Kindred Healthcare Inc. v. Benjamin Breier
Claim Number: FA1706001734699
Complainant is Kindred Healthcare Inc. (“Complainant”), represented by Louis T. Perry of Faegre Baker Daniels LLP, United States of America. Respondent is Benjamin Breier (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kindredhealthcareinc.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically June 6, 2017; the Forum received payment June 6, 2017.
On June 7, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <kindredhealthcareinc.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2017, 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@kindredhealthcareinc.com. Also on June 7, 2017, 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 July 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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, Kindred Healthcare Inc. is a provider of healthcare services. Complainant has rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,660,452, registered Dec. 10, 2002). See Compl. at Attached Ex. 4. Respondent’s <kindredhealthcareinc.com> is identical or confusingly similar to complainant’s mark as it includes the entirety of the KINDRED HEALTHCARE mark, without the space, and in combination with the generic corporate indicator “Inc” and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted respondent permission or license to use the KINDRED HEALTHCARE mark in any way. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or to make a legitimate non-commercial or fair use. Rather, Respondent is using the <kindredhealthcareinc.com> domain name to phish for information from Complainant’s patients. See Compl. at Attached Ex. 10, pp. 155–60.
Respondent registered and used the disputed domain name in bad faith. Respondent attempts to divert Complainant’s web traffic to its own site based on confusion generated by use of Complainant’s KINDRED HEALTHCARE mark. Further, Respondent attempts to pass itself off as Complainant to conduct a phishing scheme for commercial gain. Respondent has actual knowledge of Complainant’s KINDRED HEALTHCARE mark and business by virtue of its fame and the use made of it at the domain name site.
Respondent did not submit a Response in this proceeding. The Panel notes that Respondent created the disputed domain name May 12, 2017.
FINDINGS:
Complainant established its rights to and legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name or Complainant’s protected mark contained within it in its entirety.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered in bad faith a disputed domain name containing Complainant’s protected mark and then used the disputed domain name in bad faith by using it to phish for information from Complainant’s patients.
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 to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant has rights in the KINDRED HEALTHCARE mark based upon its registration with the USPTO (Reg. No. 2,660,452, registered Dec. 10, 2002). See Compl. at Attached Ex. 4. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in KINDRED HEALTHCARE mark pursuant to Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <kindredhealthcareinc.com> is identical or confusingly similar to KINDRED HEALTHCARE mark as it includes the entirety of the KINDRED HEALTHCARE Mark in combination with the generic corporate indicator “Inc.” Respondent also adds the gTLD “.com.” The omission of spacing and a mark and the addition of a gTLD are insufficient to distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitting spacing and adding a TLD are irrelevant when performing a Policy ¶ 4(a)(i) analysis.”). Similarly, the inclusion of the generic terms in the Disputed Domain Name may not mitigate the confusing similarity between <kindredhealthcareinc.com> and Complainant’s KINDRED HEALTHCARE Mark, because Complainant alleges they are merely generic, merely describing Complainant’s business and therefore do not defeat a claim of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 <kindredhealthcareinc.com> as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the KINDRED HEALTHCARE mark in any way. Where no response is filed, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) The WHOIS information of record identifies Respondent as “Benjamin Breier”. Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evidenced by failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s intended use of the web traffic generated by the Domain Name is collection of personal, financial or other sensitive information of Complainant’s patients. Such a scheme does not give rise to rights or a legitimate interest in the Domain Name under the Policy ¶¶ 4(c)(i) and (iii). See Indeed, Inc. v. Grace Phillips, FA 1704001727609 (NAF May 16, 2017) (finding that a website which appears to only serve the purpose of collecting personal information by exploiting confusion with complainant's mark does not give rise to rights or a legitimate interest). Therefore, the Panel agrees that Respondent’s use of the disputed domain does not establish any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the
disputed domain name; Complainant satisfied the elements of ICANN Policy ¶
4(a)(ii).
Registration and Use in Bad Faith:
Complainant asserts that Respondent’s incorporation of identical elements of Complainant’s website on its own website indicates an intent to disrupt the business of Complainant, which is bad faith under Policy ¶ 4(b)(iii). Mirroring a complainant’s web offerings indicates disruption under this prong of the Policy. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). The Panel looks to Complainant’s Attached Annex 10, which demonstrates Respondent’s use of the disputed domain name’s resolving website, and compares this with Complainant’s website at Attached Annex 6. Accordingly, the Panel finds that Respondent engaged in bad faith disruption under Policy ¶ 4(b)(iii).
Complainant argues that Respondent registered and is using the <kindredhealthcareinc.com> domain name in bad faith by creating the probability of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name for the commercial benefit of Respondent by offering competing goods or services. Commercially benefiting by initial interest confusion can evidence bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, permits an inference that Respondent intends to attract Internet users for commercial gain, and supports findings of bad faith pursuant to Policy ¶ 4(b)(iv).”). Complainant claims that Respondent only registered the confusingly similar domain name to gain Internet traffic by users seeking Complainant’s business. The Panel finds that Respondent attempted to commercially benefit from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent engages in a phishing scheme to obtain personal or financial information from Complainant’s unsuspecting patients. Using a confusingly similar domain name to phish for personal or financial information can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Respondent has intentionally selected the Domain Name that is an exact copy of Complainant’s business and confusingly similar to Complainant’s mark to divert customers to Respondent’s website to obtain personal information of Complainant’s patients. Thus, since the Panel agrees that Respondent attempts to phish for information, then the Panel finds that Complainant sufficiently established Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s mark because Respondent registered the disputed domain name using an added corporate indicator coupled with Complainant’s KINDRED HEALTHCARE mark, which is familiar to countless consumers. Actual knowledge may be proven through a totality of circumstances. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent had actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). While Complainant provides evidence of Respondent’s use to pass itself off as Complainant, and alleges the domain name includes Complainant’s mark in its entirety, the Panel agrees that actual knowledge exists—which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kindredhealthcareinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 17, 2017
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