Cardinal Health, Inc. v. michael nye
Claim Number: FA1605001676058
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Courtni E. Moorman of Baker & Hostetler LLP, Ohio, United States. Respondent is michael nye (“Respondent”), Arkansas, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardinalinghealth.com>, registered with GoDaddy.com, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2016; the Forum received payment on May 20, 2016.
On May 23, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cardinalinghealth.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 May 23, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2016 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@cardinalinghealth.com. Also on May 23, 2016, 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 June 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant uses its CARDINAL HEALTH mark in connection with its business of providing pharmaceuticals and medical products and services. Complainant has registered the CARDINAL HEALTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,249,206, registered June 1, 1999), which demonstrates Complainant’s rights in its mark. The <cardinalinghealth.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates the CARDINAL HEALTH mark, and merely adds the generic suffix “ing” and the generic top-level domain (“gTLD”) “.com.” Further, Respondent is engaging in the tactic of typosquatting by rearranging the word order of Complainant’s entity name “Cardinal Health, Inc.,” and intentionally replacing the “c” in “Inc.” with a “g.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not licensed or authorized to use Complainant’s mark. Respondent does not make a bona fide offering of goods or services through the disputed domain name, or a legitimate noncommercial or fair use. Respondent uses its disputed domain name to pass itself off as Complainant; specifically, Respondent’s resolving website copies the content from Complainant’s own website, including text, photos, and images and layout. Respondent is attempting to pass itself off as Complainant to perpetuate a scam, thereby confusing Internet users.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s attempt to pass itself off as Complainant has disrupted Complainant’s business. Respondent has attempted to pass itself off as Complainant through the disputed domain. Respondent is engaged in the tactic of typosquatting, as aforementioned. Respondent had constructive and actual knowledge of Complainant’s mark at the time the disputed domain was registered.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cardinalinghealth.com> domain name.
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(f), 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 (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 uses its CARDINAL HEALTH mark in connection with its business of providing pharmaceuticals and medical products and services. Complainant has registered the CARDINAL HEALTH mark with the USPTO (e.g., Reg. No. 2,249,206, registered June 1, 1999), which Complainant argues demonstrates its rights in the mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i). 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)). Therefore, the Panel finds that Complainant has demonstrated its rights in the CARDINAL HEALTH mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <cardinalinghealth.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates the CARDINAL HEALTH mark, and merely adds the generic suffix “ing” and the gTLD “.com.” Panels have concluded that the addition of a suffix does not serve to adequately distinguish a disputed domain from a complainant’s mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Panels have also concluded that the affixation of the “.com” gTLD to a domain is irrelevant to a Policy ¶ 4(a)(i) analysis. 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 finds that Respondent’s disputed domain is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant asserts that Respondent is engaged in the tactic of typosquatting by rearranging the word order of Complainant’s entity name “Cardinal Health, Inc.,” and intentionally replacing the “c” in “Inc.” with a “g.” Complainant’s “Cardinal Health, Inc.” entity is not the mark to which the disputed domain is being compared. Rather, Complainant asserts that Respondent’s disputed domain is confusingly similar, under the Policy, to Complainant’s CARDINAL HEALTH mark. Panels have generally held that a respondent’s domain is confusingly similar to a complainant’s mark where the disputed domain is a common misspelling of the complainant’s mark. The Panel therefore finds typosquatting has not been shown.
Complainant has proved this element.
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 (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 (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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name. Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The WHOIS information lists “michael nye” as registrant and Respondent has not provided any evidence for the Panel’s consideration. Therefore, the Panel finds there is no basis in the available record to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent uses its disputed domain name to pass itself off as Complainant; specifically, Complainant asserts that Respondent’s resolving website copies the content from Complainant’s own website, including text, photos, images and layout. According to Complainant, Respondent’s purpose in attempting to pass itself off as Complainant is to perpetuate a scam, thereby confusing Internet users. Panels have held that a respondent’s use of a domain to pass itself off as a complainant does not constitute 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). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent’s attempt to pass itself off results in a disruption of Complainant’s business. Panels have agreed that a respondent’s use of a domain to pass itself off can result in a disruption of a complainant’s business, thereby constituting bad faith under Policy ¶ 4(b)(iii). See Center for Food Safety v. Della Lawson, FA 1198797 (Forum July 14, 2008) (“What events may come as a result of Internet users being diverted to this artificial website is unclear; however it is patent enough that Complainant’s business is disrupted through this diversion….[T]he Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii)). The Panel therefore finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant argues that Respondent makes an attempt through the disputed domain to pass itself off as Complainant, in violation of Policy ¶ 4(a)(iii). Panels have agreed that a respondent’s use of a domain to pass itself off as a complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Therefore, the Panel finds that Respondent registered and is using the domain in bad faith per Policy ¶ 4(a)(iii).
Complainant contends that Respondent had constructive and actual knowledge of Complainant’s mark at the time the disputed domain was registered. Complainant argues that Respondent had constructive knowledge by virtue of Complainant’s trademark registrations. Complainant further argues that Respondent had actual knowledge based upon the website content at the disputed domain. While panels have concluded that constructive knowledge is not sufficient to support a bad faith finding, the Panel finds that Respondent had actual knowledge of the mark and Complainant’s rights. Therefore, the Panel holds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); and see 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).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cardinalinghealth.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 20, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page