WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION All Children's Hospital, Inc. v. Edison Beach House Case No. D2009-0377 1. The Parties
The Complainant is All Children's Hospital, Inc. of St. Petersburg, Florida, United States of America, represented by Trenam Kemker, United States.
The Respondent is Edison Beach House of Ft. Myers Beach, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name (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 March 20, 2009. On March 23, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On March 24, 2009, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2009.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on April 30, 2009. 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. 4. Factual Background
The following uncontested facts are summarized from the Complaint.
The Complainant has used the name “All Children's Hospital” since at least October 1, 1967, when it opened the doors to the All Children's Hospital. The Complainant registered the mark ALL CHILDREN'S HOSPITAL (the “Mark”) in 1995. All Children's Hospital has continued to expand since it started in 1926, and for the last four years has been ranked as one of the top twenty-five children's hospitals according for Child Magazine. In the United States of America, the Complainant holds registrations for the Mark and two other formative marks that incorporate the Mark. The Complainant spends over 900,000 USD annually promoting its services under the name, and using the Mark.
The Respondent registered the Disputed Domain Name on January 8, 2002. 5. Parties' Contentions A. Complainant
The following allegations are summarized from the Complaint.
The Disputed Domain Name is identical or confusingly similar to the Complainant's Mark in that it wholly incorporates the Complainant's registered Mark. The Complainant has been using the name “All Children's Hospital” since it opened the doors to the first All Children's Hospital on October 1, 1967. The Complainant continues to expand its hospital services, and uses the name and Mark to advertise and promote its services over the Internet, radio, television and print mediums.
The Respondent has no rights or legitimate interests in the Disputed Domain Name . The Respondent is not associated or affiliated with the Complainant in any way. The Respondent is an all suite hotel located in Fort Meyers Beach, Florida.
The Disputed Domain Name does not resolve to a website. And the Respondent has never attempted to use the Disputed Domain Name in connection with the offering of any goods or services, or any business of any kind. Further, the Respondent has never attempted to use the Disputed Domain Name in connection with any legitimate non-commercial or fair use.
Finally, the Respondent is using the Disputed Domain Name in bad faith. The only use that the Respondent has made of the Disputed Domain Name has been two offers to sell it to the Complainant. The Complainant's legal counsel sent a cease and desist letter on or about October 14, 2008, demanding that the Respondent immediately stop using the Complainant's registered trademark and transfer the Disputed Domain Name to the Complainant. The Respondent's principal, Mr. Yax, contacted the Complainant's counsel by telephone and informed them that he would only consider reasonable offers to sell the Disputed Domain Name, and that he did not consider 500 USD a reasonable offer. A representative for the Respondent reached out directly to the Complainant via telephone on or about February 17, 2009. Counsel for the Complainant spoke with Mr. Yax again on the telephone on February 23, 2009, and during this call Mr. Yax offered to sell the Disputed Domain Name for $1,500 USD. The Complainant declined to accept this offer. On or about March 16, 2009, counsel for the Complainant reached out again to Mr. Yax, the Respondent's principal. During this call counsel for the Complainant made a counteroffer in the sum of $77.00 USD, which represented the cost to Mr. Yax for registering the Disputed Domain Name with GoD for seven years. Mr. Yax, as the principal of the Respondent, declined this offer.
Based upon these negotiations the Respondent registered the Disputed Domain Name with the primary purpose of selling, renting or otherwise transferring to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket expenses associated with the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(1) that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service in which the complainant has rights;
(2) that the respondent has no rights or legitimate interests in respect to the disputed domain name; and
(3) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is absolutely clear on its face that the Disputed Domain Name wholly incorporates the complainant's Mark, and UDRP panels have held in the past that when a domain name wholly incorporates a complainant's registered trademark that is sufficient to establish identity or confusing similarity. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525. It is also well established that the addition of a gTLD such as “.com” does not significantly diminish the confusing similarity.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy establishes the standards under which a respondent can establish legitimate rights to and in a domain name. A respondent may prove any of the following to establish his rights in the dispute domain name:
(i) before any notice to you 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 (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 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.
The Respondent appears to be an all suite hotel located in Fort Meyers Beach, Florida. The Respondent has failed to submit any evidence that it is commonly known by the Dispute Domain Name, or that is has used the Disputed Domain Name in connection with a bona fide offering of goods and services.
The Complainant contends that the Respondent has no rights or legitimate interest in the Disputed Domain Name, and is not associated or affiliated with the Complainant in any way. By default there is no evidence in the record that the Respondent has any legitimate interest in the Disputed Domain Name, or is associated or affiliated with the Complainant.
Furthermore, there is no evidence on the record to support a claim that the Respondent is making a legitimate noncommercial or fair use of the Dispute Domain Name.
Based on the foregoing the Panel finds that the Complainant has satisfied its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Respondent has clearly registered the Disputed Domain Name in bad faith. Paragraph 4(b)(i) establishes one of the circumstances that establishes bad faith is when “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 . . . for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.”
The Respondent's only use of the Disputed Domain Name has been two attempts to sell the domain name to the Complainant, the owner of the Mark. The Respondent sought monies in excess of his out-of-pocket expenses, and refused a counteroffer by the Complainant. See CBS Broadcasting, Inc. v. Gaddoor Saidi,WIPO Case No. D2000-0243.
Furthermore, the address does not currently resolve to a website, which in light of the present circumstances can also be a basis for finding bad faith. See Kate Spade, LLC v. Darmstadter Designs,WIPO Case No. D2001-1384.
Therefore the Panel finds that the Respondent was acting in bad faith in its registration and use of the Disputed Domain Name, and the Complainant has satisfied its burden under paragraph 4(a)(iii) 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.
Maxim H. Waldbaum
Sole Panelist
Dated: May 14, 2009
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