Rush University Medical Center v. beatrice guilbault
Claim Number: FA1707001740743
Complainant is Rush University Medical Center (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, United States of America. Respondent is Beatrice Guilbault (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rush.hospital>, registered with GoDaddy.com, 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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 19, 2017; the Forum received payment on July 19, 2017.
On July 21, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rush.hospital> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 14, 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@rush.hospital. Also on July 24, 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.
A timely Response was received and determined to be complete on August 10, 2017.
On August 15, 2017, Additional Submission from Complainant was received. The next day, on August 16, 2017, Additional Submission from Respondent was received.
On August 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the Disputed Domain Name <rush.hospital> is confusingly similar to its trademarks RUSH as the combination with the <.hospital> gTLD does not prevent any likelihood of confusion:
(i) The <.hospital> gTLD increases the likelihood of confusion since it directly refers to its hospital and medical services provided under the RUSH trademark.
(ii) The result of an internet search for the terms “rush hospital” pertain almost exclusively to Complainant and its services.
(iii) Internet users are likely to be confused by the similarities between its official domain name <rush.edu> and the Disputed Domain Name <rush.hospital>.
Complainant further claims that Respondent lacks rights or legitimate interest in the Disputed Domain Name:
(i) Its RUSH trademarks are not descriptive words in which Respondent might have an interest.
(ii) Respondent is not affiliated with, nor has it been licensed or permitted to use the RUSH trademarks in the Disputed Domain Name.
(iii) Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services since it resolves to a website providing various sponsored click-through links. Moreover, Respondent has failed to make any developments or “demonstrable preparations” to use the Disputed Domain Name with a bona fide offering of goods or services.
(iv) Respondent is not commonly known through the Disputed Domain Name, either as a business, individual or other organization.
(v) Respondent has chosen the <rush.hospital> Domain Name to trade off the reputation and goodwill associated with the RUSH trademarks and to misleadingly divert internet traffic from Complainant’s website for commercial gain.
Complainant finally argues that the Disputed Domain Name was registered and is being used in bad faith:
(i) Respondent refused to transfer the Domain Name following the reception of Complainant’s request despite its clear connection with the RUSH trademarks.
(ii) Respondent has registered the Disputed Domain Name with the intent to attract internet users to its website for commercial gain by creating a likelihood of confusion with the RUSH trademarks.
(iii) Respondent has registered other domain names relating to hospital and health care systems such as <huntington.hospital< and <northwestern.hospital> which respectively correspond to a non-profit hospital and a nationally ranked academic medical center hospital. Both domains display a page populated with commercial links.
(iv) Respondent’s failure to use the Disputed Domain Name for any legitimate purpose shows registration and use of the Disputed Domain Name in bad faith.
(v) The RUSH trademarks are well-known and there is no reason for Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of these trademarks.
B. Respondent
Respondent first explains that her company, Essayer Productions LLC, has been purchasing domain names since 2015 in order to drive online traffic and visibility in view of monetizing those domain names. Respondent’s strategy is to acquire domain names with very common English words and phrases which are searched and used on a frequent basis (e.g. <urgentcare.hospital>). Then, Respondent develops original articles and content on the acquired domain names to drive interest from internet users (e.g. <simple.yoga>).
Thus, Respondent contends that the Disputed Domain Name is not confusingly similar to Complainant’s RUSH trademarks as:
(i) She registered the Disputed Domain Name in view of the meaning of the words “rush” and “hospital” which are frequently used English words, especially together.
(ii) Complainant does not own any trademark (registered or not) in the “RUSH HOSPITAL” association of terms.
(iii) Internet users could not confuse the Disputed Domain Name <rush.hospital> with Complainant’s official domain name <rush.edu>, in particular given all of the content on Complainant’s website.
Respondent claims to have rights and legitimate interests in the Disputed Domain name as:
(i) Respondent’s professional activity is to purchase domain names comprising generic and commonly-searched terms in order to develop content for and to monetize those domain names, which is a legitimate business.
(ii) Respondent is in the process of developing content for the Disputed Domain Name but it is not possible within just a month. She has made plans to use the disputed domain name in connection with a bona fide offering of goods and services.
Respondent finally contends that she did not register and is not using the Disputed Domain Name in bad faith as:
(i) Respondent has legitimate interests in the disputed domain name, which consists of common terms.
(ii) Respondent did not have actual or constructive knowledge of Complainant when registering the Disputed Domain Name.
(iii) Respondent did not try to benefit from the Disputed Domain Name by offering it to Complainant at an inflated price.
(iv) Respondent has not put any content on the Disputed Domain Name. The actual commercial links were put by GoDaddy, the registrar of the domain name.
(v) Respondent voluntarily released the domain names <huntington.hospital< and <northwestern.hospital> before Complainant initiated this proceeding but owns the domain names <hospice.hospital> and <urgentcare.hospital> which correspond to her strategy of acquiring domain names consisting of common words.
C. Additional Submissions
In its Additional Submissions, Complainant claims that:
(i) Respondent does not demonstrate the number of Internet users commonly researching the combination of terms “rush” and “hospital” while Complainant demonstrates that, when the terms “rush” and “hospital” are paired together in an internet search, the first pages of results pertain exclusively to Complainant and its activities.
(ii) The term “rush” is not descriptive or generic when used in connection with hospital and health care services in view of the use of the RUSH trademarks for such services since as early as 1837.
(iii) Respondent did not provide any evidence of demonstrable preparations to use the Disputed Domain Name and it continues to resolve to a parking page.
(iv) Even if GoDaddy has placed the sponsored click-through links on the website to which the Disputed Domain Name resolves, Respondent is responsible for the content of the resolving website and such use is recognized under the Policy as evidence of use of bad faith.
(v) Respondent was well aware of the existence of Complainant, its trademarks and hospitals as Respondent is located in a western suburb of the city of Chicago where Complainant is located (the closest hospital belonging to the Complainant is located less than 11 miles from Respondent’s address).
In its Additional Submissions, Respondent indicates that:
(i) She is making plans to use the Disputed Domain Name but only a month has passed between the registration date and the filing of the present Complaint.
(ii) Complainant cannot claim to have an exclusive monopoly on generic terms on the internet and this is not a case of obvious cybersquatting.
(iii) The actual use of the domain name does not infringe Complainant’s rights.
Complainant is Rush University Medical Center, a renowned academic health system including several hospitals built in 1837, which has grown to become the largest non-governmental employer in Chicago’s West Side and the 20th largest private sector employer in Chicago. Complainant owns numerous US trademarks, including RUSH, RUSH UNIVERSITY MEDICAL CENTER and related variants of RUSH signs, applications and registrations in connection with goods and services in the fields of health care, scientific and medical research, health and medical education, business and hospital management and consulting, managed health care services, and a variety of goods and services related thereto. Also, Complainant has used the RUSH trademark in commerce since as early as 1837 and has common law rights on it.
Respondent is Beatrice Renee Guilbault, an entrepreneur whose company is Essayer Productions LLC. She is involved in acquiring domain names with common terms which are frequently used and searched for in order to monetize these domain names after driving online traffic and visibility with original articles and content. She is domiciled in Illinois, in the United States.
Respondent registered the Disputed Domain Name <rush.hospital> on June 13, 2017. Based on the evidence provided in the case file, the Disputed Domain Name directs to a parking page displaying sponsored pay-per-click links.
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.
Complainant asserts common law rights and trademark rights in the RUSH sign through its numerous US trademark applications and registrations. The Panel finds that these registrations, along with the use of the RUSH sign in connection with goods and services in the fields of health care, scientific and medical research, health and medical education and other related goods and services sufficiently establish Complainant’s rights in the RUSH trademarks under Policy ¶ 4(a)(i) (See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542, Forum Aug. 9, 2015).
The Disputed Domain Name <rush.hospital> fully incorporates Complainant’s RUSH trademark with the mere addition of the <.hospital> generic top-level domain (“gTLD"). The Panel finds that the full incorporation of Complainant’s trademark is sufficient to establish confusing similarity for the purposes of the Policy (See Retail Royalty Company and AE Direct Co LLC v. wang mo ran, FA 1654301, Forum Feb. 5, 2016).
Usually, the gTLD is irrelevant when comparing the trademark and the disputed domain name (see Starkey v. Bradley, FA 874575, Forum Feb. 12, 2007). However, in this case the <.hospital> gTLD corresponds to Complainant’s area of trade and services covered by its RUSH trademark. Thus, the Panel finds that it is relevant to assess the confusing similarity between the Disputed Domain Name <rush.hospital> and Complainant’s RUSH trademark as it enhanced the likelihood of confusion.
Respondent claims that the Disputed Domain Name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s RUSH trademark. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights on the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. (See Precious Puppies of Florida, Inc. v. kc, FA 1028247, Forum Aug. 10, 2007 and Vitello v. Castello, FA 159460, Forum July 1, 2003).
Consequently, the Panel finds that the Disputed Domain Name is confusingly similar to the RUSH trademark in which Complainant has rights, in accordance with Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant bears the burden of establishing that Respondent lacks rights or legitimate interests in the Disputed Domain Name. However, where Complainant shows a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name, the burden of proof shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828, Forum Aug. 18, 2006 and see also AOL LLC v. Gerberg, FA 780200, Forum Sept. 25, 2006).
In the present case, Complainant has made a prima facie case demonstrating that Respondent is not commonly known by the domain name per the WHOIS, nor has she any connection whatsoever with Complainant.
Additionally, Complainant contends that Respondent is using the Disputed Domain Name to host a website that promotes other commercial sites via click-through links, presumably netting Respondent commercial gain. Panel finds that such use does not correspond to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name (See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867, Forum June 2, 2015).
In view of Complainant’s arguments, the Panel finds that Complainant satisfies its burden of proof. The burden shifts to Respondent to show that she does have rights or legitimate interests in the Disputed Domain Name <rush.hospital>.
Respondent explains that she is involved in acquiring domain names with common terms which are frequently used and searched for in order to monetize these domain names after driving online traffic and visibility with original articles and content. In accordance with her strategy, Respondent indicates having registered the Disputed Domain Name in view of the meaning of the words “rush” and “hospital” which are frequently used English words, especially together. She also registered the domain name <urgentcare.hospital> with the same scheme. Respondent finally contends that she is in the process of developing content made of original articles for the Disputed Domain Name, such as she did for the domain name <simple.yoga> and that she has already made plans to use the Domain Name <rush.hospital> in connection with a bona fide offering of goods and services. She further argues that such developments take time and that it is not possible within just a month.
As stated in the WIPO Jurisprudential Overview 3.0 ¶ 2.10, the Panel finds that merely registering a domain name comprised of common terms such as “rush” and “hospital” does not by itself automatically confer rights or legitimate interests on Respondent. “In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights”.
In the present case, the Panel agrees that it requires some time to develop content for a website and that a month is not necessarily enough. However, the Panel finds that Respondent did not provide any evidence of demonstrable preparations to use the Disputed Domain Name.
In any event, without any evidence and in view of the notoriety of Complainant’s RUSH trademark in connection with goods and services in the fields of health care, scientific and medical research, health and medical education and other related goods and services, the Panel finds it hard to imagine a bona fide offering of goods and services through the Disputed Domain Name <rush.hospital>. All the more so in view of the fact that, when performing an Internet search for the terms “rush” and “hospital”, the first pages of results pertain exclusively to Complainant and its activities.
Therefore, the Panel determines that Respondent has no rights or legitimate interests in the Disputed Domain Name <rush.hospital> in accordance with Policy ¶ 4(a)(ii).
Complainant attests that it is inconceivable that Respondent did not know about Complainant given its well-known status and the longstanding use of its RUSH trademark. Complainant further argues that it has 62 hospitals, clinics, and outpatient locations in the greater Chicago area where Respondent is domiciled, with the closest being less than 11 miles from Respondent’s address.
In view of these elements, the Panel finds it hard to believe that Respondent did not have actual or constructive knowledge of Complainant when registering the Disputed Domain Name.
Even if it is true, Respondent should have ensured that the registration of the Disputed Domain Name would not infringe the rights of any third party before registering said domain name in accordance with Section 2 of the ICANN Policy. Especially considering the fact that Respondent is involved in acquiring domain names with common terms which are frequently used and searched for in order to monetize these domain names after driving online traffic and visibility.
As demonstrated by Complainant, a simple search on the Internet with the terms “rush” and “hospital” would have revealed Complainant’s RUSH trademarks and activity to Respondent.
Thus, the Panel finds that Respondent registered the Disputed Domain Name in bad faith.
Regarding the use of the Disputed Domain Name, Complainant asserts that Respondent is using the Domain Name <rush.hospital> in bad faith as it directs to pay-per-click hyperlinks. Inclusion of pay-per-click hyperlinks, even if the registrant is not directly responsible for such links, often constitutes prima facie evidence of bad faith (See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786, Forum Aug. 2, 2015 and Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034, Forum June 4, 2015).
Respondent claims that she is in the process of developing content for the Disputed Domain Name and that she has made plans to use the disputed domain name in connection with a bona fide offering of goods and services. However, Respondent did not provide any evidence of such preparations other than the example of her domain name <simple.yoga>.
Consequently, the Panel finds 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 <rush.hospital> domain name be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: August 30, 2017
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