Boston Medical Center Corporation v. Ryan G Foo / PPA Media Services
Claim Number: FA1410001586917
Complainant is Boston Medical Center Corporation (“Complainant”), represented by Richard A. Sugarman, Massachusetts, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonmedicalcenter.org>, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2014; the National Arbitration Forum received payment on October 30, 2014.
On November 10, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <bostonmedicalcenter.org> 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 November 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@bostonmedicalcenter.org. Also on November 11, 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 December 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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’s BOSTON MEDICAL CENTER identifies the major teaching hospital affiliate of Boston University. Complainant is the owner of the several trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,766,788, registered September 23, 2003, filed June 4, 2002). The <bostonmedicalcenter.org> domain name is identical to the BOSTON MEDICAL CENTER mark.
2. Respondent lacks rights in the disputed domain name. Respondent has no connection to Complainant, or the words comprising the BOSTON MEDICAL CENTER mark. Respondent has not used the domain name or made any demonstrable preparation to use the domain name in furtherance of any good or service. Respondent is in the business of selling domain names and redirecting site visitors to websites other than the one associated with the Respondent.
3. The <bostonmedicalcenter.org> domain name was registered and is being used in bad faith. Respondent’s bad faith is evident from a history of adverse UDRP proceedings, which demonstrate a pattern of bad faith. The disputed domain name resolves to direct users to other websites, including websites associated with Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Boston Medical Center Corporation of Boston, MA, USA. Complainant is the owner of domestic registrations for the mark BOSTON MEDICAL CENTER which it has used continuously since at least as early as 1996 in connection with the provision of services as a teaching hospital and medical center.
Respondent is Ryan G Foo / PPA Media Services, Santiago, Chile. Respondent’s registrar’s address is listed as Nassau, The Bahamas. The disputed domain name was registered on or about October 28, 2002.
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’s BOSTON MEDICAL CENTER mark identifies the major teaching hospital affiliate of Boston University. Complainant is the owner of the several trademark registrations for the mark with the USPTO (e.g., Reg. No. 2,766,788, registered September 23, 2003, filed June 4, 2002). The Panel finds that Complainant’s valid USPTO registration suffice to establish Complainant’s rights in the BOSTON MEDICAL CENTER mark for purposes of Policy ¶ 4(a)(i), and that such rights date back to Complainant’s June 4, 2002 registration date. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <bostonmedicalcenter.org> domain name is identical to the BOSTON MEDICAL CENTER mark. The Panel notes that the disputed domain name differs from the mark by the elimination of spacing and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel finds that the <bostonmedicalcenter.org> domain name is identical to the BOSTON MEDICAL CENTER mark pursuant to Policy ¶ 4(a)(i) as the domain name incorporates the mark in full, and the omission of spacing and addition of a gTLD are inconsequential alterations. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant alleges that Respondent lacks rights in the disputed domain name. Complainant claims that Respondent has no connection to Complainant, or the words comprising the BOSTON MEDICAL CENTER mark. The Panel notes that the WHOIS record identifies “Ryan G Foo / PPA Media Services” as registrant. In light of Respondent’s failure to offer any contrary evidence the Panel finds there is no basis to hold that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(a)(i). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further argues that Respondent has not used the domain name or made any demonstrable preparation to use the domain name in furtherance of any good or service. Complainant asserts that Respondent is in the business of selling domain names and redirecting site visitors to websites other than that associated with the Respondent. The Panel is satisfied with Complainant’s allegations under the circumstances and finds that Respondent has failed to make 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). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues Respondent’s bad faith is evident from a history of UDRP proceedings, which demonstrate a pattern of bad faith. Prior panels have found bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent has a documented history of bad faith as demonstrated by prior UDRP proceedings. See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Here, Complainant contends that there are at least ninety-one decisions adverse to Respondent. See e.g., Macy’s Inc. v. PPA Media Services / Ryan G Foo., FA 1552885 (May 23, 2014); Chevron Intellectual Prop., LLC v. Ryan G Foo / PPA Medial Services, FA 1578621 (Nat. Arb. Forum Sept. 16, 2014). The Panel finds that Respondent’s history of bad faith supports Complainant’s contentions and therefore finds Respondent has engaged in a pattern of bad faith use and registration pursuant to Policy ¶ 4(b)(ii).
Complainant asserts that the disputed domain name resolves to direct users to other websites, including websites associated with business competitors. Prior panels have found evidence of bad faith where the respondent uses the disputed domain name to promote competitors of the complainant. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel here finds that Respondent’s actions support a conclusion that Respondent has registered and used the disputed domain name in bad faith.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <bostonmedicalcenter.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 23, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page