WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hill-Rom Services, Inc. v. Michael Moore
Case No. D2006-1464
1. The Parties
The Complainant is Hill-Rom Services, Inc., United States of America, represented by Baker & Daniels, United States of America.
The Respondent is Michael Moore, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2006. On November 15, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 16, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�11, 2006. The Response was filed with the Center on December 11, 2006.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 18, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant filed a Supplemental Filing to its Complaint. The Panel did not consider it necessary in the circumstances to consider this Supplemental filing. The decision due date was extended until January 11, 2007.
4. Factual Background
Hill-Rom Company, Inc. along with its subsidiaries, including Complainant, is a leading manufacturer of equipment for the health care industry and a provider of associated services for wound, pulmonary and circulatory care, in addition to being a provider of medical equipment outsourcing and asset management services.
Complainant began using the HILL-ROM trademark on medical products at least as early as 1972. In 2005, Complainant, along with its affiliated companies and authorized licensees of the HILL-ROM mark, spent more than $25 million to market and sell HILL-ROM branded products worldwide.
Complainant owns United States trademark registration No. 1,371,030 for the HILL-ROM trademark, registered on the Principal Register on November 19, 1985. In addition, Complainant owns more than forty-four (44) registrations for the HILL-ROM trademark in twenty (20) countries.
Respondent’s owns a business by the name of MedHarvest that buys up old medical equipment, reconditions it, and then puts it back into service by selling it. MedHarvest also sells new medical equipment.
Respondent registered the Domain Name at issue on June 19, 2006. It operates a web site under the disputed domain name.
5. Parties’ Contentions
A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant contends that it owns numerous trademark registrations for the distinctive mark HILL-ROM in 20 countries, including the United States. Complainant’s use and registration of the HILL-ROM trademark pre-dates Respondent’s registration of the Domain Name.
Complainant states that the Domain Name is comprised of Complainant’s HILL-ROM mark in addition to the terms “hospital” and “beds” which terms are merely descriptive of some of the types of products which Complainant sells. Respondent’s addition of the terms “hospital” and “beds” to the Domain Name does not negate the distinctiveness of Complainant’s HILL-ROM mark. Respondent’s Domain Name is confusingly similar to Complainant’s HILL-ROM trademark.
With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that,
by using the mark HILL-ROM in the Domain Name, the Respondent is luring consumers in search of HILL-ROM branded products to a website that advertises and sells medical products competitive with Complainant’s products, such as mattresses and overlays. Complainant furthermore argues that Respondent’s use of the Domain Name is not justified by the principle that a mark may be used legitimately without its owner’s consent to promote a bona fide offering of goods or services placed on the market by its owner. Complainant has not given Respondent permission, authorization, consent or license to use its HILL-ROM mark
With respect to paragraph 4(a)(iii) of the Policy, Complainant contends that it has extensively marketed and advertised its hospital products using the HILL-ROM trademark. Therefore, because it is reasonable to infer that the HILL-ROM trademark is well-known, it is likely that Respondent knew of Complainant’s HILL-ROM mark at the time of registering the confusingly similar Domain Name.
By using the HILL-ROM mark in the Domain Name, the Respondent is luring consumers in search of HILL-ROM branded products to a website that advertises and sells products directly competitive with Complainant’s HILL-ROM branded products. Respondent is prominently displaying Complainant’s trademark at the top of its web pages found at “www.”, and in the “title” and “keywords” of its website’s metatags (in an attempt to lure Internet users seeking legitimate HILL-ROM brand product to Respondent’s website). The fact that Respondent is advertising and selling HILL-ROM branded hospital beds in addition to mattresses, overlays and accessories that are not HILL-ROM branded products will likely confuse consumers as to Complainant’s sponsorship or affiliation with such mattresses, overlays and accessories because Complainant sells those types of products itself. Respondent does not provide any disclaimer as to any possible connection with the Complainant.
B. Respondent
With respect to paragraph 4(a)(i) of the Policy, Respondent contends that the Complainant’s use and registration of the trademark HILL-ROM predates Respondent’s registration of the domain name . Respondent does not deny that the HILL-ROM mark is distinctive.
Respondent sells reconditioned HILL-ROM hospital beds and, therefore, puts “hillromhospitalbeds” in the domain name so that Respondent’s visitors would know what it offers. Respondent believes the mark of products that it offers constitutes fair use.
Respondent argues that the Complainant intentionally gave up the ownership of these beds to the hospitals in exchange for financial reward. Complainant did not want the beds back when the beds were ready to come out of service, so the hospitals then found Respondent and intentionally gave up ownership to Respondent’s company.
Every single page of the web site states that Respondent is MedHarvest and all beds are identified as being Reconditioned Hospital Beds. A well informed, higher order, institutional purchasing professional would not think that a site that sells only reconditioned “obsolete” beds and off brand mattresses is a HILL-ROM manufacturing company.
It is highly unlikely that someone looking for a company that manufactures everything from bedside cabinets to stretchers would, first, mistakenly type in HILL-ROM without the hyphenation and then, second, add the additional 12 letters (hospitalbeds).
Respondent chose simply because it was the most accurate way to describe the content of its site. There is no intent to confuse anyone and Respondent does not believe that this description is confusing.
With respect to paragraph 4(a)(ii) of the Policy, Respondent contends that it is actually offering the goods or services at issue, namely HILL-ROM hospital beds. Respondent’s use of the Domain Name is justified under the principal that Respondent is using it legitimately to promote a bona fide offering of goods and services. Respondent is engaged in a legitimate business endeavor by buying, reconditioning, and placing beds back into service. The use of the domain name is an accurate description of the content on Respondent’s site, which refers to older model, reconditioned HILL-ROM hospital beds.
The precedent was laid down in DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001–0160 concerning the domain name . The domain name was being used commercially to promote the sale of parts.
Respondent contends that it is not simply a “cybersquatter”. Respondent owns HILL-ROM hospital beds and Respondent’s domain name was registered with the simple intention of selling what it owns. A WIPO panel, in the case sited above, has ruled that the owner of a trademark should not be able to use that trademark as a “bar to entry of online competitors” simply because the competitor sells “aftermarket accessories”.
Respondent’s site has never featured the HILL-ROM logo. Respondent’s site previously disclosed who it was in 5 (five) separate ways on every page.
In addition, Respondent’s added another disclaimer to its footer which reads: “IMPORTANT DISCLOSURE: We are in no way affiliated with the official HILL-ROM manufacturing company. Our company, MedHarvest Inc, buys used HILL-ROM beds and reconditions them for resale at deeply discounted prices.”
Further, seeing the logic of their argument about the remote possibility of “confusion”, Respondent has added another disclosure to every aftermarket mattress/accessory which reads: “IMPORTANT: This product is brand new (not pre-owned) and is manufactured by {INSERT MANUFACTURER NAME}.”
With respect to paragraph 4(a)(iii) of the Policy, Respondent contends that it was fully aware of the HILL-ROM name and its quality products prior to registering the Domain Name. The Domain Name was registered only because it was the most accurate description of the content of Respondent’s website. Respondent sells reconditioned HILL-ROM hospital beds. Respondent furthermore argues that it is not making use of Complainant’s trademark. According to the Respondent the use of Complainant’s logo at the top of its web pages is simply a restating of the domain name with the Respondent’s company logo featured prominently in the background.
The reason that Respondent’s logo appears in the background is to let visitors know that they are visiting one of Respondent’s sites. Additionally the domain name appears in the front to confirm to the visitor that he/she has arrived at the correct domain name and to clearly explain the special focus of the store.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Given the existence of the registered trademarks in the United States and other countries for the mark HILL-ROM, and Complainant’s alleged 34 years use of the mark in connection with Complainant’s goods, ’the Panel finds that Complainant has trademark rights in the HILL-ROM trademark. The Panel also notes that the Complainant’s use of the HILL-ROM mark long predates the Respondent’s registration of the disputed domain names.
The Panel also finds that is confusingly similar to a trademark or service mark in which the Complainant has rights. Specifically, the Panel finds that is confusingly similar to Complainant’s HILL-ROM mark since the dominant portion of Complainant’s registered mark and of the disputed Domain Name is “HILL-ROM.” The Domain Name differs from Complainant’s registered HILL-ROM marks only in that it contains a hyphen, descriptive wording “hospital beds” and the non-descriptive gTLD domain name suffix “.com”. It is well established that neither punctuation marks such as hyphens nor the “.com” suffix on their own avoid a finding of confusing similarity. See Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903 (December�29, 2003) (“The addition of a hyphen and the top-level domain designation “.com” are not sufficient to avoid the conclusion that the domain name and mark are confusingly similar.”) Further, the addition of descriptive or generic wording (in this case the addition of “hospital beds”) to a trademark owned by a complainant to create a domain name consisting of multiple words that implies a relationship between the words can and in this case does actually increase rather than decrease the likelihood of confusion. See, e.g., Fairmont Hotel Management L.P. v. Puts, WIPO Case No. D2001-0431 (“given that the added words describe the business services for which the Complainant’s trademark is registered and used by the Complainant, the additions merely compound the confusion created by the incorporation of the Complainant’s trademark”); and Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896 (“if the addition is a term associated with the business of the Complainant… it can even add to the similarity between the domain name and the trademark in question”).
The Panel accordingly finds for the Complainant under the first element of the Policy.
B. Rights or Legitimate Interests
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that the Respondent, before any notice of the dispute, used or prepared to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. At the time the UDRP Complaint was filed, the Domain Name offered not only the Complainant’s products, but also products that were in direct competition with the products offered by the Complainant. This is not a legitimate use within the meaning of the Policy, see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Moreover, the Domain Name as of the date of this decision still resolves to a page that displays products offered by Complainant’s competitors. This is not a bona fide use within the meaning of the Policy. See TM Acquisition Corp. v. Sign Guards, FA132439 (finding that the respondent’s use of complainant’s marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services). One of the requirements enumerated by previous panels in assessing whether a reseller can have a right or legitimate interest in a disputed domain name is whether the site is being used to sell only the trademarked goods. See for example Oki Data Americas, Inc. v ASD, Inc WIPO Case No. D2001-0903. In the present case, the Panel notes that in addition to offering for sale a range of HILL-ROM branded products, the site is also being used to offer for sale a number of products that are not branded with the HILL-ROM mark. These include for example a number of hospital mattresses listed on the site with trademarks such as the “Masonair TM AS5000 System”. These products may or may not be in direct competition with those of the Complainant. However, the fact remains that the HILL-ROM mark is being prominently displayed without authorization on a website used to offer for sale non-HILL-ROM branded products. Such use is not consistent with a bona fide offering of goods within the meaning of the Policy.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that the Respondent has ever been commonly known by the domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent evidently has not made and is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain..
A complainant is required to make out an initial prima facie case that a respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph�4(a)(ii) of the Policy. See Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel finds that the circumstances enumerated above establish a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue. Accordingly, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, a respondent has used and registered a domain name in bad faith if, inter alia, the respondent has used the domain name intentionally to attempt to attract, for commercial gain, Internet users to the respondent’s website or other online location 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 offered on the respondent’s site. Policy paragraph 4(b)(iv).
The Panel finds that the Respondent registered the Domain Name in bad faith. The trademark registrations of record confirm Complainant’s allegations that it had long been using its HILL-ROM marks when the Domain Name that is the subject of this Complaint was registered. The Panel finds persuasive Complainant’s allegation that the Respondent must have been aware of the Complainant’s rights in the marks and, further that Respondent knowingly infringed the Complainant’s trademarks when it registered the subject Domain Name. Respondent admits that it was fully aware of the HILL-ROM name and its quality products prior to registering the Domain Name and that the Domain Name was registered only because it was the most accurate description of the content of its website.
Under the Policy, it is evidence of bad faith that, “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 your web site or location.” paragraph 4(b)(iv) of the Policy.
Respondent used the Complainant’s widely known trademark to attract users to Respondents’ website where they are offered not only reconditioned products of Complainant, but also competing products. This is evidence of Respondent’s intention to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website or of a product or service on the Respondents’ website.
At the time the Complaint was filed and at the time of this Decision, the Domain Name resolves to a page that offers visitors competitive products. This constitutes bad faith use of the accused domain name. Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan, WIPO Case No. D2004-0537 (“the Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions also support this conclusion.”) See also E, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”).
Accordingly, the Panel finds for the Complainant on the third element of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: January 15, 2007
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