The Charlotte-Mecklenburg Hospital Authority d/b/a Carolinas HealthCare System v. Pham Dinh Nhut
Claim Number: FA1203001434556
Complainant is The Charlotte-Mecklenburg Hospital Authority d/b/a Carolinas HealthCare System (“Complainant”), represented by Theresa Conduah of Alston & Bird LLP, North Carolina, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carolinashealth.org>, registered with April Sea Information Technology Corporation.
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.
Duc T. Dang as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2012; the National Arbitration Forum received payment on March 16, 2012.
On March 18, 2012, April Sea Information Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <carolinashealth.org> domain name is registered with April Sea Information Technology Corporation and that Respondent is the current registrant of the name. April Sea Information Technology Corporation has verified that Respondent is bound by the April Sea Information Technology Corporation 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2012 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@carolinashealth.org. Also on March 22, 2012, 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.
A timely Response was received and determined to be complete on April 3, 2012.
Complainant’s Additional Submission was received on April 6, 2012 and determined to be compliant with Supplemental Rule 7.
Respondent’s Additional Submission was received on April 11, 2012 and determined to be complaint with Supplemental Rule 7.
On May 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Duc T. Dang 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
The National Arbitration Forum has received a written notice dated April 18, 2012, requesting that the proceedings of the case are in Vietnamese language instead of English. Rule 11 states that the language of the proceeding is the language of the Registration Agreement. The Registration Agreement identifies Vietnamese as the language of the proceeding. However, both Complainant and Respondent submitted the Complaint, Response, and Additional Submissions in English and Vietnamese. The Panel therefore determines that the language for the proceedings of the case is English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
i. Complainant reiterates its claims regarding common law rights in the CAROLINAS HEALTH and CAROLINAS HEALTHCARE SYSTEM marks;
ii. Respondent has been subject to prior adverse UDRP proceedings;
iii. Respondent also owns multiple other infringing domain names.
B. Respondent makes the following assertions:
1. Complainant’s marks are comprised of common and generic terms;
2. Respondent’s rights in the <carolinashealth.org> domain name predate Complainant’s rights in the marks asserted;
3. Respondent is a generic domain name reseller, which is a legitimate practice and use of domain names;
4. Respondent was completely unaware of Complainant or its rights in the marks alleged;
5. Respondent has rights and legitimate interests in the disputed domain name;
6. Respondent registered and is using the disputed domain name in good faith; and
7. Additional Submission:
i. Complainant provided insufficient evidence to establish common law rights in the CAROLINAS HEALTH and CAROLINAS HEALTHCARE SYSTEM marks;
ii. Respondent states that it is operating in a different industry in a different part of the world.
Complainant, The Charlotte-Mecklenburg Hospital Authority d/b/a Carolinas HealthCare System, provides hospital, medical and healthcare services in North and South Carolina, the United States of America, under its trademark CAROLINAS HEALTHCARE SYSTEM which has been registered with the USPTO (Reg. No. 4,104,595 filed April 22, 2011; registered February 28, 2012). Complainant has also registered and used the domain name <carolinashealthcare.org> in connection with these services.
Respondent, Pham Dinh Nhat, registered the <carolinashealth.org> domain name on October 11, 2004. The disputed domain name redirects Internet users to a website offered at <heallthinsurance.org> containing links to third-party businesses, some which offer health services that compete with and/or closely linked to Complainant’s services.
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.
Complainant claims that it has established its rights in the CAROLINAS HEALTHCARE SYSTEM mark by registering it with the USPTO (Reg. No. 4,104,595 filed April 22, 2011; registered February 28, 2012). Complainant submits the trademark certificate issued by the USPTO to support its claim. The Panel finds that Complainant has established rights in the CAROLINAS HEALTHCARE SYSTEM mark under Policy ¶ 4(a)(i) dating back to filing date of the mark, April 22, 2011. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also 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.”).
Complainant also claims that it has established U.S. common law rights in the CAROLINAS HEALTHCARE SYSTEM mark through continuous and ongoing use since 1996. Complainant submits a magazine that it publishes to support this claim. The Panel notes that the magazine appears to be published by the Carolinas HealthCare System, using the CAROLINAS HEALTH CARE SYSTEM mark. The Panel also notes that, although the magazine does not appear to be from 1996, the submission does indicate that the mark was in public use since as early as the Winter of 2000. In addition, the first-use-in-commerce date of December 1996 is listed on the trademark certificate issued by the USPTO. In its Additional Submission, Complainant asserts that the mark has acquired a secondary meaning in association with its business. Therefore, the Panel finds that Complainant has established its rights in the CAROLINAS HEALTHCARE SYSTEM mark under Policy ¶ 4(a)(i), dating back to 1996, through its continuous and ongoing use in commerce. See Bob Jones Univ. v. Kane, FA 324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing of first use of the BOB JONES UNIVERSITY mark on its USPTO registration information establishes that the complainant had used the mark continuously and extensively since the time of first use, thereby establishing rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding common law rights in the BOND DIAMONDS mark because the complainant had used the mark in commerce for twelve years before the respondent registered the <bonddiamond.com> domain name).
Complainant argues that it has established its rights in the CAROLINAS HEALTH mark under the U.S. common law as well. Complainant submits a magazine published in the Winter of 2000 to establish this claim. The Panel notes that the title of magazine appears to be “Carolinas Health,” which Complainant claims is the mark, CAROLINAS HEALTH, under which it promotes its healthcare business through the use of the magazine. In its Additional Submission, Complainant asserts that the mark has acquired a secondary meaning in association with its business. The Panel concludes that Complainant’s ongoing and public use of the CAROLINAS HEALTH mark establishes rights in the mark under Policy ¶ 4(a)(i), dating back to 2000. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant also argues that Respondent’s disputed domain name is confusingly similar to its CAROLINAS HEALTH mark. The Panel however notes that the alterations to Complainant’s CAROLINAS HEALTH mark indicate that the disputed domain name may be identical to the mark. The Panel further notes that the disputed domain name appears to include the entire mark, merely removing the space between the terms of the mark and adding the generic top-level domain (“gTLD”) “.org.” As a result, the Panel concludes that Respondent’s <carolinashealth.org> domain name is identical to Complainant’s CAROLINAS HEALTH mark under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
With regard to the CAROLINAS HEALTHCARE SYSTEM mark, Complainant contends that Respondent’s disputed domain name is confusingly similar to it. Complainant states that the disputed domain name includes the entire distinctive portion of the mark, while removing the term “system,” the term “care,” and the space between the terms. Also, the Panel notes that the disputed domain name includes the gTLD “.org.” The Panel finds that Respondent’s <carolinashealth.org> domain name is confusingly similar to Complainant’s CAROLINAS HEALTHCARE SYSTEM mark 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 Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE).
While Respondent argues that its registration of the <carolinashealth.org> domain name predates Complainant’s registered rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainant’s marks. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
While Respondent contends that the <carolinashealth.org> domain name is comprised of common, generic, and descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel also finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds Complainant has proven Policy ¶ 4(a)(i).
The Panel holds that Complainant has established a prima facie case in support of its argument that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and as such the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant states that Respondent does not have any marks similar or related to the disputed domain name. The Panel notes that the WHOIS information identifies the registrant of the disputed domain name as “Pham Dinh Nhut.” Based upon the record, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant states that the disputed domain name redirects Internet users to a website offered at <heallthinsurance.org>. Complainant claims that the website offers links to third-party businesses, some which offer health services that compete with Complainant’s own product offerings. Previous panels have determined that this use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)). Therefore, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).
The Panel finds Complainant has proven Policy ¶ 4(a)(ii).
In its Additional Submission, Complainant claims that Respondent has been subject to prior adverse UDRP proceedings. The Panel notes that the citation for this proceeding is FCOA, LLC v. Pham Dinh Nhut, FA 1413706 (Nat. Arb. Forum Dec. 20, 2011). Complainant also claims in its Additional Submission that Respondent owns multiple other domain names that ostensibly infringe upon other third parties’ trademark rights. The Panel takes the view that such evidence is sufficient to prove that Respondent registered the disputed domain name as part of a pattern of bad faith registration and use, and as such the Panel holds that Respondent registered and uses the disputed domain name in bad faith under 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).
Complainant alleges that Respondent registered and is using the disputed domain name to confuse users into believing that there is an association between it and Complainant and then profiting off of that confusion. Complainant states that the website to which the disputed domain name resolves offers links to third-party websites. Complainant claims that many of these third parties are its competitors in the healthcare industry. Complainant also states that Respondent is presumably profiting from the collection of click-through fees each time an Internet user is diverted to one of the linked sites. Thus, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); 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.’”).
In its Additional Submission, Complainant also alleges that its rights in the marks asserted do in fact predate Respondent’s rights in the disputed domain name. Complainant states that the evidence provided, the magazine, establishes that the marks were in use prior to Respondent’s 2004 registration of the disputed domain name because the magazine itself is dated 2000. Complainant also states that the first-use-in-commerce date found in its USPTO trademark registration indicates that the CAROLINAS HEALTHCARE SYSTEM mark has been used since at least December of 2006. Therefore, the Panel finds that Complainant’s rights in the mark predate Respondent’s, allowing for a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has proven 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 <carolinashealth.org> domain name be TRANSFERRED from Respondent to Complainant.
Duc T. Dang, Panelist
Dated: May 28, 2012
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