Trinidad Area Health Association, d/b/a Mt. San Rafael Hospital v. Tim Beard
Claim Number: FA1302001487054
Complainant is Trinidad Area Health Association, d/b/a Mt. San Rafael Hospital (“Complainant”), represented by Bruce Anderson of Stettner Miller, P.C., Colorado, USA. Respondent is Tim Beard (“Respondent”), Oklahoma, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msrhc.com>, <msrhc.net>, and <msrhc.info>, registered with GoDaddy.com, LLC.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2013; the National Arbitration Forum received payment on February 26, 2013.
On February 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <msrhc.com>, <msrhc.net>, and <msrhc.info> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2013 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@msrhc.com, postmaster@msrhc.net, postmaster@msrhc.info. Also on March 1, 2013, 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 March 14, 2013.
Complainant submitted an Additional Submission, which the Forum received and found to be complete and compliant on March 19, 2012. The Panel considered the Additional Submission in rendering the decision below.
On March 26, 2012, the Forum received informally an email notification that Respondent might consent to the transfer of the disputed domain names to Complainant.
On April 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Mt. San Rafael Hospital is a 25-bed hospital that has operated in the city of Trinidad, Colorado since 1889. Complainant purchased the hospital in 1969 and has managed it since that time.
- Through long and continued use, MT. SAN RAFAEL HOSPITAL has gained the status of a common law service mark owned by Complainant. In January 2007, Complainant registered the domain name, <msrhc.org>, and has used it continuously thereafter in connection with Complainant’s advertising and provision of medical care and treatment at the hospital. Consequently, Complainant has also secured common law rights in the MSRHC.ORG service mark.
- All of the disputed domain names, <msrhc.com>, <msrhc.net> and <msrhc.info>, are identical or confusingly similar to the MSRHC.ORG mark; and internet users would associate all of the names with Complainant’s hospital, as it is the only hospital in the area.
- Respondent has no rights or legitimate interests in the disputed domain names. Respondent, a former information technology employee of Complainant, admits to registering the names in March 2012 “to protect the hospital so no one could use them.” After issues arose concerning Respondent’s job performance, he resigned in June 2012 at Complainant’s request.
- Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services. He uses <msrhc.com> for a webpage entitled “Darkside” – a reference to the name allegedly given by Complainant employees to a clinic operated by Complainant’s hospital – which now includes language suggesting some unspecified future use by “concerned citizens of Trinidad.” Respondent makes no use of the remaining two disputed domain names.
- Respondent’s use of the disputed domain names also fails to constitute legitimate noncommercial or fair use. Moreover, Respondent has never been commonly known as any of the disputed domain names.
- Respondent registered and is using the disputed domain names in bad faith. In September 2012, Respondent contacted Complainant by e-mail with an offer to sell the names for $500 apiece. Later, in February 2013, after Complainant failed to respond to the first offer, Respondent sent another e-mail with an increased request for $5,000 for all three names. Moreover, if Complainant refused that offer, Respondent threatened to sell the disputed domain names to former Complainant employees who might use the names to publish negative information about Complainant's hospital. Said action is an attempt at extortion.
- Respondent’s registration of multiple domain names that are confusingly similar to Complainant’s service mark is further evidence of Respondent’s bad faith.
B. Respondent
- Although Complainant’s hospital has been in operation since 1889 and Complainant has operated it since 1969, MSRHC is not a proper service mark for the hospital because the last letter, “C.” does not relate to the hospital’s name, Mt. San Rafael Hospital.
- Respondent registered the disputed domain names on his own time, and, when he offered to sell them to Complainant for cost plus two hours of salary, Complainant refused to pay that sum to Respondent. Respondent was forced to resign from employment with Complainant only because he contested a superior’s waste of hospital funds.
- Respondent believes that there is no way internet users would mistakenly reach the disputed domain names when searching for Complainant’s hospital.
- Respondent intended to use the disputed domain names as blog sites, but became busy trying to find a new job and forgot about the names. No business reason was necessary in registering the disputed domain names, as they can be used for personal websites. The webpage, “Darkside,” is a place holder for the parked disputed domain name, <msrhc.com>.
- Respondent’s status as a former employee of Complainant does not reduce his rights to the disputed domain names any more than if he was a resident of, say, New York City.
- Respondent offered to sell the disputed domain names to Complainant for $500 each only after receiving a threatening letter from Complainant in August 2012. Respondent increased his offer to $5,000 when he found that the domain name, <msrh.com>, was on sale for $4,300. Such offers are not extortion.
- Respondent and other former employees intended to publish only publicly available information, financial and otherwise, regarding Complainant’s hospital on blogs attached to the disputed domain names. Respondent has an agreement not to speak negatively about the hospital – and has never threatened to do so – while said former employees did not seek to use the names for such negativity.
- Two words on a website hosted by a disputed domain name do not constitute bad faith.
C. Complainant’s Additional Submission
- There is no authority to support Respondent’s proposition that a trademark or service mark must be an exact acronym for the mark owner’s name, i.e. that the mark must be composed solely of the first initial of each word in owner’s name. A mark need be only distinctive; the more arbitrary or fanciful the better.
- Respondent is wrong when he states that only he and one other individual knew that the “C” in Complainant’s MSRHC mark stood for “Clinic.” In 2006, Complainant filed a trade-name statement with Colorado authorities using the trade name, “Mt. San Rafael Hospital Clinic.”
- Respondent in his Response does not suggest any proposed uses for the disputed domain names, <msrhc.net> and <msrhc.info>. Ergo, he admits that he has no rights or legitimate interests in those names. Moreover, Respondent’s stated intent to use <msrhc.com> for a blog site fails to confer any rights or legitimate interests in that name as well.
- As opposed to using <msrhc.com>, Respondent fails to show that he explored any alternative domain names to use in posting information about Complainant or its business.
Complainant has operated the Mt. San Rafael Hospital located in the city of Trinidad, Colorado, USA since at least 1969. In January 2007, Complainant registered the domain name, <msrhc.org>, to host a website that Complainant has used continuously in connection with its operation of that hospital.
Respondent is the owner of the disputed domain names, <msrhc.com>, <msrhc.net> and <msrhc.info>, which were registered on March 15, 2012. Respondent is a former employee of Complainant who resigned from his position with Complainant in June 2012.
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.
The Panel is aware that Respondent sent an informal e-mail notification to the effect that he no longer needed the disputed domain names and that “they can be given to the hospital since they want them so badly.” Respondent did not render this communication in a formal filing with the Forum, and the Panel does not believe the language used by Respondent is sufficiently consistent with a clear and unequivocal consent to transfer the disputed domain names to Complainant. Moreover, as Complainant has already filed both the Complaint and an Additional Submission and Respondent has filed a Response contesting Complainant’s filings, the Panel believes that to continue with the normal analysis under the Policy in this proceeding would not place any additional burden, financial or otherwise, upon the parties. As a result, the Panel will proceed to analyze this case as if no consent to transfer had been offered by Respondent. See LEGO v. Vilcinskas, D2010-2149 (WIPO Mar. 31, 2011) (“…in view of this slight uncertainty as well as the lack of an unambiguous consent to transfer on the formal record of this proceeding, the Panel elects to issue a substantive decision.”) (emphasis added).
Complainant admits that it has registered neither MT. SAN RAFAEL HOSPITAL nor MSRHC.ORG as service marks with any recognized authority, but that does not preclude a finding for Complainant as to Policy ¶ 4(a)(i) if Complainant can establish that it possesses common law rights in those marks. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (“…a trademark registration is not required by Policy ¶ 4(a)(i) and Complainant can rely on its common law rights to establish rights pursuant to Policy ¶ 4(a)(i).”); see also Archer v. Alberta Hotrods, D2006-0431 (WIPO June 1, 2006) (“For the purposes of the Policy common law rights are sufficient and a complainant thus need not hold a registered trademark to establish rights in a mark.”).
Given the longevity of continuous use of the mark MT. SAN RAFAEL HOSPITAL (i.e., since 1889), there is no question in the Panel’s mind that that mark has achieved common law service mark status – at least for the immediate geographical area containing Trinidad, Colorado. As to the other common law service mark claimed by Complainant, MSRHC.ORG, the result is much closer.
The Panel notes that Complainant has been using the latter mark only since January, 2007, a scant six years. However, domain name use is a powerful tool for identification. As the Panel accepts Complainant’s contention, which is not contradicted by Respondent, that Complainant has referred to that mark in its advertising for its hospital services and used the domain name to allow the public access to those services, the Panel believes that continuous use for more than six years has created sufficient public awareness for MSRHC.ORG, and also for MSRHC, to become uniquely identified with Complainant. Such awareness would be confined to the Trinidad, Colorado area, but that is sufficient to confer common law service mark status for the purposes of the Policy. The scope of the geographical area where secondary meaning has attached is not crucial for Policy considerations, especially since Respondent – a former employee of Complainant – resided within that area during the relevant period. Thus, the Panel concludes that Complainant does have common law service mark rights in MSRHC.ORG and MSRHC. See Post-Newsweek Stations, Inc. v. Kamble, FA924537 (Nat. Arb. Forum Apr. 19, 2007) (finding that the complainant had common law rights in the Detroit, Michigan area for the CLICKONDETROIT service mark based on the complainant’s continuous use of the domain name, <clickondetroit.com>, for approximately seven years); see also Pornreports.com v. Anderson, D2004-0391 (WIPO July 5, 2004) (finding that the complainant had common law service mark rights in the domain name, PORNREPORTS.COM, after use of that name for just two years and seven months): see also Australian Trade Comm. v. Reader, D2002-0786 (WIPO Nov. 12, 2002) (“Even if secondary meaning had been acquired only in a limited geographical area, Complainant would nevertheless have established sufficient common law trademark rights within the meaning of Paragraph [4](a)(i) of the Policy.”).
Since generic top-level domains such as, .com, .org, .net or .info, are unavoidable components of domain names, Policy panels have consistently held that they are immaterial when comparing disputed domain names to established trademarks or service marks for similarity. Accepting this rationale, the Panel is compelled to find that the disputed domain names, <msrhc.com>, <msrhc.net> and <msrhc.info>, are all identical to Complainant’s MSRHC.ORG service mark, as the relevant portions of the names and the mark contain exactly the same five letters, m, s, r, h and c, in exactly the same order. See Groupalia v. Santini, D2010-1979 (WIPO Jan. 26, 2011) (finding that complainant’s online use of the domain names, <groupalia.com>, <groupalia.it>, <groupalia.es> and <groupalia.pt>, gave it unregistered trademark rights in the GROUPALIA mark; and that the disputed domain names, <groupalia.info>, <groupalia.net>, and <groupalia.org>, were all identical to that mark); see also Wecosign, Inc. v. Jackson-Wright, D2010-0285 (WIPO Apr. 22, 2010) (…it is well established in many panel decisions that suffixes such as “.com”, “.org”, or “.net” should not be taken into account when considering the issue of whether a domain name is identical or confusingly similar to a trademark.’).
Accordingly, the Panel rules that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant maintains, and Respondent does not disagree, that neither Respondent nor any entity that he owns has been commonly known as any of the disputed domain names. Moreover, Respondent does not contest Complainant’s contention that Complainant has never licensed or authorized Respondent to use Complainant’s service mark. Also, the Panel has concluded that all of the disputed domain names are identical to that mark. Taking all these circumstances into account, the Panel determines that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names – a case Respondent must rebut to prevail in this proceeding. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); 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 contends, without counterpoint from Respondent, that no use has been made of <msrhc.net> and <msrhc.info> and that <msrhc.com> hosts a simple holding webpage that merely implies some unspecified future use by “concerned citizens of Trinidad.” Respondent suggests that this lack of present use is temporary, and that he and some other former Complainant employees plan to use the disputed domain names to post public records and other information, including financial data, about Complainant. However, Respondent has produced neither an affidavit from any other former employee to support this claim nor any other evidence that might demonstrate some concrete steps to enact said plan. In the absence of such material evidence, the Panel cannot fit Respondent’s actions within Policy ¶ 4(c)(i) which requires “Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services.” [emphasis added] Respondent’s mere contentions are not demonstrable preparations; and his nonuse is not use. See AIB-Vincotte v. Lozada, D2005-0485 (WIPO Aug. 29, 2005) (“…once Complainants make a prima facie showing, Respondent has to submit concrete evidence of at least demonstrable preparations in order to rebut Complainants’ showing that Respondent has not used, nor does it plan to use, the domain names in connection with the bona fide sale of goods or services.”) (emphasis added); see also Freddy Adu v. Frank Fushille, D2004-0682 (WIPO Oct. 17, 2004) (“Under Paragraph 4(a)(ii), once Complainant has established his prima facie case, ‘concrete evidence,’ not intentions, is necessary to overcome that presentation.”).
Furthermore, while Respondent’s unsubstantiated plan to post information concerning Complainant’s operations might constitute “legitimate noncommercial or fair use” of the disputed domain names if enacted, the Panel concludes that his present nonuse of the names in that manner, and his lack of concrete preparations to so use the names, means that Policy ¶ 4(c)(iii) is also inapplicable.
As Respondent has failed to rebut Complainant’s prima facie case through invocation of Policy ¶ 4(c) or otherwise, that case prevails in the Panel’s opinion.
Accordingly, the Panel rules that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent registered the disputed domain names in March 2012. Respondent resigned from employment with Complainant in June 2012, after having been requested to do so by Complainant. Respondent does not dispute these facts. Also without dissent from Respondent, Complainant maintains that in September 2012, about three months after his resignation, Respondent offered to sell the disputed domain names for $500 apiece. Respondent claims that this offer was in reply to a “threatening” letter sent him by Complainant. See Response Annex. The Panel has viewed the letter and does not find it unduly threatening, but merely a reminder to Respondent of his obligations under the Release Agreement that accompanied his resignation. Finally, both parties agree that, in February 2013, Respondent increased his sale price to $5,000.
Clearly both offers by Respondent to sell the disputed domain names to Complainant involve prices far above Respondent’s out-of-pocket costs directly related to the names. From the timing of his resignation and the offers, the Panel believes that Respondent registered the disputed domain names in anticipation of his impending departure from service with Complainant and banked them as a likely means to extract a last payment from his former employer. In view of that intent, the Panel concludes that Respondent’s actions prompt a finding of bad faith registration and use of the disputed domain names per the circumstance set forth in Policy ¶ 4(b)(i). See Filmlot, LLC v. Material Insight, FA1036138 (Nat. Arb. Forum Aug. 30, 2007) (“The Panel finds that Respondent’s efforts to sell the [disputed] domain name for an amount in excess of its out-of-pocket costs is evidence of Respondent’s bad faith registration and use of the [disputed] domain name under Policy ¶ 4(b)(i).“); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA192316 (Nat. Arb. Forum Oct. 15, 2003) (finding that the respondent’s offer to transfer the disputed domain name for the sum of $2,000 was evidence of bad faith registration and use under Policy ¶ 4(b)(i)).
Accordingly, the Panel rules that Complainant has satisfied the requirements of 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 <msrhc.com>, <msrhc.net>, and <msrhc.info> domain names be TRANSFERRED from Respondent to Complainant.
Dennis A. Foster, Panelist
Dated: April 15, 2013
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