WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
El Camino Hospital v. Domains By Proxy, Inc. and JJ Monte
Case No. D2007-1565
1. The Parties
Complainant is El Camino Hospital (“Complainant”), a nonprofit public benefit corporation established under the laws of the State of California, with a principal place of business located in Mountain View, State of California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
Respondents are Domains By Poxy, Inc. a corporation located in Scottsdale, State of Arizona, United States of America and JJ Monte an individual residing in Pasadena, State of California, United States of America (“Respondents”).
2. The Domain Name and Registrar
The domain name at issue is (the “Disputed Domain Name”). The registrar is GoD, Inc. (the “Registrar”) located in Scottsdale, State of Arizona, United States of America.
3. Procedural History
On October 20, 2007, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On October 22, 2007, the Center received hardcopy of the Complaint. On October 27, 2007 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. Complainant paid the required fee.
On October 25, 2007, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the Registrar of the Disputed Domain Name and that the Disputed Domain Name is registered in Respondents’ name.
On October 30, the Center sent a Notice of Change in Registrant Information. On November 2, 2007, the Center received an Amendment to the Complaint from Complainant via email adding JJ Monte as an additional Respondent. On November 5, 2007, the Center acknowledged receipt of the Amendment.
The Center verified that the Complaint satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
On November 6, 2007, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to Respondents together with copies of the Complaint and an Amendment to the Complaint, with a copy to Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.
On November 27, 2007, the Center advised Respondents that they were in default for failing to file its Response. No Response has been received.
On December 4, 2007 after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.
4. Factual Background
The “El CAMINO HOSPITAL” name was first adopted in 1956, when the residents of Mountain View, California voted to fund the construction of the El Camino Hospital. Complainant opened its hospital under the EL CAMINO HOSPITAL name in 1961. Complainant has been offering its healthcare services as EL CAMINO HOSPTIAL continuously for more than 45 years.
In the four decades it has been providing service, Complainant has been one of the nation’s leading community hospitals, offering a comprehensive range of inpatient hospital and outpatient services to thousand of patients. In the fiscal years 2005 to 2006, the hospital housed nearly 400 licensed beds, performed 5,652 surgeries, delivered 4,260 newborns, and received nearly 40,000 emergency room visits. It has 2,268 total employees, 1,400 of whom were full-time. Approximately 830 physicians were on the medical staff.
Complainant is widely-recognized and well respected both nationally and locally. Complainant was the first hospital to receive the Professional Research Consultants President’s Award for Customer Satisfaction (for scoring at or above the 90th percentile in all five of the top ranked categories for customer satisfaction). Complainant has also garnered numerous other awards, including the Distinguished Hospital Award for Clinical Excellence (ranked among the top 5% of all hospitals in the nation for overall clinical performance); the American Nurses Credentialing Center’s Magnet designation (recognizing health care organizations that provided the very best in nursing care); and the Joint Commission for Stroke Center’s Gold Seal Approval.
Complainant was also named as one of the 100 Top Hospitals in the Cardiovascular Benchmarks for Success Study (conducted by Solucient). Complainant was named 2007’s Most Wired Hospital by Hospital and Health Networks Magazine and was a 2005 finalist for the American Hospital Association McKesson Quest for Quality Prize (awarded to hospitals in the country that have been recognized for their leadership and innovation in quality, safety and commitment to patient care).
Local honors bestowed on Complainant include the Bay Area Parenting Magazine’s Best Place to have a Baby Award (three times). Complainant was also named on the 50 Best Places to Work in the Bay Area by San Francisco Business Times and the Silicon Valley/San Jose Business Journal.
Complainant expends considerable resources advertising its services under the EL CAMINO HOSPITAL name, including using the EL CAMINO HOSPTIAL name widely in trade shows, trade journals, at local cultural events and in radio, television and online advertising. Complainant also owns the domain names , and to which Complainant has operated its official company website since at least as early as 1999.
5. Parties’ Contentions
A. Complainant’s contentions
(i) Complainant contends that it has common law trademark rights in the EL CAMINO HOSPITAL name (the “EL CAMINO HOSPITAL Mark”). Complainant contends that it has used the EL CAMINO HOSPITAL Mark for more than 45 years, during which the sheer volume of services, the wide-spread recognition of Complainant’s services, and the extent of Complainant’s advertising has made the EL CAMINO HOSPITAL Mark a distinctive identifier strongly associated with Complainant and Complainant’s services. Such rights are sufficient to establish common law trademark rights for the purposes of a UDRP claim.
(ii) Complainant argues that the Disputed Domain Name is confusingly similar to the EL CAMINO HOSPITAL Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark with the addition of the top-level domain name extension “.mobi” which is not considered distinctive.
(iii) Complainant contends that Respondents have no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.
Respondents first registered the Disputed Domain Name on November 25, 2006, well after Complainant had established its trademark rights in the EL CAMINO HOSPITAL Mark. Complainant has not authorized or licensed Respondents to use the EL CAMINO HOSPITAL Mark, nor are Respondents affiliated with or a distributor of Complainant’s services.
Complainant contends that Respondents cannot demonstrate rights or legitimate interest in the Disputed Domain Name under Paragraph 4(c)(i) because they have not made use, or demonstrable preparations to use, the Disputed Domain Name in connection with the bona fide offering of goods or services. Instead, the Disputed Domain Name resolved to a “parked” website hosted by the Registrar, GoD, Inc., on which no content other than that posted by the Registrar appears. This does not constitute a bona fide offering of goods and services. Complainant further contends that the parking of the Domain Name also concealed the identity of Respondents by use of a proxy service which precludes Respondents from any bona fide offering of goods and services.
Complainant also alleges that the use of a privacy services means that Respondents cannot claim that they are commonly known by the Disputed Domain Name.
Complainant further alleges that Respondents are not making a legitimate noncommercial or fair use of the domain name as provided for in UDRP. Instead, it is apparent that Respondents, in exactly mimicking Complainant’s existing domain name and coined mark, is trading off Complainant’s goodwill and intentionally diverting Internet users to the Disputed Domain Name.
Complainant also contends that Respondents have chosen to register a domain which combines the Spanish words “El Camino” (translating into English as “the road”) and the English word “Hospital”. Respondents cannot have legitimately chosen this unusual, invented combination already in use by Complainant. Thus Respondents can have no legitimate rights in the Disputed Domain Name.
(iv) Complainant contends that Respondents registered and is using the Disputed Domain Name in bad faith in violation of Paragraph 4(a)(iii).
Complainant contends that the following factors demonstrate that Respondents have registered and used the Disputed Domain Name in bad faith. Respondents currently have “parked” the Disputed Domain Name. However, Respondents’ failure to utilize the Disputed Domain Name does not negate bad faith. According to UDRP president, a lack of active use of the domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether Respondents are acting in bad faith. Examples of circumstances that can indicate bad faith include Complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.
Complainant also contends that under the facts at hand, there is strong evidence of Respondents’ bad faith. Respondents have registered a domain name consisting entirely of Complainant’s long-used, widely known, coined EL CAMINO HOSPITAL Mark. Complainant’s mark is unusual, both in its mixture of Spanish and English words and in its overall meaning. Respondents have registered a domain name containing such a unique mark is, in and of itself strong evidence of bad faith.
Complainant further contends that Respondents have concealed their identity behind a proxy service, further evidence that its use of the Disputed Domain Name is in bad faith.
Complainant argues that these facts constitute bad faith under Paragraphs 4(b)(ii) and 4(b) (iii) of the Policy. Complainant also argues that because Complainant has not controlled the Disputed Domain Name or its content, Respondents are free to revise their website at anytime. In light of the fact that the Disputed Domain Name in comprised solely of Complainant’s mark, such a revision would almost certainly be done to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Mark, thereby violation 4(b)(iv). Because there is not conceivable legitimate use of Respondents can make of the Disputed Domain Name, Complainant in not required to wait until Respondents make actual use of the Dispute Domain Name before asserting its rights.
B. Respondents’ contentions
Respondents have chosen not to respond to the Complaint and therefore do not dispute any of Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”
Because both Complainant and Respondents are domiciled in the United States of America and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States of America. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772.
A. Failure to File a Response
A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System. S.a.S., NAF Case No. FA94637; David G. Cook v. This Domain is For Sale, NAF Case No. FA94957 and Gorstew and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA94925.
Even though Respondents have failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
B. Enforceable Trademark Rights
Complainant contends that it has common law trademark rights in the EL CAMINO HOSPITAL Mark. Complainant contends that it has used the EL CAMINO HOSPITAL Mark for more than 45 years, during which the sheer volume of services, the wide-spread recognition of Complainant’s services, and the extent of Complainant’s advertising has made the EL CAMINO HOSPITAL Mark a distinctive identifier strongly associated with Complainant and Complainant’s services.
Respondents have not contested the assertions by Complainant that it has common law trademark rights in the EL CAMINO HOSPITAL Mark. Therefore and based on the record, the Panel agrees with Complainant that such rights are sufficient to establish common law trademark rights for the purposes of this proceeding.
C. Identity or Confusing Similarity
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the EL CAMINO HOSPITAL Mark pursuant to the Policy Paragraph 4(a)(i). Complainant argues that the Disputed Domain Name is confusingly similar to the EL CAMINO HOSPITAL Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it wholly incorporates the Mark with the addition of the top-level domain name extension “.mobi” which is not considered distinctive.
Respondents have not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the EL CAMINO HOSPITAL Mark.
As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that , and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253 (finding that QUIXTAR and are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to Complainant’s registered trademark.
The addition of the phrase “.mobi” is non-distinctive because it is a gTLD required for registration of a domain name.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the EL CAMINO HOSPITAL Mark pursuant to the Policy Paragraph 4(a)(i).
D. Rights or Legitimate Interest
Complainant contends that Respondents have no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy Paragraph 4(a)(ii).
Complainant alleges facts to support its contention that Respondents have no rights or legitimate interests in the Disputed Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondents have failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Disputed Domain Name.
Paragraph 4(a)(ii) requires Complainant to prove that Respondents have no rights to or legitimate interests in the Disputed Domain Name. Once the Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to Respondents to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270.
The Policy Paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondents have rights or a legitimate interest in the Disputed Domain Name:
(i) before any notice to you [Respondents] of the dispute, your 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) you [Respondents] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondents] are 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.
Complainant has sustained its burden of coming forward with evidence supporting its allegations that Respondents lack rights to or legitimate interests in the Disputed Domain Name. Respondents have offered no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy Paragraph 4(c).
Therefore, the Panel finds that Respondents have no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy Paragraph 4(a)(ii).
E. Bad Faith
Complainant contends that Respondents registered and are using the Disputed Domain Name in bad faith in accordance with the Policy Paragraph 4(a)(iii).
The Policy Paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:
(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 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.
Complainant contends that Respondents registered and are using the Disputed Domain Name in bad faith in accordance with Paragraph 4(a)(iii). Complainant contends that the cumulative effect of the factors set forth above demonstrates that Respondents have registered and used the Disputed Domain Name in bad faith.
The Panel finds that the four criteria set forth in the Policy Paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith. The lack of use of the Disputed Domain Name, the unique nature of the EL CAMINO HOSPTIAL Mark and the well-known nature of the Mark lead the Panel to conclude that it cannot infer any legitimate use of the Disputed Domain Name.
The Panel in making its finding of bad faith is not precluding the application of one or more of the paragraphs in 4(b). Simply, the total circumstances support the finding, regardless of the specific bases set forth in Paragraphs 4(b)(i)-(iv). Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy Paragraph 4(a)(iii).
7. Decision
The Panel concludes (a) that the Disputed Domain Name is confusingly similar to Complainant’s common law rights in the EL CAMINO HOSPITAL Mark, (b) that Respondents have no rights or legitimate interests in the Disputed Domain Name and (c) that Respondents registered and used the Disputed Domain Name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.
Richard W. Page
Sole Panelist
Dated: December 20, 2007
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