The Nemours Foundation v. Above.com Domain Privacy
Claim Number: FA1509001640056
Complainant is The Nemours Foundation (“Complainant”), represented by Lucy Jewett Wheatley of McGuireWoods LLP, Virginia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nemourshospital.com>, registered with Above.com Pty Ltd.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 29, 2015; the Forum received payment on September 29, 2015.
On October 1, 2015, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <nemourshospital.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 October 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2015 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@nemourshospital.com. Also on October 1, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
United States Registrations
Mark U.S.
Registration No. Registration Date Goods and Services
NEMOURS 2,777,710 October 28, 2003 Medical services; health care services; hospital services; operation of medical clinics; medical trauma center services
NEMOURS 2,777,709 October 28, 2003 Educational services
NEMOURS 2,777,708 October 28, 2003 Conducting medical and scientific research
NEMOURS 2,777,711 October 28, 2003 Charitable fundraising in the fields of health, medical and hospital care for infants, children, adolescents, the elderly, and their families
NEMOURS BRIGHTSTART! 3,901,196 January 4, 2011 Printed instructional, educational and teaching materials in the field of educational testing services
[DESIGN-redacted]
3,041,482 January 10, 2006 Medical services; health care services; hospital services; operation of medical clinics; medical trauma center services
3,041,479 January 10, 2006 Conducting medical and scientific research
3,041,478 January 10, 2006 Educational services
3,156,312 October 17, 2006 Charitable fundraising in the fields of health, medical and hospital care for infants, children, adolescents, the elderly, and their families
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds (ICANN Rule 3(b)(ix)):
A. The Domain Name is Nearly Identical and Confusingly Similar to Several Marks in which Complainant has Rights
1. Complainant The Nemours Foundation (“Nemours” or “Complainant”) is a non-profit organization dedicated to children’s health. As one of the largest physician practices in the country delivering subspecialty pediatric care, Nemours operates the Nemours / Alfred I. duPont Hospital for Children serving the Delaware Valley area, as well as Nemours Children’s Hospital in Orlando, Florida, and Nemours Children’s Clinics in Wilmington, in South Jersey, in Southeast Pennsylvania and throughout Florida.
2. For approximately the last seventy-five (75) years, Complainant has offered their high quality children’s health and charitable services under the NEMOURS brand. Complainant has devoted significant time and resources to developing the reputation and goodwill associated with the NEMOURS trademark.
3. Complainant is the owner of the five (5) United States Trademark Registrations for NEMOURS, and four (4) United States Trademark Registration for a stylized version of the NEMOURS mark that are listed above and are valid and subsisting on the Principal Register in the United States Patent and Trademark Office (“USPTO”) at all times since their respective registration dates (collectively, the “NEMOURS Marks”).
4. Specifically, Complainant owns the trademark NEMOURS which is registered with the United States Patent and Trademark Office in Class 44 in connection with medical services and health care services (U.S. Reg. Nos. 2,777,710 and 3,041,482), conducting medical and scientific research in Class 42 (Reg. Nos. 2,777,708 and 3,041,479), educational services in the field of health care in Class 41 (Reg. Nos. 2,777,709 and 3,041,478), and charitable fundraising for use in the fields of health, medical, and hospital care in Class 36 (Reg. Nos. 2,777,711 and 3,156,312). Complainant also owns NEMOURS BRIGHTSTART! which is registered in Class 16 in connection with teaching materials in the field of educational testing services to screen children at risk of dyslexia. Nemours’ exclusive rights to the NEMOURS Mark under these registrations are incontestable pursuant to 15 U.S.C. § 1065. These registrations remain in full force and effect and are conclusive evidence of the validity of the marks, of Complainant’s registration and ownership of the marks, and of Complainant’s exclusive right to use the marks in the United States.
5. Complainant also owns the domain name <nemours.org> and the patient web portal <mynemours.nemours.org/mynemours/> which allows consumers to access their children’s medical records, which incorporate the NEMOURS Marks.
6. As a result of Complainant’s extensive sales, advertising, and promotion of its services under the NEMOURS Marks, and through favorable industry acceptance and recognition, members of the relevant consuming public have come to recognize and identify Complainant as the source of high quality charitable and children’s health services offered in connection with the NEMOURS Marks.
7. Accordingly, the NEMOURS Marks are assets of incalculable value as identifiers of Complainant and, among other things, its high quality services and goodwill.
8. The disputed domain name Respondent registered and is using is nearly identical to the NEMOURS Marks. The risk of confusion and harm to Complainant stemming from Respondent’s use of a domain name that is nearly identical to the NEMOURS Marks is exacerbated here because Respondent is using the disputed domain to resolve to various websites, which appear to alternate randomly, including one which hosts mousetrapping malware, one which seems to host fraudulent content, and another which hosts pay-per-click ads to competitors of Complainant. True and correct copies of the web pages at the disputed domain are attached as Exhibit C to this Complaint.
B. Respondent and Respondent’s Business
1. Respondent is not a franchisee of, or otherwise associated with, Complainant. Upon information and belief, Respondent does not offer any health-related goods or services.
2. Instead Respondent’s business evidently involves registering a domain name that incorporates the well-recognized NEMOURS trademark, and then profiting off of pay-per-click links or maliciously “mousetrapping” when consumers visit the domain name seeking information on Complainant. Specifically, on June 7, 2008, Respondent registered <nemourshospital.com> (the “Domain”).
3. Upon information and belief, Respondent did not, and does not have, a legitimate interest or reason to register and use a domain name incorporating the NEMOURS trademark. The Domain resolves at webpages of pay-per-click links or malware, and do not include any information on legitimate goods or services offered by Respondent.
4. Put simply, Respondent is engaging in a textbook case of trademark infringement and cybersquatting in an attempt to disrupt Complainants’ business and to attract customers by trading off the goodwill embodied in the NEMOURS Marks for its own commercial gain.
[a.] Respondent’s Domain Name Is Confusingly Similar to Complainant’s NEMOURS Marks. [ICANN Policy ¶4(a)(i); ICANN Rule 3(b)(ix)(1).]
1. The Domain is nearly identical to the NEMOURS Marks.
2. The Domain completely subsumes the NEMOURS Marks. This alone makes it confusingly similar. See Homer TLC, Inc. v. Zilfiqar Ahmed/Super Ads Junction, FA1605517 (Nat. Arb. Forum Mar. 17, 2015) (finding <onlyhamptonbay.com> confusing similar to the HAMPTON BAY mark); Hewlett-Packard Co. v. Posch Software, FA0095322 (Nat. Arb. Forum Sept. 12, 2000) (finding <hp-software.com> confusingly similar to the HP Mark).
3. Moreover, although the Domain incorporates the descriptive term HOSPITAL and the gTLD “.com” which are not present in the NEMOURS Marks, the inclusion of those elements does not mitigate the risk of confusion. It is well-settled that adding a gTLD such as .com is not sufficient to distinguish a domain name from a mark. See 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Nat. Arb. Forum Feb. 16, 2015) (stating that the addition of a general top-level domain, such as .com, does not prevent a finding that the domain is confusingly similar to a mark); Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (same). It is also well-settled that “[t]he mere addition of a generic or descriptive word” – such as HOSPITAL which is descriptive of Complainant’s services – “to a registered mark does not negate the confusing similarity of [a] Respondent’s domain names pursuant to Policy ¶4(a)(i).” Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, FA0290633 (Nat. Arb. Forum Aug. 11, 2004) (finding <citibankonlinebanking.com> and <citibankbusinessonline.com> confusingly similar to CITIBANK); see also 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Nat. Arb. Forum Feb. 16, 2015) (finding <results24hrfitness.com> confusingly similar to 24 HOUR FITNESS under Policy ¶4(a)(i)); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contained the identical dominant GUINNESS element, despite the presence of other descriptive or generic terms).
4. In fact, adding HOSPITAL to the Domain here further increases the confusing similarity between the Domain and the NEMOURS Marks. As explained above, Complainant operates a number of hospitals. As a result, including the word HOSPITAL only increases the risk that consumers will be likely to believe mistakenly that Complainant is the entity associated with the webpages hosted by the Domain. The Domain is therefore confusingly similar to the NEMOURS Marks.
5. The Domain is therefore virtually identical, and confusingly similar to the NEMOURS Marks.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain. [ICANN Policy
¶4(a)(ii); ICANN Rule 3(b)(ix)(2).]
1. Respondent has no rights or legitimate interests in the Domain.
2. Complainant has consistently used the NEMOURS Marks since at least as early as 1949. To protect its substantial investment and the goodwill associated with those marks, Complainant obtained, and continues to own, federal registrations for nine of its NEMOURS marks. The majority of the registrations issued between ten to twelve years ago and are incontestable, while the most junior registration issued almost five years ago. Today, all of Complainant’s NEMOURS Marks are well-known by relevant consumers, and they are distinctive. See Hodgdon Powder Co. v. Alliant Techsystems, Inc., 497 F. Supp. 2d 1221, 1235 (D. Kan. 2007) (explaining that incontestable marks are irrefutably distinctive); Pinehurst, Inc. v. Wick, 256 F. Supp. 2d 424, 428 (M.D.N.C. 2003) (finding that when marks are federally registered, there is a legal presumption that they are distinctive).
3. Respondent has no rights in the NEMOURS Marks. Complainant has never granted Respondent any license or other rights to use those marks in commerce for any purpose, and Respondent does not own any trademark registrations for NEMOURS.
4. Respondent is not commonly known by any name related to NEMOURS. WHOIS information for the Domain confirms this fact. See 24 Hour Fitness USA, Inc. v. Domain Admin/Private Registrations Aktien Gesellschaft, FA1599649 (Nat. Arb. Forum Feb. 16, 2015) (finding that WHOIS registry information is a factor in determining that a registrant is not commonly known by a domain name); Am. Express Co. v. (This Domain is for Sale) Joshuathan Invs., Inc., FA0154647 (Nat. Arb. Forum June 3, 2003) (same).
5. Moreover, Respondent is not engaging, and has not engaged, in a bona fide offering of goods or services under, or a fair use of, the Domain. Instead, Respondent uses the Domain – which is almost identical to Complainant’s domains and which subsumes four of the NEMOURS Marks in their entirety – to resolve to various websites, including pay per click links to competing goods and services and malicious mousetrapping software. Hosting a page of links and “mousetrapping” is not bona fide offering of goods and services or fair use. See RML-Bel Air, LLC d/b/a Bel Air Honda v. Cayman Ninety Business c/o Domain Administrator, FA1006001327815 (Nat. Arb. Forum Jul. 19, 2010) (finding a commercial links page featuring links to other auto dealerships and websites featuring information on the Honda automobiles Complainant dealt in was neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Google Inc. v. Scott Litoline / SLA, FA1402001542043 (Nat. Arb. Forum Mar. 12, 2014) (finding use of a domain name to distribute malware in a deceptive manner was indicative of bad faith under Policy ¶4(b)(iv)); Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶4(c)(i)).
6. As a result, and upon information and belief, Respondent is using the Domain – which is almost identical to Complainant’s domain, <nemours.org>, with the one difference being the addition of the generic word “hospital” – so that consumers will believe there is a sponsorship, affiliation or connection between Complainant and Respondent’s competing website. Attempting to “detract from or imply any trading off the Complainant’s trademark” is not a legitimate commercial or not-for-profit use under the Policy. See Citigroup Inc. v. Morrish, FA1600832 (Nat. Arb. Forum Mar. 3, 2015); see also Twitter, Inc. v. Kiribati Media/Kiribati 200 Media Ltd., FA1603444 (Nat. Arb. Forum Mar. 19, 2015); Interactive Gallery, Inc. v. d communications, FA0094673 (Nat. Arb. Forum June 27, 2000).
[c.] Respondent Has Registered and Used the Domain in Bad Faith. [ICANN Policy
¶4(a)(iii); ICANN Rule 3(b)(ix)(3).]
1. Complainant has used the NEMOURS Marks as trademarks in the United States for over sixty years, and Complainant owns federal registrations for those marks.
2. The NEMOURS Marks have no meaning other than as an identifier of Complainant and its health and charitable services. Accordingly, there can be little doubt that Respondent registered the Domain with Complainant squarely in mind. See Black Hills Ammunition, Inc. v. Wall, FA1541570 (Nat. Arb. Forum Mar. 17, 2014) (finding actual knowledge because there was no legitimate reason for Respondent “to register a domain name containing ‘Black Hills Amo’ other than to trade on Complainant’s trademark rights and that ‘Black Hills Am’ means nothing other than Complainant’s trademark”). Further, NEMOURS is in no way descriptive or suggestive of health- related services, but, among other websites, Respondent offers health-related links, showing a clear intent to trade off of the goodwill in the NEMOURS Mark. Respondent’s registration and use of the Domain with full knowledge of theNEMOURS Marks strongly evidences its bad faith under the Policy. See Minicards Vennootschap Onder Flrma Amsterdam v. Moscow Studios, FA1031703 (Nat. Arb. Forum Sept. 5, 2007) (finding that Respondent registered the domain in bad faith under Policy ¶4(a)(iii) because it had “actual knowledge of Complainant’s mark when registering the disputed name”). See also Chevron Intellectual Prop. LLC v. Clevely, FA1585715 (Nat. Arb. Forum Dec. 3, 2014) (same).
3. Moreover, the active websites at which the Domain resolves further supports a finding of bad faith here. As indicated above, Respondent uses the Domain to offer links to competing goods and services. This use of the Domain “disrupts Complainant’s business and therefore qualifies as bad faith under Policy ¶4(b)(iii).” See Twitter, Inc. v. Kiribati Media/Kiribati 200 Media Ltd., FA1603444 (Nat. Arb. Forum Mar. 19, 2015); David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶4(b)(iii)). It therefore strains credulity to suggest that Respondent registered and is using the Domain for any other purpose than to intentionally mislead consumers searching for Complainant’s website and disrupt Complainant’s business. See Luck's Music Library v. Stellar Artist Mgmt., FA0095650 (Nat. Arb. Forum Oct. 30, 2000) (noting that “[u]se of the Complainant’s family and business name by any other person would suggest opportunistic bad faith”).
4. By using the well-known NEMOURS Marks in the Domain and in conjunction with the hosted websites of pay per click links to competitors and related health goods and services, Respondent is taking intentional steps to exploit the goodwill associated with the NEMOURS name to “attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.” See Policy ¶4(b)(iv); Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); S. Exposure v. S. Exposure, Inc., FA0094864 (Nat. Arb. Forum July 18, 2000) (finding bad faith where Respondent registered and used the domain “to profit from Complainant’s mark by attracting Internet users to its competing website”); Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the domain “resolves to a website where services are offered” such that they are likely to confuse the consumer “into believing that Complainant is the source of or is sponsoring the services offered at the site”).
5. Finally, Respondent appears to be a privacy service. Respondent’s use of a privacy service in the commercial context to conceal the true ownership of the domain raises a presumption of bad faith. See Despair, Inc. v. R9 DomainGuard Proxy Service, FA1203001435300 (Nat. Arb. Forum Apr. 24, 2012) (finding that concealment of the true identity of the registrant was not “a bona fide business practice in the commercial context” and that it “raises the presumption of bad faith registration and use”).
6. Taken as a whole, there can be little doubt that Respondent has acted in complete bad faith throughout the registration and use of the Domain. Respondent’s actions fully justify transfer of the Domain to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 claims rights in the NEMOURS marks through its registration with the USPTO. (e.g., Reg. No. 2,777,710, registered October 28, 2003). A complainant sufficiently establishes it rights to a mark based on its registration with the USPTO (or similar governmental authorities). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant has established its rights in the NEMOURS mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <nemourshospital.com> domain name is confusingly similar to Complainant’s NEMOURS mark. The domain includes the entire NEMOURS mark and adds the descriptive term “hospital” and the gTLD “.com.” Since domain name syntax requires a TLD (whether a gTLD or a ccTLD), the existence of the TLD must be ignored when doing an analysis under Policy ¶4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶4(a)(i) analysis.”). A generic term, particularly one associated with a complainant’s business, is not sufficient to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). Respondent’s <nemourshospital.com> domain name is confusingly similar to the NEMOURS mark in which Complainant has rights under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not been commonly known by the disputed domain or authorized to use the NEMOURS mark. The WHOIS information shows Respondent is using a privacy service to shield its identity. Nevertheless, prior panels have held that a respondent is not commonly known by a disputed domain name based on a lack of evidence in the record to the contrary and a respondent’s failure to dispute the assertion. 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). Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii).
Respondent uses the disputed domain name to host generic click through links, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain resolves to a parking website that hosts pay-per-click links with titles such as, “Job Postings,” “Home Care Hospital,” and “Nursing Hospital.” Respondent’s domain has resolved to a site which exhibits malicious mousetrapping behavior. Such behaviors do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 4 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent has not made 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).
Finally, Respondent acquired no rights by registering the domain name using a privacy service. Respondent has not publicly associated itself with the domain name. Therefore, Respondent cannot acquire any secondary rights to the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the disputed domain name in bad faith. Respondent’s bad faith is shown by Respondent exploiting the goodwill associated with Complainant’s mark to attract users to a commercial website hosting generic click through links. Presumably, Respondent receives money for each “click through” on the parking page. A respondent who commercially exploits the goodwill associated with a mark it doesn’t own has acted in bad faith. See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶4(b)(iv).”). Respondent has acted in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant's rights in the NEMOURS mark. The NEMOURS mark means nothing when divorced from the mark’s association with Complainant (although it was certainly a family name at one point). Respondent must have had actual knowledge of Complainant's mark and rights. It appears 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").
Finally, Respondent registered the domain name using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. This Panel finds bad faith registration and use on this point alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <nemourshospital.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, November 10, 2015
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