The Complainant is Legacy Health System, of Portland, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
The Respondent is Nijat Hassanov, of Baku, Azerbaijan.
2. The Domain Name and Registrar
The disputed domain name <legacyhealthsystem.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On November 11, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. 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 the Respondent of the Complaint, and the proceedings commenced on November 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 9, 2008.
The Center appointed Ross Wilson as the sole panelist in this matter on December 22, 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 operates six hospitals in the Portland, Oregon, and Vancouver, Washington metropolitan area and employs than 9,000 full-time and part-time staff. The hospital system was formed in 1989. It offers inpatient, outpatient, tertiary, trauma and hospice services to men, women and children.
The Complainant trademarks LEGACY HEALTH SYSTEM and LEGACY were registered by the USPTO in 1989 for use in connection with health care services.
The Respondent registered the disputed domain name on May 8, 2005.
5. Parties' Contentions
A. Complainant
The Complainant contends that:
- it has ownership rights in the trademarks LEGACY HEALTH SYSTEM and LEGACY and the disputed domain name is identical or confusingly similar those trademarks. The Complainant supports its contention by reference to Deere & Company v. XC2 (Moniker Privacy Services),
WIPO Case No. D2007-1805, Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 and SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,
WIPO Case No. D2008-0016;
- the Respondent has no rights or legitimate interests in the disputed domain name, nor is there any evidence that the Respondent has been commonly known as or associated with Legacy Health System;
- the Respondent is not a licensee of the Complainant, has no relationship or association with the Complainant and is not authorized to use its trademarks in any way. The Complainant cites Compagnie de Saint Gobain v. Com-Union Corp.,
WIPO Case No. D2000-0020 in which it was found that there are no rights or legitimate interests where respondent was not commonly known by the mark or never applied for a license or permission from the complainant to use the trademarked name;
- the disputed domain name resolves to a pay-per-click advertising website whose sole purpose is to collect click-through revenues from advertising links. The Respondent can present no evidence of fair use or non-commercial use of the disputed domain name. Based on the following decisions: SOCIÉTÉ DES PRODUITS NESTLÉ SA v. Mustafa Yakin/Moniker Privacy Services,
WIPO Case No. D2008-0016; Gaylord Entertainment Company v. Nevis Domains LLC,
WIPO Case No. D2006-0523 and Fresh Intellectual Properties, Inc. v. Matt Braska,
WIPO Case No. D2005-0096, the Complainant contends that the Respondent has no right or legitimate interest in the disputed domain name;
- using virtually the same mark as a domain name is evidence of a bad faith attempt to trade on the goodwill associated with the mark. A view the Complainant argues is supported by the decisions in Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 and Advance Magazine Publishers Inc. v. Pablo Palermao,
WIPO Case No. D2008-0026; and
- the disputed domain name was registered and is being used in bad faith as it resolves to a pay-per-click advertising website whose sole purpose is to collect click-through revenues from advertising links. The Complainant contends that this practice has routinely been found to constitute neither a bonafide offering of goods or services nor a legitimate non commercial or fair use citing the following cases: Manheim Auctions Inc. v. Whois ID Theft Protection,
WIPO Case No. D2006-1044, Fresh Intellectual Properties, Inc. v. Matt Braska,
WIPO Case No. D2005-0096 and Nine West Development Corporation v. Registrant [1168318]/Moniker Privacy Services/Registrant [1260512]: Domain Administrator,
WIPO Case No. D2008-0154.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:
(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 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 Complainant has provided evidence that it has rights in its two US registered trademarks LEGACY HEALTH SYSTEM and LEGACY.
The disputed domain name <legacyhealthsystem.com> incorporates in full both of the Complainant's trademarks. Apart from the < .com> extension the disputed domain name is identical to the LEGACY HEALTH SYSTEM trademark. With respect to the Complainant's second trademark the disputed domain name combines the distinctive LEGACY element with the descriptive words “health system”. As held in many similar cases, the addition of descriptive words does not provide sufficient differentiation for a disputed domain name to be considered distinctive from the dominant element of a complainant's trademark. In this case the disputed domain name is confusingly similar to the Complainant's LEGACY trademark.
In view of the above, the Panel finds that the disputed domain name is identical to the Complainant's LEGACY HEALTH SYSTEM trademark and confusingly similar to the LEGACY trademark, both of which the Complainant has demonstrated rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to or legitimate interests in the disputed domain name. In this case, the Respondent has chosen not to file any submission or evidence to demonstrate its rights or legitimate interests in the names “legacy health systems” and “legacy”. In this situation, paragraph 14(b) of the Rules allows the Panel, in the absence of exceptional circumstances, to draw such inferences from the absence of a Response from the Respondent as it considers appropriate.
The Complainant makes it clear that the Respondent is not a licensee of the Complainant, has no relationship or association with Complainant and is not authorized to use the trademarks in any way.
The evidence provided by the Complainant demonstrates that the sole purpose of the disputed domain name is to resolve to pay-per-click advertising websites and collect click-through revenue from advertising links. Such use demonstrates that the Respondent has used the disputed domain name to derive a commercial benefit. There is no indication on the website that the Respondent has made a bona fide use of the disputed domain name. Similarly, there is no evidence that the Respondent is commonly known by the domain name.
The findings in the cases cited by the Complainant all refer to circumstances where the generation of click-through revenue did not constitute a bona fide offering of goods and services or a legitimate non commercial or fair use.
Based on the lack of evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
For the purposes of determining if there was bad faith registration and use, the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.
The fact that the website provides multiple links including to nursing employment, doctors, nursing and Portland, Oregon indicates that the Respondent knowingly used the Complainant's trademark and is evidence that the Respondent is unfairly and opportunistically benefiting from the goodwill associated with the Complainant's mark. In the decision in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,
WIPO Case No. D2000-0163, the panel found that bad faith exists where a domain name is so obviously connected with the Complainant that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.
The Complainant's assertion that the bad faith domain name registration and use is evidenced by the disputed domain name resolving to pay-per-click advertising websites is well supported by the findings of the panels in the following cases cited by the Complainant: Manheim Auctions Inc. v. Whois ID Theft Protection,
WIPO Case No. D2006-1044; Fresh Intellectual Properties, Inc. v. Matt Braska,
WIPO Case No. D2005-0096 and Nine West Development Corporation v. Registrant [1168318]/Moniker Privacy Services/Registrant [1260512]: Domain Administrator,
WIPO Case No. D2008-0154.
Also, the two cases Quixtar Investments, Inc. v. Dennis Hoffman,
WIPO Case No. D2000-0253 and Advance Magazine Publishers Inc. v. Pablo Palermao,
WIPO Case No. D2008-0026 confirm that bad faith is evidenced where a respondent uses virtually the same mark as a domain name and where a respondent attempts to trade on the goodwill associated with a mark in which the complainant has rights.
On the basis of the evidence put forward by the Complainant, the Panel is satisfied that the Respondent's conduct falls within paragraph 4(b)(iv) of the Policy. Therefore, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used 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 disputed domain name <legacyhealthsystem.com> be transferred to the Complainant.
Ross Wilson Sole Panelist
Dated: January 5, 2009
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