DECISION

 

Mobile Infirmary Association d/b/a Mobile Infirmary Medical Center v. Neonbob.com

Claim Number: FA0105000097330

 

PARTIES

Complainant is Mobile Infirmary Association d/b/a Mobile Infirmary Medical Center, Mobile, AL, USA (“Complainant”) represented by Chad R. Brown, of Johnstone Adams.  Respondent is Neonbob.com, Mobile, AL, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mobileinfirmary.com> registered with Dotster.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 29, 2001; the Forum received a hard copy of the Complaint on June 1, 2001.

 

On May 30, 2001, Dotster confirmed by e-mail to the Forum that the domain name <mobileinfirmary.com> is registered with Dotster and that Respondent is the current registrant of the name.  Dotster has verified that Respondent is bound by the Dotster 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 June 1, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 21, 2001 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@mobileinfirmary.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 28, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.”  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant has common law rights in the MOBILE INFIRMARY mark.  Complainant has been providing services to Mobile and surrounding communities since 1910 and has established secondary meaning in the mark.

 

Complainant has rights in the mark MOBILE INFIRMARY because:  (1) the mark has been used in interstate commerce to identify health care services offered by Complainant for nearly 100 years; (2) Complainant has extensively promoted the services which it offers in connection with the mark;  (3) Complainant’s advertising and promotional efforts have created a conscious connection between the mark and Complainant’s services; and (4) the public identifies the name MOBILE INFIRMARY and associates it with the health care services offered by Complainant.

 

The domain name <mobileinfirmary.com> is identical to the mark MOBILE INFIRMARY.

 

Respondent should not be considered as having any rights or legitimate interests in the domain name because the domain name was registered solely for the purpose of holding Complainant hostage to be ransomed in exchange for hiring Respondent to develop Complainant’s Website.  There is no evidence that Respondent has previously used a mark identical or similar to the domain name <mobileinfirmary.com> in connection with any goods or services.  Respondent did not register the domain name <mobileinfirmary.com> until June 13, 2000, and it was only registered for the purpose of preventing Complainant from developing its Website in-house, without hiring the Respondent.

 

Respondent should be considered as having registered and used the domain name in bad faith.

 

B. Respondent

No Response was submitted.

 

FINDINGS

Complainant is a not-for-profit tax-exempt hospital that has provided health care services to the public since 1910.  Complainant provides hospital services to residents of the central gulf coast area and is part of a regional health network of which Infirmary Health Systems, Inc. is the parent corporation.

 

Respondent is an Internet Service Provider (“ISP”), which also provides Website hosting, design and marketing.  Respondent registered the domain name <mobileinfirmary.com> on June 13, 2000. 

 

By letter to the Respondent dated October 13, 2000, Complainant requested that the domain name be released to the Mobile Infirmary for its Website.

 

On October 14, 2000, Respondent replied via e-mail and informed the Mobile Infirmary that it purchased the domain name hoping it could develop and maintain the Website for Complainant.  The response, in relevant part, states:

 

Prior to the purchase of this name, I contacted Infirmary Health System’s IT Department in regards to their domain and web site information and how my company could possibly be of assistance . . . [b]ased on the fact that Infirmary Health System was satisfied with their domain selections, I purchased <mobileinfirmary.com> to secure the name hoping that in the future we could develop the site in conjunction with your organization.

 

Complainant offered to reimburse Respondent for its out-of-pocket expenses for registration of the domain name; however, Respondent was not willing to transfer the name without a commitment by Complainant to utilize Respondent’s services to host, develop, and maintain the Website.  Respondent would not agree to release the domain name in exchange for reimbursement of any out‑of‑pocket expenses without additional remuneration.

 

To date, Respondent has refused Complainant’s offer to purchase the domain name in exchange for its out-of-pocket expenses to transfer the domain name.  Prior to the deterioration of the negotiations between Complainant and Respondent, the domain name <mobileinfirmary.com> would link to the home page of Respondent.  However, since at least November 30, 2000, the domain name resolves to a single-page Website entitled “MobileInfirmaryPhoneRX .com Coming Soon!” with a banner advertisement link to Respondent’s home page.  No information is provided for the alleged site under construction, or for the purported Website “MobileInfirmaryPhoneRX.com.”

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

Complainant has acquired common law rights to the MOBILE INFIRMARY mark due to its extensive use of the mark since 1910.  Past UDRP Panels have found common law rights under similar circumstances.  For example, in Emory Health Care, Inc. v. Gulf South Ltd., FA 94892 (Nat. Arb. Forum July 5, 2000), the Panel found that Emory Hospital had rights to the mark EMORY HOSPITAL as a result of its long common law usage of the mark.  In New York-Presbyterian Hosp. v. Harris, D2000-0856 (WIPO Sept. 26, 2000), the Panel found that the use of the mark NEW YORK-PRESBYTERIAN HOSPITAL since 1998, along with extensive advertising by Complainant to promote the mark created a common law trade and/or service mark.

 

The Panel finds that Respondent’s domain name is identical to Complainant’s MOBILE INFIRMARY mark, therefore, Policy ¶ 4(a)(i) has been satisfied.  See Amherst  v. IFC Corp., FA 96768 (Nat. Arb. Forum Apr. 3, 2001) (finding that Respondent’s domain name <customcommerce.com> is identical to Complainant’s CUSTOM COMMERCE trademark registration).

 

Rights or Legitimate Interests

Complainant has shown that Respondent has not been known by the domain name <mobileinfirmary.com>, has not used the domain name in connection with any bona fide offering of goods or services, and has not made a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c).  Respondent purchased the domain name for the purpose of profiting from Complainant in excess of its out-of-pocket expenses incurred in registering the domain name.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

 

Due to the lack of development of Respondent’s “Coming Soon” site, the Panel finds that Respondent never intended to use the domain name for any other purpose than to sell it to Complainant.  See Ziegenfelder Co. v. VMH Enterprises, Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name).

 

The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the <mobileinfirmary.com> domain name, and that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Bad faith is evidenced by the obvious connection the <mobileinfirmary.com> domain name has with Complainant, as it incorporates Complainant’s mark in its entirety.  See Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding bad faith where Respondent knew, or should have known of Complainant’s SYDNEY OPERA HOUSE  mark).

 

Based on the totality of the circumstances, which includes Respondent’s registration of a domain name identical to Complainant’s mark, and then attempting to leverage the domain name to force Complainant to use its services, the Panel finds that Respondent registered and used the domain name in bad faith.

 

Therefore, Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three of the elements under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

 

Accordingly, it is Ordered that the <mobileinfirmary.com> domain name be transferred from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

 

Dated: July 3, 2001