The Complainant is Christus Health, United States of America (“United States”), represented by Dykema Gossett PLLC, United States.
The Respondent is Domain Protection Services, Inc., United States / Stephanie Ochoa, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2019, 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 October 2, 2019 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 amended Complaint on October 7, 2019. The Center verified that the Complaint together with the amended 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 October 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 30, 2019. The Center appointed William R. Towns as the sole panelist in this matter on November 8, 2019. 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 was established as a Catholic not-for-profit health system in 1999, formed from two other Catholic health systems in existence for nearly a century. The Complainant provides health care at more than six hundred hospitals, clinics, and long term care facilities in the United States, Mexico and South America. The Complainant is the owner of United States trademark registrations for its CHRISTUS, CHRISTUS HEALTH and other CHRISTUS-formative marks (collectively the “CHRISTUS Marks”). The Complainant’s CHRISTUS (Reg. No. 2517858) and CHRISTUS HEALTH (Reg. No. 2517857) marks were first registered on December 11, 2001, with a first use date of February 1, 2000. The Complainant also uses and asserts unregistered or common law trademark rights in CHRISTUS CHILDREN’S HOSPITAL, CHRISTUS CHILDREN’S, and CHRISTUS CHILDREN’S SERVICES. The Complainant is the holder of numerous domain names incorporating the CHRISTUS mark, as well as The Respondent registered the disputed domain name through a privacy protection service on May 23, 2017, according to WhoIs records maintained by the Registrar. Insofar as the record in this proceeding reflects, the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar and nearly identical to the Complainant’s CHRISTUS Marks. The Complainant maintains that the disputed domain name consists of the Complainant’s well-known CHRISTUS mark with the addition of “childrens”, calling to mind the Children’s Hospital of San Antonio, commonly known as “Christus Children’s Hospital.” According to the Complainant, the inclusion of the generic term “childrens” does not dispel the confusing similarity of the disputed domain name to the Complainant’s CHRISTUS mark; the disputed domain name is descriptive of the Complainant’s goods and services offered under the CHRISTUS mark; and as such the disputed domain name falsely suggests association with, endorsement, or sponsorship by the Complainant. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant maintains that the Respondent is not affiliated with the Complainant or authorized to use the Complainant’s marks, and that the Respondent has not been commonly known by the disputed domain name. The Complainant submits that the Respondent is trading off the goodwill created by the Complainant in its CHRISTUS Marks; that the Respondent has not made any use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; and that the Respondent is not making any legitimate or noncommercial fair use of the disputed domain name. The Complainant further contends that the disputed domain name has been registered and used in bad faith. According to the Complainant, the Respondent registered the disputed domain name to disrupt the Complainant’s business, or otherwise to sell the disputed domain name to the Complainant or one of the Complainant’s competitors in an amount in excess of the documented out-of-pocket expenses related to the domain name. The Complainant urges that the Respondent’s failure to make a good faith use of the disputed domain name is indicative of the Respondent’s primary intent is to sell the disputed domain name, and further remarks that the Respondent used a privacy service to conceal the true identity of the registrant. 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 is 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 that the disputed domain name The Complainant’s CHRISTUS mark is clearly recognizable in the disputed domain name.2 The addition in the disputed domain name of the term “childrens” following “christus” does not serve to dispel the confusing similarity of the disputed domain name to the Complainant’s mark. Top-Level Domains (“TLDs”), in this case “.org”, generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy. 3 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 use the Complainant’s CHRISTUS Marks. The Respondent nonetheless has targeted the Complainant, registering a domain name appropriating the CHRISTUS mark in its entirety, and concealing the Respondent’s identity through use of a privacy service. Although it would appear that the Respondent is passively holding the disputed domain name, the potential exists that the disputed domain name has been or in the future will be used by the Respondent for fraudulent phishing or spoofing activities. 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 disputed 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 submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. The Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. It is readily apparent that the Respondent was aware of the Complainant and the Complainant’s CHRISTUS Marks when registering the disputed domain name. The disputed domain name clearly calls to mind the Complainant’s Christus Children’s Hospital, also known as Christus Children’s. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel concludes 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, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Further, 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 finding of the Respondent’s rights or legitimate interests in the disputed domain name. Absent any explanation by the Respondent, the Panel concludes from the record that the Respondent registered the disputed domain name with the aim of exploiting and profiting from the Complainant’s mark, potentially including the use of the disputed domain name for fraudulent phishing or spoofing. 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. Match.com, 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. As noted above, the Panel finds that the Respondent clearly was aware of the Complainant and had the Complainant’s CHRISTUS Marks in mind when registering the disputed domain name. The record is convincing that the Respondent’s motive in relation to the registration and use of the disputed domain name was to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s marks, with the ultimate aim to profit illicitly therefrom. In light of the attendant circumstances as reflected in the record, the Respondent’s registration and use of the disputed domain name (including targeting) smacks of opportunistic bad faith. To the extent that the Respondent may be passively holding the disputed domain name, a finding of bad faith is not precluded in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531. The Panel considers the following circumstances to be indicative of the Respondent’s bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Panel finds that the CHRISTUS mark is distinctive and well known in the medical services community, and as previously noted it is clear beyond cavil that the Respondent was aware of the Complainant and the Complainant’s well-known CHRISTUS mark when registering the disputed domain name. In the attendant circumstances of this case, and absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent. 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 William R. Towns 1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions , Third Edition (“WIPO Overview 3.0”), section 1.7. 2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 3 See WIPO Overview 3.0 , section 1.11.2 and cases cited therein.
Sole Panelist
Date: November 20, 2019
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