The Complainants are HL7 Australia of Campbell, Australia (“First Complainant”) and Health Level Seven International, Inc of Ann Arbor, Michigan, United States of America (“United States”) (“Second Complainant”), represented by Davies Collison Cave, Australia.
The Respondents are Klaus Veil and HL7 Systems and Services, both of Avalon, Australia. 2. The Domain Names and Registrar
The disputed domain names and (“Domain Names”) are registered with Web Address Registration Pty Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 16, 2018, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Names. On August 17, 2018, Web Address Registration Pty Ltd transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 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 amended Complaint on August 29, 2018.
The Center verified that the Complaint together with the amended Complaint (hereafter the “Complaint”) satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 August 31, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2018. The Respondent1 did not submit any response by the nominated due date. Accordingly, the Center notified the Respondent’s default on September 21, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on September 25, 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.
On September 26, 2018, the Respondent sent an e-mail Response to the Center, which the Panel, in exercising its discretion under the Rules, has chosen to accept. In the Response, the Respondent made certain statements that could be seen as consenting to the transfer of the Domain Names, either with or without certain conditions.
On September 27, 2018 a further exchange of e-mail correspondence between the Respondent, the Center and the Complainant occurred. Following that exchange, on the same day, the Panel issued the Administrative Panel Procedural Order No. 1 to the Parties, the relevant text being reproduced below.
“Under the Rules for .au Dispute Resolution Policy (the “Rules”), the Panel may, at its sole discretion request, in addition to the Complaint and the Response, further statements or documents from either of the Parties.
The Panel has reviewed the correspondence that has occurred since its appointment, in particular the Respondent’s communication of September 26, 2018, and notes that:
(1) The Respondent states that he has no objection to a transfer order being made. Later he states “if the Panel wishes to make a consent order for transfer of the Domain names [sic] upon re-imbursement of my costs that may be a convenient approach.”
(2) The Panel may make an order to transfer a domain name based on a respondent’s consent. In such case it will not consider nor make any findings in respect of the various claims made in a complaint. However such an order can only be made if the respondent’s consent to transfer is genuine, unconditional and unilateral.
(3) Neither the Panel nor the WIPO Center has power under the .au Dispute Resolution Policy (the “Policy”) to made an order that a respondent’s costs be paid; such an outcome can only occur if the parties reach a settlement or side agreement.
(4) As such it is not clear whether:
a. The Respondent consents unconditionally to the transfer of the Domain Name to the Complainant; or
b. The Respondent only consents to the transfer of the Domain Name to the Complainant if his costs are reimbursed.
Therefore the Panel makes the following orders:
1) The Respondent has until October 4, 2018 to send an email to the Center at “[address]@” indicating whether it consents unconditionally to the transfer of the Domain Names to the Complainant.
2) In the event that the Respondent confirms that it consents unconditionally to the transfer of the Domain Names, the Panel will shortly deliver such an order, transferring the Domain Names to the Complainant, terminating the present proceeding, and will make no findings on the various claims made on the Complainant. If the Respondent does not provide such a confirmation, or indicates that its consent is subject to reimbursement, the Panel will proceed to consider and issue a decision on the merits. The Panel reserves the right to issue a decision on the merits should the Complainant expressly request that it do so.
3) The due date for the Panel’s submission of its draft decision to the Center is extended to October 16, 2018.
On October 4, 2018 the Respondent sent two e-mails to the Center, the first being of a procedural nature and the second stating that the Respondent has “no objection to a transfer order being made without re‑imbursement since in the scheme of things the expense was trivial”. 4. Factual Background
The Second Complainant is a United States company that provides standards for interoperability in the health care sector. The First Complainant is an incorporated association which is the Australian affiliate of the Second Complainant. The Second Complainant was founded in 1987 and as of the date of the Complaint, the Second Complainant and its affiliates have 1,600 members from 50 countries that collaborate to create a framework and standards for the exchange, integration, sharing and retrieval of electronic health information. The First Complainant was founded in 2002 and has since at least 2003 operated a website from the domain name . The Complainants provide their services under the trade mark “HL7” (the “HL7 Mark”).
The First Complainant is the owner of an Australian trade mark registrations for the HL7 Mark, with a priority date of December 5, 2017, for services in class 41 and 42 including education and provision of training. The Second Complainant is the owner of a United States registration for the HL7 Mark, with a priority date of June 3, 1992, for services in class 42.
The Domain Name was registered on March 6, 1998. It is registered under the name Klaus Veil. It presently redirects to a website (“the Respondent’s Website”), which contains the following title and first paragraph:
“HL7 e-Health Systems Interoperability Consulting and Education
HL7 Systems and Services is a leading specialist eHealth consultancy providing Advice, Education, Consulting and Implementation Support for the HL7 e-Health Healthcare Computing Systems Interoperability Standards. HL7S&S has a comprehensive track record in successfully undertaking projects for Federal and State Health agencies, product vendors, private hospital groups and other health-care organisations. HL7S&S provided EHR messaging specifications for NSW Health's Health-e-link project, has recently completed projects for the Dept. of Health and Ageing, NEHTA, etc. and was contracted 2002-05 to a US$68m World Bank project to redevelop the health information systems in Bulgaria.”
More broadly, Respondent’s Website advertises an entity that provides advice and consulting in respect of the HL7 standards. Other than two links to the Second Complainant’s website towards the bottom of the page, it does not provide any explanation of any relationship between the Respondents and the Complainants.
The Domain Name was registered on January 15, 2017. It is registered under the name HL7 Systems and Services. HL7 Systems and Services is a business name owned by Klaus Veil and hence the Panel concludes that, for all intents and purposes, HL7 Systems and Services is Klaus Veil (hereafter “Respondent”). The Domain Name is presently inactive however prior to the commencement of the proceeding redirected to a website located at “/HL7-” Implementation (“the Other Website”). The Other Website offered training in respect of HL7 implementation. While the Other Website does not directly refer to the Respondent, it is clear from the address details on the Other Website that the training offered is offered by, or in partnership with, the Respondent. 5. Parties’ Contentions A. Complainants
The Complainants make the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainants’ HL7 Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are subsequently being used in bad faith.
The Complainants are the owner of the HL7 Mark, having registered this mark in the United States and Australia. The Domain Names are confusingly similar to the HL7 Mark, and incorporate the HL7 Mark in its entirety. The Domain Name is identical to the HL7 Mark since its only addition is the ccTLD “.” while the Domain Name also adds the descriptive term “education”, which merely confirms the confusing similarity since the Complainants also offer educational services under the HL7 Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Names. The Respondent registered the Domain Names well after the Second Complainant commenced operations in 1987. The Respondent was a director of the Second Complainant from 2000 to 2007 and is presently a member of the Second Complainant. The Respondent was a participant in the establishment of the First Complainant as an affiliate of the Second Complainant, was the inaugural chair of the First Complainant until 2009 and remains a member of the First Complainant.
The Complainants maintain policies in respect of the use of the HL7 Mark including restrictions on use of the HL7 Mark as trade marks or in domain names without the express written consent of the Complainants. Such consent has not been obtained by the Respondent. While the Respondent does hold a business name registration for HL7 Systems and Services, a business name does not confer proprietary rights and is insufficient to establish a legitimate interest in the domain name: see Technosystems Consolidated Corporation, Invention Submission Corporation t/a Invent Help v. Hugh Godman, Royal Computer Proprietary Ltd.,WIPO Case No. DAU2007-0001.
While the Respondent appears to operate a business under the Domain Name, this is insufficient to find rights or legitimate interests as the Respondent’s activities are not bona fide, being in direct contravention of the Complainants’ rights and the Respondent’s obligations to the Complainants. The Respondent is not a reseller of the Complainants’ services and its use of the Domain Names does not fall within the rules set out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 as the Respondent has not disclosed its relationship or lack thereof with the Complainants and has attempted to corner the market in domain names reflecting the HL7 Mark.
The Domain Names were registered and are being used in bad faith. The Respondent registered both the Domain Names being fully aware of the Second Complainant and any rights they had in the HL7 Mark. The Respondent is using the Domain Names to offer competing services to the Complainants by misleading visitors to think that the Respondent is the official provider of services relating to the HL7 standards in Australia. Such action disrupts the business of the Complainants which amounts to bad faith registration and use. B. Respondent
The Respondent, while consenting to the transfer of the Domain Names, denies the allegations in the Complaint, characterising them as defamatory and false, noting that he established the First Complainant, was its inaugural chairman, had registered and managed various other domain names for the First Complainant which he had handed over when asked in 2012. As a result of the Respondent’s services to the Complainants, he had been awarded the Volunteer of the Year award in 2001, been made an HL7 Fellow in 2012 and had been awarded an honorary Life Membership in 2016. 6. Discussion and Findings A. Consent to Transfer
The Respondent has, by e-mail of October 4, 2018, consented to the transfer of the Domain Names to the Complainant. The auDA Overview of Panel Views on Selected auDRP Questions, First Edition, section 4.13, states, in response to the question “Can a panel decide a case under the auDRP based on a respondent’s consent to transfer?” that:
“The general position is the same as that under the UDRP.
Where a respondent has stated, either in its response or some other communication to the panel, that it consents to a transfer of a domain name, auDRP panels have given effect to this by ordering transfer without consideration of whether the paragraph 4(a) requirements of the Policy are satisfied. For this to occur, the respondent’s consent to transfer must be genuine, unconditional and unilateral. Where the consent to transfer is conditional – e.g., in return for payment of a fee – panels generally proceed to consider the merits of the complaint.”
The Panel is satisfied that the Respondent has provided a genuine, unconditional and unilateral consent to the transfer of the Domain Names to the Complainant and the Panel so orders the transfer of the Domain Names to the Complainant. 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 the First Complainant.2
Nicholas Smith
Sole Panelist
Date: October 6, 2018
1 For reasons discussed under the Factual Background below, the two named Respondents are in fact one and the same and are referred to as the Respondent for the majority of this decision.
2 The Complainants have requested transfer of the Domain Names to the First Complainant. Given that the First Complainant is the owner of an Australian registered trade mark for HL7 that appears to be closely and substantially connected to the Domain Names, in that the Domain Names reproduce the HL7 Mark in their entirety (in the case of the Domain Name with the addition of a term descriptive of the First Complainant’s services under the HL7 Mark), the First Complainant appears to satisfy the eligibility requirements for registration of the Domain Names.
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