Health Level Seven International, Inc. v. McCarragher
Claim Number: FA1703001723981
Complainant is Health Level Seven International, Inc. (“Complainant”), represented by Christopher Taylor of Hooper Hathaway, Michigan, USA. Respondent is McCarragher (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hl7community.org>, registered with NameSecure L.L.C.
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.
David A. Einhorn is appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 27, 2017; the Forum received payment on March 27, 2017.
On March 29, 2017, NameSecure L.L.C. confirmed by e-mail to the Forum that the <hl7community.org> domain name is registered with NameSecure L.L.C. and that Respondent is the current registrant of the name. NameSecure L.L.C. has verified that Respondent is bound by the NameSecure L.L.C. 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 March 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hl7community.org. Also on March 30, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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, Health Level Seven International, Inc., is a membership-based, not-for-profit standards developing organization based in Ann Arbor, Michigan. Complainant uses the HL7 mark in connection with this business to promote its goods and services. Complainant has rights in the HL7 mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,757,428, registered Mar. 9, 1993). Respondent’s <hl7community.org> is confusingly similar to Complainant’s mark as it contains the mark in its entirety and merely adds the generic term “community”.
Respondent has no rights or legitimate interests in <hl7community.org>. Respondent is not commonly known by <hl7community.org>, nor has Respondent’s use of the domain constituted a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent’s domain resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain.
Respondent should be considered to have registered and used <hl7community.org> in bad faith. Respondent registered the domain to disrupt and attract Internet users from Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <hl7community.org> domain name was registered July 26, 2012.
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.”).
Complainant uses the HL7 mark in connection with its business to promote its goods and services. Complainant claims rights in the HL7 mark through its registration with the USPTO (e.g. Reg. No. 1,757,428, registered Mar. 9, 1993). Registration of a mark with the USPTO is sufficient to establish rights in the mark. 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. . . . “.) The Panel therefore finds that Complainant has rights in the HL7 mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain name, <hl7community.org>, is confusingly similar to Complainant’s mark as it contains the mark in its entirety and merely adds the descriptive term “community”. Addition of terms that describe a complainant’s business with respect to a mark does not adequately differentiate the mark from a domain. See Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions”). Here, Complainant asserts the term “community” relates to the community-based nature of Complainant’s business, thereby adding confusion to potential visitors of the disputed domain name. Respondent has not disputed this. The Panel therefore finds that <hl7community.org> is confusingly similar to Complainant’s HL7 mark per Policy ¶ 4(a)(i).
Complainant argues Respondent has no rights or legitimate interests in <hl7community.org>. Where a respondent has failed to submit a response, WHOIS information can substantiate a finding that said respondent is not commonly known by a domain name. See Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA 1617061 (Forum Jun. 9, 2015) (concluding that the respondent was not commonly known by the <amazondevice.org>, <amazondevices.org> and <buyamazondevices.com> domain names under Policy ¶ 4(c)(ii), as the pertinent WHOIS information identified “Timothy Mays,” “Linda Haley,” and “Edith Barberdi” as registrants of the disputed domain names). Further, the use of a WHOIS privacy service can further support a finding that a respondent is not commonly known by a domain name per Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”) The WHOIS information of record initially identified Respondent as “Perfect Privacy, LLC”. The registrar later confirmed Respondent as “McCarragher” after the removal of the privacy shield as a result of this proceeding. The Panel therefore finds that Respondent is not commonly known as <hl7community.org> per Policy ¶ 4(c)(ii).
Complainant contends Respondent’s use of the domain does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Use of a confusingly similar domain name to place advertising for the benefit of the respondent does not indicate rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA 1620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and used <hl7community.org> in bad faith by disrupting the business of a competitor through its use of Complainant’s HL7 mark. Use of a competitor’s mark to disrupt and compete with said competitor’s business is indicative of bad faith registration and use per Policy ¶ 4(b)(iii). Here, <hl7community.org> competes with Complainant’s business as it diverts Internet users looking for Complainant to Respondent, which constitutes evidence of bad faith registration per Policy ¶ 4(b)(iii).
Complainant further argues that Respondent registered and used <hl7community.org> in bad faith by attracting Internet users for Respondent’s commercial gain. The domain name resolves to a page containing pay-per-click advertising for the benefit of Respondent. Use of a disputed domain name to host pay-per-click advertisements and links can support a finding that the domain name was registered and used in bad faith per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA 1575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). It is further noted that Complainant’s mark is incorporated in its entirety in Respondent’s domain name. The Panel therefore finds that Respondent registered and used <hl7community.org> in bad faith per Policy ¶ 4(b)(iv).
Complainant has therefore also 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 <hl7community.org> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: April 28, 2017
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