realized the domain was immediately placed back in its original state
– so as not to show the IMHC site conversion.
That is a exceedingly vague and elusive
recounting of the supposed facts. When did this alleged event occur? What is
the identity of the intern? Who was the representative of Complainant who is
supposed to have called? Why did Respondent not provide an affidavit of the
intern to back up its story? In its Additional Submission, Complainant flatly
denies that the alleged event occurred, and provides an affidavit in support of
that position. Respondent chose not to reply to that evidence although it was
entitled to do so.
As already noted, the Panel finds Respondent to be lacking credibility
both generally and in respect of this particular allegation. The Panel concludes
that Complainant’s version of the facts is far more credible. Accordingly, the
Panel finds that up to the time that Complainant sent Respondent the cease and
desist letter, the only manner in which
Respondent used the Domain Name was to display material copied from
Complainant’s website that clearly identified Complainant and its business,
products and services. This constitutes some evidence tending to show that
Respondent lacks rights and legitimate interests in the Domain Name. See Choice Hotels Int’l, Inc. v. Martin Koot, FA 1283172 (Nat. Arb.
Forum
Complainant also argues that all
available evidence demonstrates that Respondent is not generally known by the
name Intermountain Healthcare. That evidence includes the WHOIS information for
the Domain Name, which identifies the Registrant as Rodney Cyr and the
Registrant Organization as The Environmental Coalition. The Panel also notes
that the Response, which was provided in the form of a letter on Respondent’s
letterhead stationary, identifies only Mr. Cyr and The Environmental Coalition.
The same holds true for the two emails from Mr. Cyr discussed earlier. Further,
neither website to which the Domain Name resolved identified Respondent as Intermountain Healthcare. The Panel accepts
these facts as some evidence tending to show that Respondent lacks rights and
legitimate interests in the Domain Name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum
Complainant argues that Respondent’s
willingness to part with the Domain Name for a price in excess of its out-of-pocket registration costs is
further evidence that Respondent lacks rights and legitimate interests in the
disputed domain name under Paragraph 4 (a) (ii) of the Policy. The Panel
accepts these facts as some evidence tending to show that Respondent lacks
rights and legitimate interests in the Domain Name. See Reese v. Morgan,
FA 917029 (Nat. Arb. Forum
The Response and the two emails from Mr. Cyr provide additional evidence tending to support the conclusion that Respondent does not have any rights or legitimate interests in the Domain Name. These communications clearly demonstrate that Respondent never made any real use of the Domain Name for any purpose other than re-sale. Respondent went out of its way to communicate – in what appears to be a deliberately vague and elusive manner - how it might choose to use the Domain Name or to transfer it to another party. For example, the Response contains the following statements:
The Environmental Coalition is working on a
research study concerning helalthcare in the mountainous regions of the
...We thought
of transferring the domain to them… .
…we could
use it for our purposes… .
These communications reveal that the Domain Name was not connected to any other activities in which Respondent was legitimately engaged. There was clearly no nexus of activity to which bare ownership of the Domain Name could be linked and thereby provide an objective basis that might give rise to rights or legitimate interests. The Panel finds that these facts constitute some evidence tending to show that Respondent lacks rights and legitimate interests in the Domain Name.
Complainant asserts, and Respondent does not deny, that Complainant has not given Respondent any license, permission, or authorization to use the Mark or to register a domain name incorporating the Mark.
Having regard to all of the foregoing facts,
taken together, the Panel finds that Complainant has fully satisfied its burden
under Paragraph 4 (a) (ii) of the Policy. In fact, Complainant has made out
more than a prima facie case.
Complainant has also made submissions regarding Paragraph 4 (c) of the Policy. However, it is not necessary for the Panel to consider those arguments because the Respondent has fallen far short of proving, or even asserting, any of the elements set out in Paragraph 4 (c) of the Policy.
Complainant submitted the affidavit
of Mr. Morris Linton, Complainant’s senior counsel, stating that he had a
telephone conversation with Mr. Cyr on
The Panel finds that Respondent’s offer to sell the Domain Name is
evidence of bad faith registration and use under Paragraph 4 (b) (i) of the
Policy. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum
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 <intermountainhealthcare.mobi> domain
name be TRANSFERRED from Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: 31 December 2009
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