WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION John Muir Health v. Belize Domain WHOIS Service Case No. D2010-0693 1. The Parties
Complainant is John Muir Health of Walnut Creek, California, United States of America, represented by Hanson Bridgett LLP., United States.
Respondent is Belize Domain WHOIS Service of City of Belmopan, Belize. 2. The Domain Names and Registrars
The disputed domain names and are registered with Assorted, LTD and Intercosmos Media Group d/b/a directNIC.com, respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2010. On May 3, 2010, the Center transmitted by email to Assorted, LTD and Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the disputed domain names. On the same day, Assorted, LTD and Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center their verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on May 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2010. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 2, 2010.
The Center appointed Dietrich Beier as the sole panelist in this matter on June 15, 2010. 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
Complainant is the owner of several trademark registrations including the element JOHN MUIR (“JOHN MUIR Marks”) and further elements such as MEDICAL CENTER and the device element of a flower, such as the registration 1,726,478 of 1992 in class 42.
Complainant first began using the JOHN MUIR mark in commerce in the 1960s. The JOHN MUIR MEDICAL CENTER mark, first used in 1987, was first registered with the United States Patent and Trademark Office in 1992.
The public widely associates the JOHN MUIR Marks with Complainant's health care, laboratory and related services. Complainant operates three inpatient hospitals that have continually been recognized as among the most outstanding facilities of their kind. For example, US News and World Report named the John Muir Medical Center, Walnut Creek Campus, as one of the top fifty hospitals in the nation for 2009-2010. Complainant provides his activities inter alia in the region of Northern California.
Complainant has invested significant resources in promoting these trademarks and service marks and has developed substantial consumer recognition in them. The goodwill built up over the years in these marks is one of its greatest assets.
Complainant also owns and maintains various websites with domain names incorporating the JOHN MUIR Marks, inter alia , , , and .
Respondent registered the domain names and in 2005 and 2006. Respondent is not affiliated with Complainant or any of its related entities, nor is it licensed or otherwise permitted to use any of the JOHN MUIR Marks.
The website under the domain name contains a link for people looking for hospitals, a link to general information about hospitals and a picture of a hospital bed. Similarly, the website under the domain name features by a “related searches” section various locations in and around the region of Northern California where Complainant conducts the majority of its activities.
Complainant wrote to Respondent on two occasions in an attempt to resolve this dispute. Respondent did not reply to either of Complainant's communications.
Respondent was involved in several UDRP proceedings as respondent, among them in 2010 in Association Enseignement Supérieur Commercial v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2010-0445, Fluor Corporation v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2010-0376, The Conference Board, Inc. v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2010-0301, LEVANTUR, S.A. v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2010-0250, EUROSPORT v. Belize Domain WHOIS Service Lt.,WIPO Case No. D2010-0077 and in many others, the years before. In all of the here mentioned cases, the domain name was transferred to the complainant. 5. Parties' Contentions A. Complainant
Ccomplainant asserts the disputed domain names being confusingly similar to the JOHN MUIR Marks. Respondent mimicked the sound, impression and meaning of Complainant's marks and domain names by combining “John Muir” with generic terms that describe Complainant's activities. Respondent's domain names begin with the name “John Muir”, and simply add the generic terms “hospital” and “medical,” respectively. These additional terms directly refer to Complainant's network of hospitals and health delivery services. Overall, an average member of the public that comes across Respondent's domain names is left with the impression that they refer to Complainant's activities.
Since Complainant knows of no entity other than itself to which Respondent's domain names could possibly refer, it is likely that Respondent created the domain names with the specific intent to create confusion as to their source. Plainly, Respondent is attempting to direct Internet traffic to its websites by capitalizing on the public's familiarity with the JOHN MUIR Marks and knowledge of Complainant's provision of health and medical services.
Furthermore, Respondent has no rights to, or legitimate interests in either of the disputed domain names. To the best of Complainant's knowledge, Respondent is not commonly known by either of the names, nor does Respondent have any common law trademark or service mark, or registered trademark or service mark, or pending trademark or service mark application anywhere in the world for marks that correspond to the disputed domain names. Respondent is not affiliated with, nor has it been licensed or permitted to use in any manner any of the marks that make up the JOHN MUIR Marks. Furthermore, Respondent neither uses these domain names in connection with the bona fide offering of goods and services, nor in a noncommercial manner, nor in a manner that might be deemed a legitimate fair use.
Respondent registered the disputed domain names in bad faith. The obvious attempt to replicate the JOHN MUIR Marks demonstrates Respondent's attempt to capitalize the fame of those marks. Registration of the two domain names occurred in 2005 and 2006, nearly half a century after Complainant began using the JOHN MUIR Marks in commerce. In fact, the only plausible basis for Respondent's registration of the domain names is to create a likelihood of confusion with Complainant's JOHN MUIR Marks and thereby drive Internet traffic to Respondent's websites, to Complainant's detriment.
The fact that Respondent is a recognized cybersquatter is further evidence of its registration of the domain names in bad faith. Respondent is using the domain names in bad faith because it is intentionally attempting to attract, for commercial gain, Internet users to its websites by creating the false impression of a connection with Complainant's well-known health and medical services. Moreover, Respondent has intentionally selected these domain names in order to prevent the Complainant from reflecting its trademarks in corresponding domain names.
The disputed domain names resolve to park web pages containing sponsored links. Presumably, Respondent's aim is to attract Internet traffic to these websites through a suggestion of association with Complainant, and profit when those users click on the sponsored links. The various links and “related searches” contained on the parked pages offer further evidence that Respondent is attempting to capitalize on the public's familiarity with Complainant's marks. In sum, Respondent's domain names and websites are chosen and designed to maximize the chance that people seeking Complainant's own web pages will inadvertently find Respondent's websites instead, and click through on the sponsored links, thereby generating revenue for Respondent and resulting in a loss of potential customers to Complainant.
In sum, Respondent's lack of a legitimate claim to the use of JOHN MUIR Marks, obvious attempt to profit through consumer confusion as to the source of its web sites, history of cybersquatting and failure to respond to Complainant's communications combined with Complainant's strong rights in the JOHN MUIR Marks strongly indicates bad faith use and registration of the disputed domain names. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain names; and
(iii) The domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established the fact that it has valid rights in the JOHN MUIR Marks. The additions of descriptive terms such as “medical center” or simple devices like a flower to JOHN MUIR do not change the overall impression of Complainant's trademarks where “John Muir” is the dominant element.
The domain names are confusingly similar to the JOHN MUIR Marks since the additions of “medical” and “hospital” in the domain names are of a purely descriptive nature and do not change the overall impression being created by the dominating element “John Muir” being used identically.
The Panel therefore considers the disputed domain names to be confusingly similar to the JOHN MUIR Marks in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Respondent has no rights in the domain names; also the Respondent is not a licensee of Complainant nor has Complainant granted any permission or consent to Respondent to use its trademarks. Furthermore, Respondent has no legitimate interest in the domain names since there is no indication that Respondent is commonly known by the name “John Muir” nor that Respondent is using the domain names in connection with a bona fide offering of goods or services. For the latter, as the panel in Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe,WIPO Case No. D2007-1695 stated correctly, it must be noted that the use of a domain name confusingly similar to a complainant's trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use. Also a noncommercial or fair use is not noticeable.
The Panel therefore finds that Respondent does not have rights or legitimate interests in the domain names. C. Registered and Used in Bad Faith
Due to the nature of the JOHN MUIR Marks as known, Respondent must have been well aware of Complainant and its trademarks when registering the domain names. Complainant had not authorized Respondent to make use of its mark. This Panel does not see any conceivable legitimate use that could be made by Respondent of these particular domain names without Complainant's authorization.
In sum, the circumstances of this case clearly indicate that Respondent registered the domain names primarily with the intention of attempting to attract, for commercial gain, Internet users to a potential website or other online locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of such potential website or location, or of a product or service on such website or location.
The Panel therefore considers the domain names to have been registered and used in bad faith in accordance with 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 names, and be transferred to Complainant.
Dietrich Beier
Sole Panelist
Dated: June 29, 2010
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