The Complainant is Ascension Health Alliance of St. Louis, Missouri, United States of America ("United States"), represented by Armstrong Teasdale, LLP, United States.
The Respondent is Martin Kinchloe of Garden Grove, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 7, 2018. On June 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 26, 2018.
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" 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 19, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on August 10, 2018. 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 Complainant is a non-profit health system founded in 1999 and operating in the United States in more than 1,500 locations with over 90 hospitals. The Complainant has offered healthcare services under its ASCENSION mark since as early as 1999, which includes inpatient, outpatient and rehabilitation services. In addition, the Complainant has offered insurance services under the ASCENSION mark since as early as 2000.
The Complainant holds numerous United States trademark registrations for ASCENSION and ASCENSION‑formative marks (the "ASCENSION marks"), including the following: ASCENSION, U.S. Reg. Nos. 4,629,479, 4,759,247 and 5,434,122; ASCENSION (and Design), U.S. Reg. Nos. 4,629,478 and 5,434,121; ASCENSION HEALTH, U.S. Reg. No. 4,069,046; ASCENSION HEALTH (and Design), U.S. Reg. Nos. 2,478,534 and 4,759,247; ASCENSION HEALTH ALLLIANCE, U.S. Reg. No. 4,664,062; ASCENSION HEALTH SMARTHEALTH, U.S. Reg. No. 4,422,262; and ASCENSION INVESTMENT MANAGEMENT, U.S. Reg. No. 4,732,294. The Complainant's ASCENSION marks were registered by the United States Patent and Trademark Office on various dates between August 14, 2001 and March 27, 2018.
The Respondent registered the disputed domain name on April 6, 2016, according to the Registrar's WhoIs records. The disputed domain name resolves to a website entitled "Ascension Treatment Center", offering treatment for addiction and substance abuse on a residential and outpatient basis at a facility located in Palm Springs, California. The Complainant attempted to contact the Respondent by mail and by telephone on several occasions between June 2017 and January 2018, but received no response or return call. Subsequently, the Complainant brought this proceeding. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical and confusingly similar to the Complainant's ASCENSION mark. According to the Complainant, its ASCENSION mark is the dominant element of the disputed domain name, and the word "treatment" is merely descriptive of the services offered by the Respondent on its website, which the Complainant maintains are identical to services it provides under the Complainant's ASCENSION marks. The Complainant asserts that the disputed domain name infringes upon the Complainant's ASCENSION marks.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent's use of the disputed domain name infringes upon the Complainant's trademark rights. The Complainant observes that its use of the ASCENSION "family of trademarks" goes back to 1999, whereas the Respondent registered the disputed domain name in 2016. The Complainant submits that the disputed domain name is identical to the Complainant's ASCENSION marks, and that the services being offered on the Respondent's website compete with services provided by the Complainant under its ASCENSION marks.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent is intentionally using the disputed domain name to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or products or services offered on the Respondent's website. The Complainant asserts that the Respondent is attempting to profit from the goodwill the Complainant has built in its ASCENSION marks, and further contends that the Respondent registered the disputed domain name primarily for the purpose of disrupting the Complainant's business. The Complainant also asserts that the Respondent's refusal to respond to the Complainant's communications is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's ASCENSION marks, in which the Complainant has established rights through extensive registration and long use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
In this case, the Complainant's ASCENSION mark is clearly recognizable in the disputed domain name. The inclusion of the descriptive word "treatment" does not dispel the confusing similarity of the disputed domain name to the Complainant's marks. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.2 While the content of the website associated with a disputed domain name is typically disregarded by UDRP panels when assessing confusing similarity under the first element, the Panel also notes that given the Respondent's website content, the disputed domain name appears calculated to play off of the confusing similarity of the disputed domain name with the Complainant's ASCENSION marks, and suggests targeting of the Complainant's marks by the Respondent.3
Top-Level Domains ("TLDs") generally are disregarded when evaluating the identity or confusing similarity of the complainant's mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant's ASCENSION marks. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the Complainant's marks. As noted earlier, the Respondent is using the disputed domain name in a manner consistent with the targeting of the Complainant's ASCENSION mark, purporting to offer addiction and substance abuse services that compete with similar services provided by the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 has not come forward with credible evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant's ASCENSION marks, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its 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 website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel considers that the Respondent more likely than not was aware of and had the Complainant's ASCENSION mark in mind when registering the disputed domain name. Having regard for the totality of circumstances in the record, and absent any explanation from the Respondent, the Panel concludes that the Respondent is seeking to exploit and profit from the Complainant's ASCENSION mark, using the disputed domain name to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: August 13, 2018
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
2 See WIPO Overview 3.0, section 1.8 and cases cited therein.
3 See WIPO Overview 3.0, section 1.15.
4 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
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