University of Pittsburgh Medical Center, Inc. v. Domain Park Limited, hostmaster
Case No. D2008-0966
1. The Parties
The Complainant is University of Pittsburgh Medical Center, Inc., 200 Lothrop St., Pittsburgh, Pennsylvania, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is Domain Park Limited, hostmaster, Apia, Samoa.
2. The Domain Name and Registrar
The disputed domain name <upmcnursing.com> is registered with Rebel.com Services Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2008. On June 27, 2008, the Center transmitted by email to Rebel.com Services Corp a request for registrar verification in connection with the domain name at issue. On June 30, 2008, Rebel.com Services Corp transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 3, 2008. On July 4, 2008, the Center verified that the Complaint together with the amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 July 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 25, 2008.
The Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter on August 6, 2008. 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 the University of Pittsburgh Medical Center, a non-profit organization established under the laws of Pennsylvania. It is the exclusive licensee of all right, title, and interest in and to the UPMC mark and, through its licensor, the University of Pittsburgh, has obtained trademark registrations for the mark in the United States of America (“U.S.”), including U.S. Registration No. 2,174,963, a copy of which was annexed to the Complaint. It provides healthcare and nursing services under the UPMC mark and has used it in the U.S. and abroad.
The Complainant also operates various websites using the domain names <upmc.com>, <upmcnurse.com>, and <upmcnurses.com> through which it promotes and advertises its healthcare and nursing services and provides information to consumers.
5. Parties' Contentions
A. Complainant
The Domain Name is Confusingly Similar to Complainant's Mark
With respect to this issue, the Complainant asserts that the contested domain name <upmcnursing.com> is confusingly similar to its mark since it combines the UPMC trademark with the generic term “nursing,” which is closely associated with the Complainant and the services it provides.
The Respondent Has No Legitimate Interest in the Domain Name
With respect to whether the Respondent has any legitimate interest in the domain name, the Complainant asserts that the Respondent is not, and never has been, authorized to use the UPMC mark. Prior to any notice given to the Respondent, there is no evidence that it used or made preparations to use, the domain name in connection with a bona fide offering of goods or services. It is further asserted that the Respondent is not making a legitimate noncommercial or fair use of the domain name. It has registered the name solely to obtain commercial gain from the Complainant's business and goodwill by attracting consumers through the confusingly similar domain name and by collecting revenue by featuring sponsored links to its search engine.
The Registrant Registered and is Using the Domain Name in Bad Faith
It is contended in respect of this issue that the Respondent has shown a propensity to act in bad faith. Its name crops up in past cases where bad faith has been alleged and the Complainant adduced evidence of such cases in an annex to the Complaint. It is further asserted that the contested domain name incorporates the Complainant's UPMC in a way that deceptively leads consumers to believe that the Respondent is affiliated with the Complainant or that its website is sponsored, approved, or endorsed by the Complainant.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy requested by a complainant under the Policy, it is necessary that the complainant prove, as required by paragraph 4(a) of the Policy, in respect of each of the contested domain name, that:
(i) the contested 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name <upmcnursing.com> is virtually identical to the Complainant's UPMC mark. As numerous courts and UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant's registered trademark. The addition of a generic word such as “nursing” does not change this finding.
There is no question that the Complainant has met the first requirement of the Policy.
B. Rights or Legitimate Interests
As for the second requirement of the Policy, there is no evidence that the Respondent was in any way authorized to use the UPMC mark, and the Panel notes that none of the circumstances enumerated in paragraph 4(c) of the Policy appear to be present. The Panel therefore finds, also taking into account the use of the disputed domain name as defined below, that the Complainant has made out its case in this regard.
C. Registered and Used in Bad Faith
Third, it must be shown that the domain name at issue has been registered and is being used in bad faith.
The Panel finds that this element has also been made out. The Respondent has intentionally, and for commercial gain, registered and is using the Complainant's UMPC mark in the domain name <upmcnursing.com> to attract Internet users to its website for purpose of providing links to third party websites and hosting advertisements of third parties. It is plainly acting in bad faith.
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, <upmcnursing.com> be transferred to the Complainant.
J. Christopher Thomas, Q.C. Sole Panelist
Dated: August 19, 2008
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