Cerner Corporation v. yangzhichao
Claim Number: FA1607001685754
Complainant is Cerner Corporation (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is yangzhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcernerhealth.com>, registered with 22net, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartere d Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2016; the Forum received payment on August 1, 2016.
On July 27, 2016, 22net, Inc. confirmed by e-mail to the Forum that the <wwwcernerhealth.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. 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 August 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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@wwwcernerhealth.com. Also on August 2, 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 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Language of Proceeding
Complainant requests this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Complainant claims it would cause unnecessary delay and expense to require translation into Chinese. Respondent is capable of proceeding in English because the <wwwcernerhealth.com> domain is name is written with Latin characters, rather than Chinese characters. The component words, “Cerner” and “health,” are English words. Respondent has previously been involved in a UDRP dispute with Complainant, Cerner Corporation v. yangzhichao, FA 1512001653943 (Forum Feb. 16, 2016) in which Respondent was determined to be able to proceed in English.
Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language (not really present here), filing of a trademark registration with an entity which evinces an understanding of the English language (not really present here), and any evidence (or lack thereof) evincing Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). The Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
This Panel is most persuaded by the parties having had another UDRP proceeding (Cerner Corporation v. yangzhichao, FA 1512001653943 (Forum Feb. 16, 2016)) where Respondent was considered able to proceed in English. Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence Respondent is conversant and proficient in the English language. The Panel decides the proceeding should be conducted in English.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of U.S. Trademark registrations that are relevant to the present administrative proceeding. [See Case File]
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds (UDRP Rule 3(b)(ix)):
A. Complainant’s Legitimate Rights to Cerner® and Cerner Health® Marks
Complainant, Cerner Corporation, was founded in 1979. Since incorporation in January 1980, Cerner Corporation has engaged in the business of consulting with and producing, marketing, and selling computer software and devices in the hospital and health industry. Complainant has acquired a worldwide reputation for quality goods and services, and has accumulated substantial public goodwill. In the course of its business, Complainant has acquired extensive rights in numerous trade names, trademarks, and service marks. Complainant’s use of the CERNER® marks began in the United States as early as January 1985. Complainant has continued advertising, promoting, and selling its goods and services worldwide using the CERNER® and CERNER HEALTH® marks. The methods of advertising, promoting, and sales are many, including on the Internet.
Complainant has built common law trademark rights and goodwill, and owns several registered and applied for trademarks for CERNER® and CERNER HEALTH®. Complainant’s CERNER® marks, which Complainant has continuously used in connection with the production, marketing, and selling of computer software and devices since January 1985, and CERNER HEALTH® mark since January 2012, have acquired significant goodwill, widespread public recognition, and fame as a means by which Complainant and its various goods and services are known and their source of origin are identified globally.
Complainant has devoted considerable efforts to advertise and promote its services under the CERNER® and CERNER HEALTH® marks, and has developed widespread recognition and fame in the marketplace for the goods and services offered under the mark. The CERNER® and CERNER HEALTH® marks are well-known and famous marks by which Complainant, Cerner Corporation, is identified and also is accepted by the purchaser as distinguishing Complainant’s goods and services from the goods and services of others. Complainant has also extensively advertised and promoted its services offered under the CERNER® and CERNER HEALTH® marks on the Internet, including on the websites <cerner.com> and <cernerhealth.com> continuously since January 9, 1996 and September 25, 2009 respectively. Thus, Complainant has established common law rights in CERNER.COM™ and CERNERHEALTH.COM™.
The <cerner.com> and <cernerhealth.com> domain names are registered to Complainant.
Complainant’s presence on the Internet promotes Complainant’s CERNER® and CERNER HEALTH® computer software and devices, as well as related goods and services, and identifies Complainant as the source of such goods and services. Complainant has acquired and now enjoys substantial goodwill and a valuable reputation through CERNER® and CERNER HEALTH®. The maintenance of high standards of quality and excellence for Complainant’s computer software and devices, services, as well as related goods and services, and identification of Complainant as the source of such goods and services, has contributed to this valuable goodwill and reputation. The goodwill embodied in Complainant’s family of marks, and consequently Complainant’s valuable reputation and credibility in the computer and health industries, depend on the integrity of the marks as identifying Complainant as the sole source of its goods and services, and not any other source.
B. Respondent’s Illegitimate Activities Relating to the Disputed Domain Name
[a]. In accordance with UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i):
The Disputed Domain Name is Confusingly Similar to the Marks in which Complainant has Rights:
The disputed domain name <wwwcernerhealth.com> is confusingly similar to Complainant’s CERNER® and CERNER HEALTH® marks as well as Complainant’s legitimate domain name <cernerhealth.com> and CERNERHEALTH.COM™ mark . Policy ¶4(a)(i) does not require that Complainant hold a registration with a governmental agency to establish rights in the <cernerhealth.com> or CERNERHEALTH.COM™. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required - unregistered or common law trademark or service mark rights will suffice” to support a domain complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. ARB. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); and see also CBS Broadcasting, Inc., f/k/a CBS, Inc. v. Nabil Z. Aghloul, WIPO case No. D2004-0988 (finding protectable rights in unregistered common law mark).
The disputed domain name is confusingly similar to Complainant’s domain name, <cernerhealth.com> and CERNERHEALTH.COM™ mark. Complainant registered and has been using the marks continuously in commerce since September 25, 2009, and they are trademarks of Complainant. The disputed domain name incorporates each mark in its entirety, merely adding the prefix ‘www’ indicating world wide web before the mark. Adding the prefix ‘www’ indicating world wide web in a domain name does not avoid confusing similarity. See Bank of Am. Corp. v InterMos, FA 95092 (Nat. Arb. Forum Aug 1, 2000)(finding that the respondent's domain name wwwbankofamerica.com is confusingly similar to the complainant’s trade mark bankofamerica because it takes advantage of a typing error eliminating the period between the www and the domain name that users commonly make when searching on the Internet). See also Venator Group Retail Inc v. Michele Dinoia d/b/a SZK.com, FA 101506 (Nat. Arb. Forum December 10, 2001) (“[T]he <wwwfootlocker.com> domain name is confusingly similar to Complainant[‘s FOOT LOCKER mark, as it merely adds the letters “www,” a common top-level designator for domain names, to the beginning of Complainant’s mark.”); and see also Dollar Rent A Car Inc. v. Albert Jackson, FA 187421 (Nat. Arb. Forum September 24, 2003) (Respondent’s <wwwdollarrentacar.com> domain name is confusingly similar to Complainant’s mark because the domain name fully incorporates the DOLLAR RENT A CAR mark and has merely omitted the period after the prefix “www” that would normally be found in a website’s address. Respondent, through its domain name takes advantage of Internet users who mistakenly omit the period after the “www” prefix when they attempt to access the <dollarrentacar.com> domain name.).
With regards to the CERNER HEALTH® mark, the disputed domain name incorporates the entire CERNER HEALTH® mark merely combining the two words, adding “www” before the mark, and adding the top-level domain (“TLD”) “.com.” Prior panels have found the addition of “www” to complainant’s mark insignificant in the determination of confusing similarity. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to complainant’s registered trademark “Bank of America” because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters "www" are not distinct in the "Internet world" and thus the respondent's <wwwmarieclaire.com> domain name is confusingly similar to the complainant's MARIE CLAIRE trademark); and see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to complainant's registered DANA mark because complainant's mark remains the dominant feature). The addition of the gTLD “.com” is irrelevant to a confusingly similarity analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
In regards to the CERNER® mark, the disputed domain name merely adds the “www,” the term “health”, and also adds the top-level domain (“TLD”) “.com.” Such slight changes do not create a distinguishing difference and are without legal significance in the overall commercial impression conveyed by the domain name. The addition of “www”, a term, and gTLD does not distinguish respondent’s domain name from complainant’s mark. See Donald J. Trump and Trump Hotels & Casino Resorts Inc v. Baltic Consultants Limited, FA 101814 (Nat. Arb. Forum December 10, 2001) (“The <wwwtrumpcardcasino.com> is also confusingly similar to complainant’s TRUMP and TRUMP CARD marks. The addition of the generic term “casino” is merely descriptive of complainant’s business and only enhances the domain name’s confusing similarity.”); see also Wells Fargo & Company v. Albert Jackson, FA 271697 (Nat. Arb. Forum June 29, 2004) (“Respondent’s <wwwwellsfargofinancial.com> domain name is also confusingly similar to complainant’s WELLS FARGO mark. This domain name is a classic example of typosquatting, the deliberate use of another’s trademark (with minor misspellings that mimic typographical errors) in order to mislead Internet users. Here, respondent is attempting to attract Internet users who fail to include the period between the “www” and the words “Wells Fargo Financial” when attempting to reach complainant’s website at the <wellsfargofinancial.com> domain name. As complainant actually uses the word “financial” in connection with its WELLS FARGO mark at its <wellsfargofinancial.com> domain name, the disputed domain name is confusingly similar to complainant’s registered WELLS FARGO mark.”); see also Citizens Financial Group, Inc. and Charter One Financial, Inc. v. DomainPark Limited a/k/a Domain Park Limited a/k/a hostmaster, FA 1142126 (Nat. Arb. Forum April 8, 2008) (“Respondent’s <charteronebankhome.com>, <charteronemortgagee.com>, <jjcharterone.com>, <wwwcharteronebankgiftcard.com> and <charteronenbank.com> domain names each incorporate complainant’s CHARTER ONE mark with the addition of generic or descriptive terms, the addition of letter(s) and the addition of common typographical errors. None of these alterations distract from the prominence of complainant’s mark in the disputed domain names. Also, the addition of the generic top-level domain (“gTLD”) “.com” is not relevant in evaluating whether a disputed domain name is confusingly similar to a mark. Therefore, the Panel finds these disputed domain names are confusingly similar to complainant’s CHARTER ONE mark pursuant to Policy ¶4(a)(i).”).
Respondent’s registration and use of the disputed domain name, which is confusingly similar to Complainant’s CERNER®, CERNER HEALTH®, and CERNERHEALTH.COM™ marks is misleading and causes confusion to consumers who are diverted away from Complainant’s websites at <cerner.com> and <cernerhealth.com>, where Internet users can obtain consulting services, interact with electronic medical records, and purchase computer software, devices, and services for use in the health industry from Complainant.
[b]. In accordance with UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii):
The Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name:
No available evidence suggests that Respondent has ever been commonly known by the disputed domain name. Complainant submits that the domain name at issue is not the nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent. The WHOIS information demonstrates that Domain Admin is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶4(c)(ii), Domain Admin lacks rights and legitimate interests in the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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 Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (“Given the Complainant’s established use of their famous VICTORIA’S SECRET marks it is unlikely that the respondent is commonly known by either [the <victoriasecretcasino.com> or <victoriasecretcasino.net>] domain name.”).
Complainant has not licensed or otherwise permitted Respondent to use any of Complainant’s marks or to apply for or use any domain name incorporating any of Complainant’s marks, including Complainant’s famous CERNER®, CERNER HEALTH®, and CERNERHEALTH.COM™ marks. See Charles Jordan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); and see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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).
Respondent has not used the domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain name resolves to a website displaying Complainant’s CERNER® mark and featuring links to third party websites, some of which are Complainant’s direct competitors such as Validic and MarKLogic. Even when an Internet user clicks on the link entitled “CERNER EMR” the user is redirected to a subsequent webpage displaying additional links to competitor’s websites. Respondent’s offering of competing hyperlinks in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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).”); and see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Respondent is using the <wwwcernerhealth.com> domain name to operate a website featuring commercial links to various third-party websites, through which Respondent presumably receives referral fees. Respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s diversionary use of complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of complainant, was not a bona fide offering of goods or services); see also Under Armour, Inc. v. Namase Patel / Mumbai Domains, FA 1603207 (Nat. Arb. Forum March 6, 2015) (finding that Respondent’s use of the <wwwunderarmour.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is receiving pay-per-click fees from hyperlinks appearing at the <wwwunderarmour.com> domain name. … Thus, the Panel finds that Respondent lacks rights under Policy ¶4(c)(i) and Policy ¶4(c)(iii).); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use).
Respondent is engaged in typosquatting, which is the opportunistic registration of a confusingly similar domain name in order to profit from the resulting Internet user confusion. Respondent has registered and is using a domain name that merely appends “www” to Complainant’s CERNERHEALTH® and CERNERHEALTH.COM™ marks in attempts to siphon off Complainant’s customers by preying on the Internet user’s mistakes. Respondent’s typosquatting is further evidence that it lacks rights and legitimate interests pursuant to Policy 4(a)(ii). See Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. WWW Enterprise, Inc., FA570132 (Nat. Arb. Forum November 22, 2005) (Respondent, in registering <wwwdelta.net>, <wwwdelta.org>, and< wwwdeltaairlines.net>, created domain names that merely append “www” to Complainant’s marks. This practice, known as “typosquatting,” attempts to siphon off the mark holder’s customers by preying on the Internet user’s typing mistakes when entering a domain name in the URL bar of a browser. Respondent’s practice of typosquatting is further evidence that it lacks rights and legitimate interests pursuant to Policy 4(a)(ii).); see also Amazon.com, Inc v JJ Domains, FA 514939 (Nat Arb. Forum Sept 2, 2005) (respondent lacks rights and legitimate interests in the www- amazon.com domain name because the addition of 'www-' constitutes typo squatting); see also RE/MAX Int’l, Inc. v. Seocho, FA 142046 (Nat. Arb. Forum Feb. 25, 2003) (finding that the respondent has no rights or legitimate interests in the <wwwremax.com> domain name as it is merely using the complainant’s mark to earn profit from pop-up advertisements).
The disputed domain name appears to be a typosquatted version of the Complainant's domain name <cernerhealth.com>, chosen in the hope that a customer might mistakenly reach Respondent's web site by typing 'wwwcernerhealth.com' rather than 'www.cernerhealth.com.' Respondent’s use of the domain name is designed to intentionally profit from a typographical error. Such use is not in connection with a bona fide offering of goods or services. Prior panels have ruled that typosquatting is evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶4(a)(ii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint); see also Delta Corporate Identity, Inc. and Delta Air Lines, Inc. v. Yong Li, FA576550 (Nat. Arb. Forum November 28, 2005) ([T]he Panel finds Respondent’s use of the <wwwdeltaairlines.com> domain name constitutes typosquatting, which is evidence that Respondent lacks rights and legitimate interests pursuant to Policy ¶4(a)(ii).); and see Cable News Network LP v Stonybrook Investments LTD., FA 96282 (Nat. Arb. Forum January 22, 2001) (“Respondent’s use of the domain name is designed to intentionally profit from a typographical error. Such use is not "in connection with a bona fide offering of goods or services.").
Respondent registered the disputed domain name in an attempt to pass itself off as Complainant. The disputed domain name, <wwwcernerhealth.com>, is identical to Complainant’s legitimate domain name ‘www.cernerhealth.com’. Prior panels have found that a respondent's attempt to pass itself off as the complainant is not bona fide offering of goods and services under Policy 4 (c)(i) nor a legitimate non- commercial or fair use pursuant to Policy ¶4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA655014 (Nat. Arb. Forum April 25, 2006) (The panel held that respondent’s attempt to pass itself off as the complainant was not a bona fide offering of goods or services or a legitimate noncommericial or fair use); and see also American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Respondent could not have legitimately chosen the domain name <wwwcernerhealth.com>, and its decision to register this domain name indicates that it intentionally intended to create an association with Complainant, Cerner Corporation, when no such association exists. Thus, Respondent has no rights or legitimate interest in the domain name <wwwcernerhealth.com>, which is confusingly similar to Complainant’s famous CERNER® and CERNER HEALTH® marks.
[c]. In accordance with UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii):
Respondent Has Registered and Is Using the Disputed Domain Name in Bad Faith:
Respondent registered a domain name that is confusingly similar to Complainant’s registered CERNER®, CERNER HEALTH®, and CERNERHEALTH.COM™ marks, and identical to Complainant’s legitimate domain name. Respondent registered and used the domain name <wwwcernerhealth.com> for the primary purpose of creating a likelihood of confusion with Complainant’s internationally known marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and pass itself off as Complainant. Respondent’s attempt to pass off <wwwcernerhealth.com> as being affiliated with Cerner Corporation constitutes disruption and bad faith registration and use under Policy ¶4(b)(iii) and Policy ¶4(b)(iv). See The Exploratorium v. port80cafe, FA 1269220 (Nat. Arb. Forum Aug. 4, 2009) (finding that passing oneself off as being affiliated with a complainant constitutes bad faith registration and use); and see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Respondent’s disputed domain name resolves to websites which display links to the third-party websites of Complainant’s competitors. Respondent’s use of the disputed domain name disrupts Complainant’s business and diverts Internet users seeking Complainant’s website with links to competitor’s websites. Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶4(b)(iii) [and] (iv).”); and see also Univ of Texas SYs. v Smith FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the Domain Name to divert Internet users to the Complainant's competitors constitutes bad faith registration and use under the Policy.).
Respondent presumably receives click-through fees for displaying links to Complainant’s competitors on the website resolving from the confusingly similar disputed domain names. Respondent is attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship or affiliation of Respondent’s site. Respondent registered and uses the disputed domain name to intentionally misdirect Internet users looking for Complainant’s online business to Respondent’s own revenue generating website. Even after the user mistakenly visits Respondent’s home page and clicks on the link for “CERNER EMR,” the user is redirected to a webpage displaying additional links to competitor’s websites, evidence that Respondent’s action to mislead the user is intentional. Respondent is thereby attempting to trade on the goodwill built up in Complainant’s marks, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv). Respondent’s use of Complainant’s famous marks to compete with Complainant and promote competitors’ goods and services causes Internet users confusion, harms the goodwill of the marks, and works to dilute Complainant’s interest in the marks. Therefore, Respondent’s attempt to commercially profit from the domain name constitutes bad faith registration and use under the Policy. See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶4(b)(iv)); see also Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4, 2002) (“Redirecting Internet users attempting to reach a complainant’s website in order to gain a profit off of a complainant is one example of bad faith use and registration under the Policy.”); and see also 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’”).
Respondent has engaged in typosquatting which constitutes bad faith registration and use pursuant to ¶4(a)(iii). Typosquatting involves the registration and use of domain names that are the result of common typographical errors of well-known domain names. The disputed domain name is identical to the Complainant’s registered trademark and the domain name of Complainant’s website at ‘www.cernerhealth.com’. It is common for consumers to fail to type a “.” after “www” when entering a website address and Respondent is taking advantage of this common typing mistake. Respondent is using a common typographical error in order to typosquat with the disputed domain name. Previous Panels have found that typosquatting is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences . . . an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the “www” portion of [a] web-address,” evidence that the domain name was registered and used in bad faith); see also Bayer Aktiengesellschaft v. Yongho Ko, D2001-0205 (WIPO Apr. 6, 2001) (finding bad faith because the “addition of the letters ‘www’ to the Complainant’s mark must on the balance of probabilities be considered to be a deliberate attempt to exploit user’s typographical mistakes when seeking Complainant’s web site”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”); and see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)”).
Respondent had actual knowledge of the Complainant’s <cernerhealth.com> domain name as well as Complainant’s CERNER®, CERNER HEALTH®, and CERNERHEALTH.COM™ marks when registering and subsequently using the disputed domain name. Complainant’s federal registrations for its marks constitute constructive notice to Respondent of Cerner Corporation’s rights. Respondent’s display of a link entitled “CERNER EMR” demonstrates that Respondent has knowledge of Complainant’s business and products such as Complainant’s Electronic Medical Records (EMR). Furthermore, Respondent’s act of appending “www” to the beginning of the domain name and to the CERNER HEALTH® mark, Complainant’s longstanding trademark registrations, and Respondent’s use of the website at the disputed domain name to display links to Complainant’s competitors, all demonstrate Respondent’s knowledge of Complainant’s rights in the CERNER®, CERNER HEALTH®, and CERNERHEALTH.COM™ at the time of registration. Respondent’s registration of a domain name that is confusingly similar to Complainant’s CERNER®, CERNER HEALTH®, and CERNERHEALTH.COM™ marks and identical to Complainants website domain name <cernerhealth.com> shows that Respondent had actual knowledge of Complainant’s CERNER® and CERNER HEALTH® marks. Cerner Corporation is a global company that conducts business internationally including in Asian countries such as China. Respondent registered the disputed domain name long after Complainant’s registration of the CERNER® and CERNER HEALTH® marks and <cernerhealth.com> domain name. Complainant has been using the CERNER® mark since at least as early as January 1985 and successfully registered the mark with the United States Patent and Trademark Office (USPTO) on September 22, 1987. Complainant registered the CERNER HEALTH® mark with the USPTO on July 15, 2014 which Complainant had been using in commerce since at least as early as January 9, 2012, and registered the domain name <cernerhealth.com> which Complainant has been using in business since September 25, 2009. It is not coincidental that Respondent registered a domain name on November 8, 2014 that is identical to Complainant’s domain name. The fact that Respondent registered a domain that is identical to Complainant’s domain name by appending “www” at the beginning is evidence that Respondent had actual knowledge of Complainant’s marks and domain name. As such, Respondent registered the disputed domain name in bad faith under Policy ¶4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); and see also Cable News Network LP v Stonybrook Investments LTD., FA 96282 (Nat. Arb. Forum January 22, 2001) (“Respondent’s registration and use of wwwcnn.com is clearly in bad faith. Respondent registered and used the domain name with actual knowledge of Complainant’s mark.”).
Respondent’s conduct, knowing full well that it has no right to use Complainant’s marks, demonstrates that it is knowingly, willfully, and with a bad faith intent, trading on the value of, and interfering with, Complainant’s right to use its mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 the following three elements to obtain an order transferring or cancelling a domain name:
(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 CERNER HEALTH mark through its registration with the United States Patent and trademark Office (“USPTO”) (Reg. No. 4,568,686, registered July 15, 2014), which it uses in conjunction with consulting with, producing, marketing, and selling computer software and devices in the hospital/health care industry. Complainant has established rights under Policy ¶ 4(a)(i) by showing its mark was registered with any national authority (such as the USPTO). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Complainant has carried its burden of proof and demonstrated its rights to the mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <wwwcernerhealth.com> domain name is confusingly similar to the CERNER HEALTH mark because it contains the words of the mark combined with the prefix “www” and the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Likewise, the prefix “www” does nothing to distinguish the domain name from Complainant’s mark. The <wwwcernerhealth.com> domain name is confusingly similar to the CERNER HEALTH mark under Policy ¶ 4(a)(i). See Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum Jan. 18, 2016) (concluding the addition of “www” takes advantage of a common typing error, and does not adequately distinguish the domain name from the mark or overcome a finding of confusingly similar); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has 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 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 claims Respondent is not commonly known by the <wwwcernerhealth.com> domain name because there is no evidence to suggest that fact. The currently available WHOIS information lists “yangzhichao” as Registrant (the domain name was registered using a privacy service, which prevented Respondent’s true identity from being disclosed to the general public before the Proceeding began). Complainant did not give Respondent permission to use the CERNER HEALTH mark in a domain name. Respondent has not presented any contradictory facts. The Panel must conclude Respondent is not commonly known by the <wwwcernerhealth.com> 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).
Complainant claims Respondent fails to use the <wwwcernerhealth.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to pass off as Complainant and to host links to third-party links to websites including those of competitors of Complainant. The resolving dynamic parking page displays the CERNER mark along with links to competitors, such as “Valadic” and “MarKLogic.” While this certainly supports a finding Respondent is not providing a bona fide offering of goods or services or a legitimate noncommercial or fair use, it does not constitute adequate proof Respondent is trying to “pass itself off” as Complainant. This Panel therefore finds Respondent fails to use the <wwwcernerhealth.com> domain name to provide (i) a bona fide offering of goods or services or (ii) a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Since Respondent used a privacy service to register the domain name at issue, Respondent did not acquire any rights to the domain name because Respondent did not publicly associate itself with the domain name in any fashion. It was impossible for Respondent to acquire any secondary meaning from the domain name because Respondent was anonymous.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated a pattern of targeting Complainant in domain names as demonstrated by a previous UDRP decision, referring to Cerner Corporation v. yangzhichao, FA 1512001653943 (Forum Feb. 16, 2016). Complainant suggests this violates Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum November 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶4(b)(ii).”). However, Policy ¶ 4(b)(ii) provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct.” [emphasis added] While the pattern is there, Complainant has not been prevented from registering its mark as a domain name because Complainant owns the <cernerhealth.com> domain (inter alia). Therefore, Policy ¶ 4(b)(ii) is not applicable. While this Panel is not willing to find bad faith registration and use under Policy ¶ 4(b)(ii), this Panel is willing to find it under the general penumbra of Policy ¶ 4(b) because the list of bad faith examples under Policy ¶ 4(b) is illustrative and not exhaustive.
Complainant claims Respondent uses the <wwwcernerhealth.com> domain name in bad faith because the resolving website is used in an attempt to pass itself off as Complainant and to host third party links to competitors of Complainant. While this Panel is not willing to find Respondent is attempting to pass itself off as Complainant based solely upon the single fact Respondent registered a confusingly similar domain name with a dynamic parking page, this Panel is willing to find bad faith registration and use because the dynamic parking page displays the CERNER mark along with links to various competitors, such as “Valadic” and “MarKLogic” under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶4(b)(iii).”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶4(b)(iv)). Respondent registered and uses the domain name in bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Complainant claims Respondent registered the <wwwcernerhealth.com> domain name in bad faith because it did so with actual knowledge of Complainant and its CERNER HEALTH mark. Respondent registered the disputed domain name on November 8, 2014 (one day after the <cernerheath.com> domain in the previous UDRP proceeding was registered) and the related UDRP proceeding was decided February 16, 2016. Therefore, Respondent did not have the prior ruling when this disputed domain name was registered. However, Respondent must have known about Complainant’s mark because it registered two confusingly similar domain names just a day apart…with no explanation. This circumstantial evidence makes it a virtual certainly Respondent actually knew about Complainant’s rights before registering the disputed domain name.
Complainant claims Respondent registered the <wwwcernerhealth.com> domain name in bad faith because the domain name is a typosquatted version of Complainant’s mark and Complainant’s own domain name, <wwwcernerhealth.com>. The UDRP does not use the word “typosquatting.” The standards for finding bad faith are fairly clearly laid out in the UDRP and its interpreting decisions. Complainant must use those standards rather than a colloquial shorthand for them (and Complainant has met the UDRP standards as described above). Therefore, this Panel will not find bad faith registration and use due to “typosquatting.”
Finally, Respondent registered the disputed domain name using a privacy service. This means the legal owner of the domain name has no rights to the domain name. While the beneficial owner has the exclusive rights to the domain name, the beneficial owner does not publicly associate itself with the domain name. This means the real party in interest is concealing itself from the public. In the commercial context, this makes no sense. Using a privacy service raises the rebuttable presumption of bad faith registration and use in the commercial context. Respondent has done nothing to rebut this presumption. Therefore, this Panel is willing to find bad faith registration and use in this case upon this ground alone.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <wwwcernerhealth.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 6, 2016
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