Cardinal Health, Inc. v. On behalf of cardinalhealthusa.com c/o EIS AG, Whois Privacy Services
Claim Number: FA1607001683566
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Shannon V. McCue of Baker & Hostetler LLP, Ohio, United States. Respondent is On behalf of cardinalhealthusa.com c/o EIS AG, Whois Privacy Services (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardinalhealthusa.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2016; the Forum received payment on July 13, 2016.
On July 15, 2016, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <cardinalhealthusa.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.com 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 July 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@cardinalhealthusa.com. Also on July 19, 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 August 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant has rights in the CARDINAL HEALTH mark through its registration with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 002831642, registered Sept. 16, 2004). See Compl., at Attached Ex. 2. The <cardinalhealthusa.com> domain name is confusingly similar to the CARDINAL HEALTH mark because it contains the mark, less the space, combined with the generic term “usa” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <cardinalhealthusa.com> domain name as the available WHOIS information lists “On behalf of cardinalhealthusa.com” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent has used the <cardinalhealthusa.com> domain name in an attempt to pass itself off as Complainant because the resolving website has displayed the CARDINAL HEALTH mark and because the domain name has been used to host an e-mail address which has been used to impersonate Complainant. In addition, Respondent’s current use of the <cardinalhealthusa.com> domain name constitutes an inactive holding.
Respondent uses the <cardinalhealthusa.com> domain name in bad faith because the resolving website contains links which are competitive to Complainant’s business. Respondent registered the <cardinalhealthusa.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the CARDINAL HEALTH mark and because the registration constituted typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <cardinalhealthusa.com> domain name was registered July 1, 2016.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s valid and subsisting trademark, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration.
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.”).
The Panel finds that the disputed domain name is confusingly similar with the Complainant’s valid and subsisting trademark. The Complainant has adequately pled its rights in and to the trademark. The Respondent arrives at the disputed domain name by merely adding to the trademark in its entirety (after deleting a space) “usa” and the gTLD “.com”. This is insufficient to distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
Further, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. The record is devoid of any evidence that shows the Respondent is commonly known by the disputed domain name. WHOIS information lists “On behalf of cardinalhealthusa.com” as Registrant. Respondent has not been authorized to use the CARDINAL HEALTH mark.
As such, the Panel finds that Respondent is not commonly known by the <cardinalhealthusa.com> domain name.
Respondent apparently fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent has used the <cardinalhealthusa.com> domain name in an attempt to pass itself off as Complainant. The resolving website has displayed the CARDINAL HEALTH mark; the disputed domain name hosts an e-mail address which has been used to impersonate Complainant. Complainant has provided a former screenshot of the resolving website in Exhibit 5. Complainant has also provided a copy of an e-mail sent from an e-mail address hosted at the disputed domain name along with a chain of e-mails through which Respondent purportedly represented itself as Complainant in Exhibits 7 & 8. Complainant notes that these emails show that Respondent has listed Complainant’s physical address within its e-mail signature block. Further, Complainant urges that the current inactive use of the resolving website, described below, is in an effort to prevent investigation into Respondent’s behavior.
Respondent is using the <cardinalhealthusa.com> domain name in an attempt to impersonate Complainant. As such, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant argues that Respondent has ceased using the disputed domain name. As such, Complainant argues that this constitutes a failure to make an active use which demonstrates Respondent’s lack of rights and legitimate interests. Complainant has provided a screenshot of the resolving website in Exhibit 6 to demonstrate this non-use.
The Panel finds that this lack of use adequately demonstrates that Respondent lacks rights or legitimate interests in the <cardinalhealthusa.com> disputed domain name.
Complainant alleges that Respondent uses the <cardinalhealthusa.com> domain name in bad faith because the resolving website (when it was active) contained links which were competitive to Complainant’s business. Complainant has provided a screenshot of the disputed domain name’s former landing page in order to demonstrate this use in Exhibit 5. Complainant urges that the link to “Liberty Medical Supply” is directly competitive to Complainant.
As the Respondent has failed to file a response in this matter, the Panel accepts as true all of Complainant’s reasonable allegations. As such, the Panel finds that Respondent uses the <cardinalhealthusa.com> domain name in bad faith.
Complainant further contends that Respondent registered the <cardinalhealthusa.com> domain name in bad faith because it did so with constructive or actual knowledge of Complainant’s rights in the CARDINAL HEALTH mark. Complainant urges that Respondent had constructive knowledge through its registrations of the mark and actual knowledge as demonstrated by Exhibits 5, 7, & 8 showing the domain name displaying the mark and the sending of e-mails purportedly intended to impersonate Complainant.
The Panel finds that this evidence is sufficient to show actual knowledge on Respondent’s part at the time of registration. As such, the Panel finds that Respondent registered the domain name in bad faith.
Complainant asserts that Respondent registered the <cardinalhealthusa.com> domain name in bad faith because the registration constituted typosquatting; however, nothing in this record indicates that adding the letters “usa” to the end of a domain name is a natural misspelling of the word. Therefore, the Panel finds that this is not a case of typosquatting.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <cardinalhealthusa.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: August 16, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page