HealthSouth Corporation v. ICS INC.
Claim Number: FA1304001496084
Complainant is HealthSouth Corporation (“Complainant”), represented by Michael S. Denniston of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is ICS INC. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <heatlhsouth.com>, registered with TUCOWS, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2013; the National Arbitration Forum received payment on April 23, 2013.
On April 24, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <heatlhsouth.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 April 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@heatlhsouth.com. Also on April 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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. 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.
i. Respondent has not been commonly known by the domain name <heatlhsouth.com>.
ii. Respondent’s disputed domain name resolves to a website that does nothing more than serve as a redirector site that downloads malicious software or “trojan” viruses onto the user’s computer.
i. Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
ii. Respondent was aware of the existence of Complainant’s HEALTHSOUTH mark prior to Respondent’s first use of the phrase “HEALTHSOUTH” and prior to its registration of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its HEALTHSOUTH mark.
2. Respondent’s <heathsouth.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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.
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.”).
Complainant, HealthSouth Corporation, contends that it is one of the nation’s largest providers of rehabilitation hospital, outpatient rehabilitation, in-patient rehabilitation, and home healthcare services. Complainant asserts that it is the owner of trademark registrations with the USPTO for the HEALTHSOUTH mark (e.g., Reg. No. 2,144,242, registered March 17, 1998). See Complainant’s Exhibit B. The Panel notes that although Respondent appears to reside in the Cayman Islands, the Panel finds that Policy ¶ 4(a)(i) does not require that Complainant register the mark in the country in which Respondent operates. See 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). Therefore, the Panel finds that Complainant’s registration of the HEALTHSOUTH mark with the USPTO shows its rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant asserts that Respondent’s <heatlhsouth.com> domain name is confusingly similar to Complainant’s HEALTHSOUTH mark because it contains Complainant’s entire mark, except it transposes the letters “t” and “l.” The Panel holds that Respondent’s transposition of the letter “t” and “l” does not distinguish Respondent’s domain name from Complainant’s mark, rendering the <heatlhsouth.com> domain name confusingly similar to Complainant’s HEALTHSOUTH mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel determines that Respondent’s addition of a gTLD to the domain name is irrelevant to a confusing similar analysis under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Therefore, the Panel determines that Respondent’s <heatlhsouth.com> domain name is confusingly similar to Complainant’s HEALTHSOUTH mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 contends that Respondent likewise has not been commonly known by the domain name <heatlhsouth.com>. The Panel notes that the WHOIS information lists “ICS INC.” as the registrant. See Complainant’s Exhibit D. The Panel notes that Respondent does not provide any evidence that it is known by the domain name. Thus, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 claims that Respondent’s disputed domain name resolves to a website that does nothing more than to serve as a redirector site that downloads malicious software or “trojan” viruses onto the user’s computer. The Panel notes that Respondent’s disputed domain name resolves to a website with a “High Security Alert!!!” warning stating “You are not permitted to download the file because it is infected with the virus…” See Complainant’s Exhibit E. Complainant asserts that Respondent presumably receives click-through fees for diverting Internet users to those websites and thus is using Complainant’s marks for commercial gain. The Panel determines that Respondent’s use of the disputed domain name to download malicious software onto the user’s computer is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Complainant argues that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Complainant also asserts that Respondent uses of the domain name to resolve to a directory that downloads malicious software programs onto the user’s computer. See Complainant’s Exhibit E. Complainant claims that Respondent has transposed the letter “t” and “l” in Complainant’s HEALTHSOUTH mark to intentionally divert users that have mistakenly typed “heatlhsouth” rather than “healthsouth” to the site at the domain name in issue. The Panel finds that Respondent’s attempt to intentionally divert Internet users from Complainant’s website to its own website by using a confusingly similar domain name to display links to other websites that result in financial benefit to Respondent and to download harmful malware to Internet users’ computers demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Complainant claims that Respondent was aware of the existence of Complainant’s HEALTHSOUTH mark prior to Respondent’s first use of the phrase “HEALTHSOUTH” and prior to its registration of the domain name. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
In its Policy ¶ 4(a)(i) section, Complainant alleges that by transforming the HEALTHSOUTH mark into a misspelled word, the domain name is damaging to Complainant’s business. Complainant claims that Respondent has transposed the letter “t” and “l” in Complainant’s HEALTHSOUTH mark to intentionally divert users that have mistakenly typed “heatlhsouth” rather than “healthsouth” to the site at the domain name in issue. The Panel finds that Respondent’s transposing of letters in Complainant’s HEALTHSOUTH mark constitutes typosquatting, showing bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <heatlhsouth.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 6, 2013
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