WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Health Network, Inc. v. Eva Garcia
Case No. D2006-1616
1. The Parties
The Complainant is American Health Network, Inc., Indiana, United States of America, represented by Baker & Daniels LLP, Indianapolis, Indiana, United States of America.
The Respondent is Eva Garcia, Blue Navy Corporation S.A., Don Bosco, Costa Rica.
2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2006. On December 21, 2006, the Center transmitted by email to GoD, Inc., a request for registrar verification in connection with the domain name at issue. On December 21, 2006, GoD transmitted by email to the Center its verification response stating that the Respondent is listed as the registrant and providing the registrant’s contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 16, 2007. The Center verified that the Complaint together with the amendment to 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 January 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February�7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2007.
The Center appointed Clive N.A. Trotman as the sole panelist in this matter on February 19, 2007. 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.
After the case file had been transmitted to the Panel, the Center received a Supplemental Filing from the Respondent’s email address but signed under a name different from the Respondent, which was forwarded by the Center to the Panel and the Complainant.
4. Factual Background
According to comprehensive material supplied by the Complainant, American Health Network is a substantial network of physicians and a promoter of medical services mainly in Indiana and Ohio. The Network is well known, has received considerable press publicity and promotes itself by extensive advertising.
The name “American health network” is a registered trademark.
The Complainant has its own Internet presence through the domain name , which was created and registered on November 1, 1995.
The disputed domain name appears to have been registered by the Respondent on June 13, 2006.
5. Parties’ Contentions
A. Complainant
The Complainant contends the following:
The disputed domain name is confusing similar to a trademark in which the Complainant has rights.
Documentary evidence is submitted to the effect that the Complainant has rights in the trademark AMERICAN HEALTH NETWORK (the “trademark”) dating back through its predecessors in interest to August 6, 1984, with corresponding priority over competing claims. On or about January 4, 1985, the Complainant’s predecessor in interest filed for registration of the trademark with the United States Patent and Trademark Office (Registration No. 1,741,624).
Documentary evidence is submitted that the Complainant’s services under the trademark AMERICAN HEALTH NETWORK have received wide media coverage. Evidence of marketing materials and of advertising expenditure is submitted in further support of the contention that the trademark is well-known.
The Complainant has its own Internet presence, primarily through the website corresponding to the domain name , which was registered by the Complainant’s predecessor in interest on November 1, 1995, and has been in use since at least as early as December 1995.
It is further contended that the Respondent has no rights or legitimate interests in respect of the domain name.
The Complainant has not given the Respondent permission, authorization, consent or license to use its trademark. None of the pages associated with the disputed domain name discloses that the website is not authorized by the Complainant. Neither the Respondent nor the website is commonly known by the name “American Health Network” and the Respondent’s website at the disputed domain name appears under the banner heading “Generic-RXD, Your Favorite Online Pharmacy”. The Complainant is not aware of any legitimate, fair or non-commercial use of the disputed domain name by the Respondent, and the Respondent is not making a bona fide offering of goods or services placed on the market by the owner of the trademark.
The Complainant contends that the domain name was registered and is being used in bad faith. By using the Complainant’s trademark in the domain name, the Respondent trades on the Complainant’s well-known name and goodwill, and the reputation of the medical and healthcare services associated with the Complainant, for commercial gain. The Respondent attempts to lure consumers seeking the Complainant’s services to a website that uses the Complainant’s trademark and advertises and sells, directly or indirectly, generic pharmaceutical products. Because the Complainant offers information regarding various medications, and the Respondent’s website does the same, Internet users are likely to be confused into thinking that the website is endorsed by the Complainant. The Respondent most likely receives a payment each time an Internet user makes a purchase. The Respondent has used the Complainant’s trademark to increase the number of hits to its website, thereby increasing its commercial value at the expense of the Complainant’s trademark.
In November, 2006, in settlement negotiations the Respondent indicated to the Complainant’s representative a willingness to sell the domain name for $US75,000.00, this sum being unsubstantiated and evidently in excess of out-of-pocket expenses directly related to the domain name. It is contended that this is further evidence of the Respondent’s bad faith.
B. Respondent
The Respondent did not reply formally to the Complaint, but on February 19, 2007, sent an email contending in general terms that the disputed domain name had been purchased fairly on the open market.
6. Discussion and Findings
Paragraph�4(a) of the Policy states that the Respondent is required:
“to submit to a mandatory administrative proceeding in the event that a third party (a�’complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
After the case file had been transmitted to the Panel, an informal Supplemental Filing was received from the Respondent. It came from the email address provided in the domain name registration document, but signed under a different name, and was forwarded to the Panel by the Center. The Rules (12) state: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The Panel did not request a Supplemental Filing, but read it and decided that it had no bearing on the proceedings. The communication did, however, effectively show receipt by the Respondent of the Complaint.
A. Identical or Confusingly Similar
The Complainant has produced documentary evidence to the effect that it has rights in the trademark AMERICAN HEALTH NETWORK. The disputed domain name is . The gTLD qualifier, in this case “.net”, being an integral part of the domain name, is disregarded in the determination of whether there is confusing similarity. Also disregarded are spaces, which cannot be part of a domain name, and the distinction between upper and lower case typing, e.g., in the capitalization of names. What remains of the Respondent’s domain name is “americanhealthnetwork”, which within the constraints of Internet technology is identical to the Complainant’s trademark AMERICAN HEALTH NETWORK. The Panel finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain name. In particular the Complainant states that it has not given the Respondent permission, authorization, consent or license to use its trademark. There is no material in the record indicating to the Panel either the Respondent or the website is commonly known by the name “American Health Network”. There is no evidence before the Panel that the Respondent is making any legitimate, fair or non-commercial use of the disputed domain name, or making a bona fide offering of goods or services. The Complainant has thus made out a prima facie case to the effect that the Respondent has no rights or legitimate interests in the domain name.
The Respondent has produced no evidence to refute the Complainant’s prima facie case. The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph�4(a)(iii) of the Policy requires the Complainant to prove that the domain name has been registered and is being used in bad faith. Paragraph�4(b) of the Policy lists four circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.”
Whilst elements of the Respondent’s conduct may infringe more than one of the above circumstances, paragraph 4(b)(iv) of the Policy is the most applicable. On the evidence it is clear that the Respondent has registered a domain name effectively identical and thereby confusingly similar to the Complainant’s well-known trademark and is using it as an Internet website. The website operates and appears to compete, directly or indirectly, in the Complainant’s field of the supply of medical information, goods and services. The Panel finds upon the evidence that Internet users are likely to be confused into thinking that the website is affiliated to or endorsed by the Complainant. The Respondent apparently is trading on the Complainant’s good name and goodwill and this cannot reasonably be for any other purpose than to attempt to profit commercially from doing so, by for example, possible advertising, sales, commissions or click-through revenue. Accordingly the Panel finds for the Complainant in the terms of paragraph 4(b)(iv) of the Policy.
The Panel having found for the Complainant under all three heads of paragraph 4(a)(iii) of the Policy, it is not essential to consider further whether the Respondent’s stated willingness to accept $US75,000 for the domain name constituted “circumstances indicating” that the registration was made for the primary purpose of eventually selling it to the Complainant or a competitor of the Complainant for a substantial profit, which would be additional bad faith within the terms of paragraph 4(b)(i) 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.
Clive N.A. Trotman
Sole Panelist
Dated: March 5, 2007
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