Inova Health System Foundation v. Adel Kebaish
Claim Number: FA1408001575155
Complainant is Inova Health System Foundation (“Complainant”), represented by John J. Yim, Virginia, USA. Respondent is Adel Kebaish (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <inovaorthopedic.com> and <inovaorthopedics.com>, registered with GoDaddy.com, LLC.
The undersigned certify that we have acted independently and impartially and to the best of our knowledge have no known conflict in serving as Panelists in this proceeding.
Jaime Delgado, Houston Putnam Lowry, Chartered Arbitrator, and Professor David E. Sorkin, as Panelists
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 14, 2014; the National Arbitration Forum received payment on August 14, 2014.
On August 14, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <inovaorthopedic.com> and <inovaorthopedics.com> 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 August 15, 2014 Complainant submitted two additional annexes.
On August 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2014 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@inovaorthopedic.com, postmaster@inovaorthopedics.com. Also on August 15, 2014, 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 September 12, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Jaime Delgado, Houston Putnam Lowry, Chartered Arbitrator, and Professor David E. Sorkin, as Panelists.
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 the domain names be transferred from Respondent to Complainant.
A. Complainant
<inovaorthopedics.com> domain names are confusingly similar to the INOVA mark in that they add a term descriptive of products offered under the mark along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests. First, Respondent is not commonly known as either of the <inovaorthopedic.com> and <inovaorthopedics.com> domain names. Second, Respondent is using the <inovaorthopedic.com> and <inovaorthopedics.com> domain names to bolster page views to Respondent’s competing endeavor.
Respondent registered and used the domain name in bad faith. First, Respondent’s use of the domain names disrupts Complainant’s business under the INOVA mark. Second, Respondent is profiting off a likelihood of confusion. Finally, Respondent registered the domain name with constructive or actual notice of Complainant’s rights.
B. Respondent
Respondent did not submit a response.
Complainant’s INOVA mark has been registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,236,936 registered Nov. 6, 2012).
Respondent’s <inovaorthopedic.com> and <inovaorthopedics.com> domain names were both registered March 29, 2013.
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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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.”).
Policy ¶ 4(a)(i) — Identical or Confusingly Similar:
Complainant claims the INOVA mark has been registered with the United States Patent and Trademark Office ("USPTO") (Reg. No. 4,236,936 registered Nov. 6, 2012). The Panel agrees this trademark registration sufficiently evidences Complainant’s Policy ¶ 4(a)(i) rights in the mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant claims the <inovaorthopedic.com> and <inovaorthopedics.com> domain names are confusingly similar to the INOVA mark in that they add a term descriptive of products offered under the mark along with the gTLD “.com.” The Panel agrees neither the descriptive terms nor the gTLD make any meaningful difference and as such, the domain names are confusingly similar to the INOVA mark under Policy ¶ 4(a)(i). See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
Policy ¶ 4(a)(ii) — Rights and Legitimate Interests:
Complainant must first make a prima facie case 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.”).
First, Complainant claims Respondent is not commonly known as either of the <inovaorthopedic.com> and <inovaorthopedics.com> domain names. “Adel Kebaish” is listed as the registrant of record for the disputed domain names. The Panel concludes Respondent is not commonly known by these domain names pursuant to Policy ¶ 4(c)(ii) based on the record provided. 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).
Second, Complainant argues Respondent is using the <inovaorthopedic.com> and <inovaorthopedics.com> domain names to bolster page views to Respondent’s competing endeavor. The domain name evidently resolves to a website at the <nationalorthopedic.com> domain name where Respondent promotes the services of Doctors Adel and Khalid Kebaish. There is nothing bona fide about promoting this business under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
First, Complainant claims Respondent’s use of the domain names disrupts Complainant’s business under the INOVA mark. The Panel notes Respondent uses the domain name to promote its own orthopedic practice. The Panel believes this competes with Complainant’s offerings and the Panel finds bad faith in this proceeding pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
Second, Complainant claims Respondent is profiting of a likelihood of confusion. The record makes it is clear Respondent is using the website to promote his own business. The Panel finds the appropriation of the INOVA mark in this competing orthopedic practice is evidence of an intent to profit on the likelihood of confusion as to INOVA’s association with these domain names. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Finally, Complainant claims Respondent registered the domain name with constructive or actual notice of Complainant’s rights. While panels have concluded constructive notice is not sufficient to support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark in Respondent’s locality and Respondent’s admitting privileges at one of Complainant’s hospitals, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inovaorthopedic.com> and <inovaorthopedics.com> domain names be TRANSFERRED from RESPONDENT to COMPLAINANT.
Jaime Delgado, Houston Putnam Lowry, Chartered Arbitrator, and Professor David E. Sorkin, as Panelists
Dated: September 23, 2014
____________
Jaime Delgado
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