Geisinger Clinic v. Hulmiho Ukolen / Poste restante
Claim Number: FA1611001704945
Complainant is Geisinger Clinic (“Complainant”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <geisnger.org>, registered with Gransy, s.r.o. d/b/a subreg.cz.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 29, 2016; the Forum received payment on November 29, 2016.
On December 1, 2016, Gransy, s.r.o. d/b/a subreg.cz confirmed by e-mail to the Forum that the <geisnger.org> domain name is registered with Gransy, s.r.o. d/b/a subreg.cz and that Respondent is the current registrant of the name. Gransy, s.r.o. d/b/a subreg.cz has verified that Respondent is bound by the Gransy, s.r.o. d/b/a subreg.cz 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 December 6, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@geisnger.org. Also on December 6, 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 January 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Policy ¶ 4(a)(i) - Complainant has rights in the GEISINGER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,362,526, registered on September 24, 1985). Respondent’s <geisnger.org> domain name is confusingly similar to the GEISINGER mark because it contains the mark, minus a letter “i,” combined with the generic top-level domain (“gTLD”) “.org.”
2. Policy ¶ 4(a)(ii) - Respondent is not commonly known by the <geisnger.org> domain name because it has not been authorized to use the GEISINGER mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website purports to offer health care and insurance services in competition with Complainant.
3. Policy ¶ 4(a)(iii) - Respondent uses the <geisnger.org> domain name in bad faith because the website is used to create a likelihood of confusion with Complainant for commercial gain. Respondent registered the <geisnger.org> domain name in bad faith because the typosquatted nature of the name demonstrates awareness of Complainant’s GEISINGER mark.
B. Respondent
1. Respondent has failed to submit a formal Response.
1. Respondent’s <geisnger.org> domain name is confusingly similar to Complainant’s GEISINGER mark.
2. Respondent does not have any rights or legitimate interests in the <geisnger.org> domain name.
3. Respondent registered or used the <geisnger.org> 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(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 claims rights in the GEISINGER mark through its registration with the USPTO (Reg. No. 1,362,526, registered on September 24, 1985) for use with health care services. Complainant has provided this registration in Exhibit 1. As such, the Panel may find that Complainant has rights in the GEISINGER mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant alleges that Respondent’s <geisnger.org> domain name is confusingly similar to the GEISINGER mark because it contains the mark, minus a letter “i,” combined with the gTLD “.org.” The Panel finds the <geisnger.org> domain name confusingly similar to the GEISINGER mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
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 maintains that Respondent is not commonly known by the <geisnger.org> domain name because it has not been authorized to use the GEISINGER mark. The Panel finds a lack of evidence to the contrary, and finds that Respondent has not been commonly known by the domain name according to Policy ¶ 4(c)(ii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Complainant contends that Respondent fails to use the <geisnger.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website purports to offer health care and insurance services in competition with Complainant. Complainant has provided a screenshot of the resolving page, in Exhibit 5, displaying the words
“Health Markets” to demonstrate this use. The Panel finds this sufficient to demonstrate competitive use, and agrees that Respondent fails to use the <geisnger.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business 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).”).
Complainant claims that Respondent uses the <geisnger.org> domain name in bad faith because the website is used to create a likelihood of confusion with Complainant for commercial gain. Complainant has provided a screenshot of the resolving page, in Exhibit 5, to demonstrate the manner in which the website is used. The Panel finds this evidence sufficient to show that Respondent is attempting to profit through confusion, and finds that Respondent uses the domain name in bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant urges that Respondent registered the <geisnger.org> domain name in bad faith because the typosquatted nature of the name demonstrates awareness of Complainant’s GEISINGER mark. The Panel agrees that the domain name was created through typosquatting and that typosquatting demonstrates actual knowledge of the GEISINGER mark, and finds that Respondent registered the domain name in bad faith. See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum November 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <geisnger.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 13, 2017
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