Calgary Health Region v. Pertshire Marketing, Ltd
Claim Number: FA0607000746434
Complainant is Calgary Health Region c/o Borden Ladner Gervais LLP, 1000 Canterra Tower, Calgary, AB T2P 4H2, Canada (“Complainant”). Respondent is Pertshire Marketing, Ltd (“Respondent”), Trident Chambers, Wickhams Cay 1, P.O. Box 146, Road Town, Tortola VG.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mycalgaryhealthregion.com>, registered with Domaindoorman, Llc.
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 National Arbitration Forum electronically on July 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 7, 2006.
On July 17, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <mycalgaryhealthregion.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mycalgaryhealthregion.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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." 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 makes the following assertions:
1. Respondent’s <mycalgaryhealthregion.com> domain name is confusingly similar to Complainant’s CALGARY HEALTH REGION mark.
2. Respondent does not have any rights or legitimate interests in the <mycalgaryhealthregion.com> domain name.
3. Respondent registered and used the <mycalgaryhealthregion.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Calgary Health Regional, was established in the Canadian province of Calgary pursuant to Section 5 of the Regional Health Authorities Act, R.S.A. 2000, c. R-10. Complainant has extensive statutory obligations, including the promotion and protection of the health of the population of Calgary, particularly the prevention of disease and injury. Further, Complainant is expected to assess the health needs of the Calgary region and determine priorities in health services. Complainant holds a registration of the CALGARY HEALTH REGION mark with the Canadian Intellectual Property Office (“CIPO”) (Reg. No. 913,239 formalized May 31, 2001). Complainant utilizes the CALGARY HEALTH REGION mark in connection with fulfilling its role in relation to the health care goods and services of the Calgary region. Complainant includes the CALGARY HEALTH REGION mark in a number of registered domain names, including <calgaryhealthregion.com>, <calgaryhealthregion.ca>, <calgaryhealthregion.org> and <calgaryhealthregion.net>. Complainant utilizes these domain names to operate a website that offers Internet users extensive information about health care goods and services in the Calgary area, including the identification of particular doctors and specialists, information about local clinics including locations and hours of operation, contact information for medical care, nursing advice, warnings about public health concerns and other important health information.
Respondent registered the <mycalgaryhealthregion.com> domain name on January 21, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features a generic Internet search engine as well as numerous links to third-party websites. Many of the links on Respondent’s website appear to be for websites offering health information, goods or services in competition with Complainant, for example “Asthma Treatment,” “Depression Treatment” and “Health Plans.” Other links on Respondent’s website appear to be completely unrelated to Complainant, for example “Calgary Zoo Coupons,” “Calgary Jobs” and “Calgary Homes and Condos.”
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."
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.”).
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.
Complainant’s rights in the CALGARY HEALTH REGION mark are established through Complainant’s registration of the mark with the CIPO. Further, while Respondent appears to be located in the British Virgin Islands, based on Respondent’s WHOIS registration information, and Complainant’s registration is in Canada, it is not necessary for Complainant to hold a registration of its mark in the same jurisdiction in which Respondent operates. The Panel finds that Complainant’s registration of the mark in one jurisdiction is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <mycalgaryhealthregion.com> domain
name is confusingly similar to Complainant’s CALGARY HEALTH REGION mark. The disputed domain name incorporates
Complainant’s mark in its entirety, adding the term “my” to the beginning of
the mark. The addition of the term “my”
does not create a distinct domain name.
Instead, the addition of the term “my” creates the impression that the
disputed domain name is a variation of Complainant’s other registered domain
names, perhaps a variation directed at particular individual users of
Complainant’s website. The Panel finds
that the addition of the term “my” the Complainant’s mark does not overcome the
confusing similarity between the disputed domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity [sic] or confusing similarity for purposes of
the Policy despite the addition of other words to such marks.”); see also ESPN, Inc. v.
MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that
the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly
similar to Complainant’s SportsCenter mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima facie case under the Policy. With the creation of a prima facie case the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). In evaluating the available evidence, the Panel may find that Respondent’s failure to submit a Response, and concurrent failure to provide any evidence or arguments indicating that it does have rights or legitimate interest in the dispute domain name, is evidence that such rights or legitimate interests do not exist. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
Respondent is using the <mycalgaryhealthregion.com> domain name to redirect Internet users to Respondent’s website. Respondent’s website is devoid of any original content and instead featuers a generic Internet search engine and multiple links to third-party websites, some of which compete with Complainant, while others are unrelated. Presumably, Respondent receives pay-per-click referral fees from these links. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The available evidence indicates that Respondent is not
commonly known by the <mycalgaryhealthregion.com> domain
name. For example, Respondent’s WHOIS
information identifies Respondent as “Pertshire Marketing, Ltd,” which appears
to be totally unrelated to the disputed domain name. Complainant further contends that Respondent is not affiliated
with or sponsored by Complainant and has never received permission from
Complainant to use Complainant’s CALGARY HEALTH REGION mark in a domain
name. The Panel finds that Respondent
is not commonly known by the disputed domain name and thus, lacks rights or
legitimate interests in 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 Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
The <mycalgaryhealthregion.com> domain name is
confusingly similar to Complainant’s CALGARY HEALTH REGION mark. Internet users seeking Complainant’s genuine
website under Complainant’s mark may find themselves instead redirected to
Respondent’s website because of the confusing similarity between the disputed
domain name and Complainant’s mark.
Once at Respondent’s website, Internet users may mistakenly believe that
Respondent’s website is sponsored by or affiliated with Complainant, and
Internet users may follow the links to third-party websites found at
Respondent’s website, instead of using Complainant’s genuine website for their
health services. Presumably, Respondent
is capitalizing on this confusion by receiving referral fees from the links on
its website. The Panel finds that such
use is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also AltaVista Co. v. Krotov, D2000-1091
(WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the
respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
In Mission
KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000), the panel found that
a competitor is defined as “one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor.” Under this
definition, Respondent is acting as a competitor of Complainant by redirecting
Internet users away from Complainant’s genuine website and to Respondent’s
website. Further, the third-party
websites featured as links on Respondent’s website are also in competition with
Complainant because they act in opposition to Complainant’s attempts to provide
health care information and services to the Calgary community. Respondent’s website features links to
third-party websites, some of which are not related to health care, while
others specifically offer health care services. Internet users finding themselves at Respondent’s website because
of the confusing similarity between Complainant’s mark and the <mycalgaryhealthregion.com>
domain name may use the health information services of a competitor by
following one of the third-party links, or may become frustrated and give up on
seeking health care services all together.
The Panel finds that such circumstances indicate that Complainant’s
health services are being disrupted and this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Complainant has satisfied 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 <mycalgaryhealthregion.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 28, 2006
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