WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Social & Health Services, Ltd. v. HealthFinder, Inc.
Case No. D2001-0318
1. The Parties
The Complainant in this proceeding is Social & Health Services Ltd. ("Complainant"), having a principal place of business at 11426 Rockville Pike, Suite 100, Rockville, Maryland 20850, USA.
The Respondent in this proceeding is HealthFinder, Inc. ("Respondent"), the registrant of the domain name in issue with a listed mailing address of 3733 N. Rosemead Boulevard, Suite 205, Rosemead, California 91770, USA.
2. The Domain Name and Registrar
The domain name in issue is .
The registrar of the domain name in issue is Network Solutions, Inc. ("Registrar"), located at 505 Huntmar Park Drive, Herndon, Virginia, USA.
3. Procedural History
On March 2, 2001, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name and paid the required filing fee for appointing a single member Panel. On March 7, 2001, the Center sent an "Acknowledgement of Receipt of Complaint" to the Complainant and the Respondent.
On March 12, 2001, a "Request for Verification" concerning the domain name was sent to the Registrar. On March 19, 2001, the Registrar provided a Verification Response to the Center stating, in pertinent part, that: (i) it is the registrar of the domain name ; (ii) "HealthFinder Inc" is the current registrant of the domain name registration with a listed mailing address of 3733 N. Rosemead Blvd. #205, Rosemead CA 91770, US; (iii) "Advanced Universal Technologies, Inc." is the Administrative, Technical and Billing Contact for the domain name registration; (iv) NSI�s 5.0 Service Agreement is in effect; and (v) the domain name is currently in "active" status.
On March 20, 2001, the Center found the Complaint to be in compliance with the formal requirements of ICANN�s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On March 20, 2001, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the e-mail addresses provided for that purpose, and to the postal addresses and facsimile number listed for the Respondent and the Administrative, Technical and Billing Contact in the domain name registration. Copies of the Notification and Complaint were also sent to the Registrar, ICANN and the Complainant. The Center did not receive any error messages or notices of non-delivery when the Notification and Complaint were sent to the above e-mail addresses or to the postal addresses and fax number listed in the registration for the Respondent.
On April 9, 2001, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On April 24, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
Based upon a request from the Panelist, the Center sent Administrative Panel Procedural Order No. 1 on May 1, 2001, to the parties requesting further information concerning the registration of the domain name in issue, the Respondent�s Web site and the Complainant's notice to the Respondent of its rights in the domain name in issue. On May 25, 2001, the Complainant submitted Complainant�s Reply to Administrative Panel Procedural Order No. 1 ("Complainant�s Reply") to the Center. No response was received from the Respondent in response to the Panelist�s request.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint or to the Administrative Panel Procedural Order no. 1. The Panelist shall accordingly draw such inferences from the Respondent�s defaults as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Complainant�s Reply, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complaint is based on the mark HEALTHFINDER registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainant relies on the following U.S. service mark registrations:
HEALTHFINDER, Reg. No. 2,197,551 (first use and first use in commerce 11/25/96; issued 10/20/98) for computer services, namely, providing databases in the health field for referrals to health information and health sources; providing health information
HEALTHFINDER and Design, Reg. No. 2,201,147 (first use and first use in commerce 3/1/97; issued 11/3/98) for computer services, namely, providing databases in the health field for referrals to health information and health sources; providing health information
Copies of the certified copies of these registrations were attached as Annexes 3 and 4 to the Complaint.
A search result from a query of the Registrar�s Whois database shows that the domain name was registered on October 1, 1998, by the Respondent and that there is currently a Web site accessible at this domain name.
A search result from a query of the Registrar's Whois database shows that the domain names , and were registered by the Complainant on March 26, 1997, December 9, 1998, and February 10, 1997, respectively. (Annexes 5, 6 and 7 to the Complaint). The domain names and were both registered by the Complainant on October 28, 1999. (Annexes 8 and 9 to the Complaint). These domain names are aliases for a Web site located at , a copy of which was attached to the Complaint as Annex 10.
5. Parties� Contentions
Complainant
The Complainant asserts that, under contract with the U.S. Department of Health and Human Services, it operates a Web site at as a gateway Web site that links to a broad range of consumer health and human services information resources produced by the United States Government and certain partner organizations. The Complainant asserts that it has already invested a great deal of money to market and brand the site, which has become one of two government sponsored Web sites on the "Health Hot 100," with approximately 6 million hits monthly.
The Complainant asserts that it is the owner of the two federal trademark registrations cited. (Annexes 3 and 4 to Complaint). The Complainant asserts that its marks are strong because: (1) they tend to identify the goods and services sold by the Complainant as emanating from the Complainant; (2) they are suggestive that the services offered by the Complainant will help users find health information; (3) there is a very close relationship between the Complainant�s marks and the Complainant�s goods and services; and (4) as a result of the registrations with the U.S. Patent and Trademark Office for these marks, they are entitled to a presumption of suggestiveness.
The Complainant asserts that the disputed domain name is confusingly similar to Complainant�s marks because the domain name consists of the same two words that comprise the marks, namely "health" and "finder," juxtaposed in the same order but joined by a hyphen. The Complainant asserts that the goods and services offered by the Complainant and the Respondent are virtually identical. The Complainant asserts that both it and the Respondent are a source of health information, in that the Complainant offers links to databases in the health-related field for referrals to health information and health sources and the Respondent sells herbal products that it describes as "products to enhance the body [sic] defense mechanism and disease prevention system to help millions of people regain their health." (a printout of the home page of the Respondent�s Web site was attached as Annex 11 to the Complaint).
The Complainant asserts that the Respondent has no legitimate interest in the domain name in issue. The Complainant asserts that it and the Respondent are competitors since both offer health products and health information and that the Respondent has no legitimate interest in a domain name that is identical to its competitor�s domain name but for a mere hyphen. The Complainant further asserts that the use of a domain name that is confusingly similar to the Complainant�s marks cannot constitute a bona fide offering of goods or services since the only reason to use such mark as a domain name is to attract customers who were looking for the products or services associated with the mark. The Complainant further asserts that prior to the commencement of this proceeding the Complainant made numerous attempts both by e-mail and telephone to contact the Respondent and place the Respondent on notice of the Complainant's rights in the domain name. The Complainant asserts that the Respondent did not respond to any of these attempts.
The Complainant asserts that the Respondent can be presumed to have been aware of the Complainant�s marks when it registered the domain name in issue because: (1) the Complainant first used the HEALTHFINDER mark in commerce on November 25, 1996, almost two years before the Respondent registered the domain name in issue; and (2) the Complainant registered the domain names and on February 10, 1997 and March 26, 1997, respectively, over a year and a half before the Respondent registered the domain name in issue.
The Complainant asserts that the Respondent registered and used the domain name in issue in bad faith based on: (1) the domain name being registered primarily for the purpose of disrupting the business of a competitor; (2) the Respondent adopting the domain name in issue for the purpose of attracting Internet users seeking health products and health information; (3) the Respondent using a notice on a Web page not accessible through the home page of its site as evidence of the Respondent's knowledge that its Web site located at the domain name in issue is attracting users who are seeking the Complainant's site; and (4) Internet traffic being siphoned off from the Complainant's Web site as a result of the Respondent�s actions.
Further, the Complainant asserts that: (1) since it has assiduously avoided associating its Web site and HEALTHFINDER mark with any commercial products, the Respondent�s action cheapens the value and integrity of its mark and the Respondent persists in knowingly using its confusingly similar domain name to attract Internet users for financial gain by the sale of its herbal products; (2) the Respondent�s Web site at the domain name in issue is aimed at the same community that is targeted by the Complainant�s site, as evidenced by its notice and the Respondent�s activities, which use the fame of the marks registered by the Complainant, its competitor, to generate traffic for the Respondent�s Web site, bars any claim of legitimate interests in the domain name and is evidence of bad faith use of such domain name; (3) the Respondent's Web site is aimed at some of the same audience at which the Complainant's Web sites are aimed and presents products and information that is in the same category as that presented through the Complainant's Web sites thus being in direct conflict with the Complainant's mark and its domain names; (4) the red white and blue seal and eagle graphic placed by the Respondent on the upper left-hand corner of its home page, suggests a U.S. federal government connection, by which the Respondent is attempting to create the impression that its herbal supplements are recommended or endorsed by U.S. government health authorities and such is further evidence of the Respondent�s illegal and unethical purpose in registering and using the Complainant�s mark as a domain name; and (5) it is in the public interest to deprive the Respondent of the ability to use the domain name in issue to make problematic claims of medical efficacy.
Respondent
No responses were received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainant�s favor only after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
The Complainant has provided sufficient evidence showing that it is the owner of the mark HEALTHFINDER. A review of the second level domain of the domain name shows that the domain comprises the Complainant�s mark HEALTHFINDER, with a hyphen separating the words HEALTH and FINDER. The Panel concludes that the addition of a hyphen in the domain name is not sufficient to differentiate the domain name in issue from the mark. The Panelist therefore finds that the domain name in issue is virtually identical and confusingly similar to the Complainant�s mark HEALTHFINDER and that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holder�s rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder�s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
A review of the submitted evidence shows the listing of the registrant of the domain name in issue as "HealthFinder, Inc.", and the corresponding Web site for the domain name in issue indicating that "[i]n 1998, Mr. Yeh founded HealthFinder Inc. in California." The Panelist, however, does not find such a listing or statement sufficient to support a finding that the Respondent has been "commonly known by the domain name." Nor has any other evidence been submitted to suggest otherwise. In addition, no evidence has been presented to show that the Respondent is making any legitimate noncommercial or fair use of the domain name. Rather, the evidence submitted shows that the Respondent is using the domain name in issue in connection with a Web site offering herbal health products for sale. Such cannot support a finding of legitimate noncommercial or fair use of the domain name in issue.
Furthermore, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services. A review of the evidence submitted shows that the registration and use of the domain name in issue by the Respondent do not predate the Complainant's much earlier first use and first use in commerce of both of its marks and the registration of at least two of its several domain names incorporating its mark HEALTHFINDER. The Complainant has also presented evidence showing that the Respondent: (1) is operating a Web site and using the domain name in issue to target some of the same audience to which the Complainant's Web sites are aimed; (2) is offering herbal health products on its site; and (3) is presenting health-related information that is in a similar category as that presented through the Complainant's Web sites. Such is significant when considered along with the Complainant's uncontested assertions that it along with the U.S. Government assiduously avoid association of the Complainant's Web sites and the mark HEALTHFINDER with any commercial products as well as the submission of evidence by the Complainant showing the products and medical claims provided on the Respondent's site being in direct conflict with information that is provided through the Complainant's Web sites.
The Panelist therefore finds that the Respondent's offering of such health-related products and information under a domain name that is virtually identical and confusingly similar to the Complainant's mark, coupled with that domain name directing Internet users to a site that furthers confusion, suggests to those users that they are purchasing products and obtaining health-related information from the Complainant. Viewing such evidence and findings in their entirety, the Panelist cannot conclude that such constitutes a bona fide offering of goods or services for sale by the Respondent. The Panelist therefore finds that Element (ii) has been satisfied based on the Respondent having failed to establish rights or legitimate interests in the domain name.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder�s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder�s web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on the holder�s web site or location.
Based upon the uncontested evidence submitted by the Complainant, the Panelist finds that the Respondent had knowledge of the Complainant's mark HEALTHFINDER when registering the domain name in issue. This finding is supported by the evidence showing that the domain name in issue was registered well after the first use and the first use in commerce by the Complainant of its marks and of several of its domain names incorporating its mark HEALTHFINDER. Coupled with the above findings that the domain name in issue is virtually identical and confusingly similar to the Complainant's mark and that the Respondent has no rights or legitimate interests in the domain name along with the Complainant's mark having a strong reputation as shown by the uncontested evidence, the Panelist finds that the Respondent registered the domain name in issue in bad faith.
The Complainant asserts that the Respondent by using the domain name in issue has intentionally attempted to attract, for commercial gain, Internet users to its Web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent�s site or of a product or service on the Respondent�s site. Based upon the findings and evidence submitted, the Panelist concludes that the Respondent's registration and use of a domain name, virtually identical and confusingly similar to the Complainant's mark along with a Web site accessible at this domain name that offers health-related products for sale and provides health-related information that are directed to some of the same audience to which the Complainant's Web sites are directed, is an attempt by the Respondent to profit from the traffic generated by Internet users seeking the Complainant's sites.
In addition, the Respondent posting a notice on a Web page not accessible from its site's main home page for Internet users looking for and also supports the finding that the Respondent registered and is using the domain name in issue to create initial interest confusion among Internet users who visit the Respondent's site as to the source, sponsorship, affiliation or endorsement of the site and the products and information offered thereon for apparent commercial gain. Based upon the above, the Panelist accordingly finds that Element (iii) has been satisfied.
7. Decision
The Panelist concludes that: (i) the domain name in issue is confusingly similar to the Complainant�s mark; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent registered and has used the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name in issue be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Dated: July 6, 2001
Full & Egal Universal Law Academy