Novant Health, Inc. v. PPA Media Services / Ryan G Foo
Claim Number: FA1304001497428
Complainant is Novant Health, Inc. (“Complainant”), represented by Jeanine M. Mitchell of Womble Carlyle Sandridge & Rice, LLP, North Carolina, USA. Respondent is PPA Media Services / Ryan G Foo (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <novanthealth.com>, registered with Internet.bs Corp.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2013; the National Arbitration Forum received payment on April 30, 2013.
On May 8, 2013, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <novanthealth.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 May 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@novanthealth.com. Also on May 10, 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 June 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
A. Complainant
1. Complainant has used the NOVANT HEALTH mark continuously since 1997.
2. Complainant owns registrations for the NOVANT HEALTH mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 2,336,475 registered May 28, 2000).
3. Complainant owns the <novanthealth.org> domain name.
4. Respondent’s <novanthealth.com> domain name is identical to Complainant’s NOVANT HEALTH mark.
5. Respondent is not commonly known by the disputed domain name and has never operated a legitimate business under it.
6. Respondent makes no active use of the disputed domain name.
7. Respondent uses the disputed domain name to resolve to a parked website featuring links to generate click through revenue.
8. Respondent has a pattern of typosquatting behavior, evidenced by numerous UDRP decisions held against Respondent.
9. Respondent is attempting to attract internet users to its resolving website for commercial gain.
10. Respondent is attempting to confuse internet users by using a domain name that is identical to Complainant’s registered mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the NOVANT HEALTH mark. Respondent’s domain name is confusingly similar to Complainant’s NOVANT HEALTH mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <novanthealth.com> domain name, and that Respondent registered and uses 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 contends it has rights in its NOVANT HEALTH mark under Policy ¶ 4(a)(i). Complainant provides the Panel with evidence of its registration with the USPTO (Reg. No. 2,336,475 registered May 28, 2000). Complainant claims it has been using its NOVANT HEALTH mark exclusively and continuously in connection with healthcare services since 1997. Registering a trademark with a recognized agency establishes rights in the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). A complainant need not register its mark in the country that a respondent operates and it is sufficient that the complainant demonstrate rights in a mark in some jurisdiction. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel finds that Complainant has established rights in the NOVANT HEALTH mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <novanthealth.com> domain name is identical to Complainant’s NOVANT HEALTH mark. Respondent’s <novanthealth.com> domain name features Complainant’s mark in its entirety with the addition of the gTLD “.com.” Respondent also removes the space between the terms NOVANT and HEALTH. These variations are insufficient to distinguish a disputed domain name from a registered mark. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, despite the changes made within the <novanthealth.com> domain name, it is nonetheless identical to Complainant’s NOVANT HEALTH mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the <novanthealth.com> domain name. Complainant claims that Respondent has no connection or affiliation with Complainant and that it has neither licensed nor consented to Respondent’s use of the disputed domain name. Complainant argues that Respondent has never operated a legitimate business under the disputed domain name. Complainant states that the WHOIS information for Respondent lists “PPA Media Services/ Ryan G. Foo” as registrant. A respondent lacks rights in a disputed domain name when there is no evidence in the record indicating otherwise and the respondent provides no further indications that it is commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). For all of the foregoing reasons, the Panel finds that Respondent is not commonly known by the <novanthealth.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that respondent has no rights or interests in the <novanthealth.com> domain name because it is not making a bona fide offering of goods or services or a legitimate noncommercial fair use under Policies ¶¶ 4(c)(i) or (iii). Complainant further alleges that Respondent uses the disputed domain name to resolve to a parked website featuring links to generate click through revenue for Respondent. Respondent’s resolving website features links such as “Novant Health Jobs,” “Novant Health,” “Pharmacy Jobs,” “Healthcare Staffing,” “Nursing Jobs,” “Therapist Jobs,” and “Patient Access.” Using a domain name to resolve to a parked website featuring links related and unrelated to a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees. . . . is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”) The Panel therefore finds Respondent does not provide a bona fide offering of goods or services or a legitimate noncommercial fair use of the disputed domain name under Policies ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has registered and is using the <novanthealth.com> domain name in bad faith under Policy ¶ 4(b)(ii). Complainant provides the Panel with evidence of previous adverse UDRP decisions against Respondent involving domain names incorporating other established brands. See Homer TLC, Inc. v. PPA Media Servs., FA1416637 (Nat. Arb. Forum Jan. 13, 2012); see also Google Inc. v. PPA Media Servs., FA1468207 (Nat. Arb. Forum June 4, 2012). Eidence of previous adverse UDPR cases against a respondent indicates bad faith registration under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). The Panel thus finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant claims that Respondent has registered and is using the <novanthealth.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant argues that Respondent is attempting to attract and confuse Internet users by using an identical disputed domain name, as well as attempting to benefit from the goodwill of Complainant’s registered marks. Complainant claims that Respondent generates revenue from the links featured on the website resolving from the disputed domain name. Directing Internet users to a parked website by using a confusingly similar or identical domain name and collecting revenue indicates bad faith use and registration under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. Utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Based on uncontradicted Complainant’s assertions, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, the Panel finds that the content displayed at the resolving website, which includes hyperlinks related to Complainant’s business, provides sufficient evidence that Respondent had actual knowledge of the mark. Therefore, the Panel concludes that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).")
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
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 <novanthealth.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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