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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Complainant is New York-Presbyterian Hospital, a New York not-for-profit corporation with a principal place of business at 525 East 68th Street, New York, NY, 10021, USA.

Respondent is Tim Harris of 530 Main Street, Suite 837, New Rochelle, New York, 10801, USA.

2. The Domain Name and Registrar

This dispute concerns the domain name "NEWYORKPRESBYTERIANHOSPITAL.ORG". The registrar with which the domain name is registered is Alabanza, Inc., doing business as Bulk Register.com, Inc.

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of New York-Presbyterian Hospital on July 24, 2000, in hard copy and after a request for an electronic copy, on July 27, 2000, by e-mail. The Complainant made the required fee payment. The Center assigned this matter Case No. D2000-0856.

On July 27, 2000, the Center requested Alabanza, Inc. d/b/a Bulkregister.com to verify the registration data. On July 27, 2000, Bulkregister.com confirmed that it is the registrar of the domain name registration and, inter alia, that Tim Harris is the current registrant.

Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center sent a notification of the commencement of the administrative proceeding, together with a copy of the Complaint, to the Respondent, with a copy to the Complainant on July 28, 2000. The formal date of the commencement of this administrative proceeding is July 31, 2000.

On August 23, 2000, the Center acknowledged to the parties that it had received the Response from the Respondent on August 17, 2000. This response indicates it was filed by Tim Harris.

On September 8, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Presiding Panelist.")

The Complainant claims to be the owner of the common law trademark and service mark NEWYORK-PRESBYTERIAN HOSPITAL. Complainant claims to use the mark to identify itself as a health care leader and as a provider of medical and related services. In addition, Complainant contemplates other uses of the mark in the future.

The Complainant has used the NEWYORK-PRESBYTERIAN HOSPITAL trademark and service mark since the merger of The New York Hospital and The Presbyterian Hospital in 1998. In 1999, Complainant spent more than $5 million to advertise and promote the mark through various media such as television, radio, newspapers, magazines, brochures and the Internet. Complainant asserts that the projected advertising budget for 2000 exceeds $6 million. All advertising material materials in every media include reference to the NEWYORK-PRESBYTERIAN HOSPITAL alleged trademark and service mark.

On March 20, 2000, the Respondent registered the domain name "NEWYORKPRESBYTERIANHOSPITAL.ORG". As a former patient of the NEW YORK Presbyterian Hospital, the Respondent contends that his use of the domain name is a humanitarian effort to provide the public with information and important warnings. On the web site, Respondent asserts that "New York Presbyterian Hospital...is a cold, abusive, incompetent place that can barely function. Often void of compassion, common sense, basic decency." In addition, Respondent states that "[i]it's a teaching hospital run by untrained doctors inadequately supervised." Five doctors and two Ph.Ds are specifically named. The Respondent further claims that the purpose of his web site is to motivate changes for the better at this hospital and for the doctors mentioned.

The Complainant sent Respondent a cease and desist letter on April 7, 2000, demanding that he immediately discontinue and cancel the domain name in dispute. The Respondent has not responded to the letter.

Complainant has requested that the domain name be transferred to Complainant because:

(1) the domain name "NEWYORKPRESBYTERIANHOSPITAL.ORG" is effectively identical and confusingly similar to the mark NEWYORK-PRESBYTERIAN HOSPITAL in which Complainant has common law rights;

(2) Respondent has no legitimate rights or interests to use the mark as his domain name;

(3) Respondent registered and is using the domain name in bad faith, and

(4) Respondent’s sole purpose of adoption of the domain name is to divert Complainant’s patients and consumers to Respondent’s web site and to disrupt Complainant’s business.

Respondent has filed a response stating that:

(5) Respondent's web site is a humanitarian effort for the public to receive information and an important warning;

(6) as a patient of the hospital, Respondent received extremely poor care that threatened his life;

(7) Respondent chose this domain name to increase the chance that search engines would return to his web site while seeking information about the hospital;

(8) Respondent believes his web site might motivate positive changes and that the contents of his web site are true, and

(9) the addition of "Presbyterian" in the hospital's name is in poor taste and misleading.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(1) Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) Respondent's domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief. They will be addressed separately below.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Complainant has claimed no registered trade or service marks. Under United States law, however, the fact that the Complainant does not have a registered mark does not end the trademark or service mark rights analysis. Actual use in commerce, without more, establishes protectable trademark rights under United States common law 1. The "use in commerce" standard requires (a) a bona fide use of a trademark or service mark in the ordinary course of trade, and (b) not made merely to reserve a right in a mark 2.

The Panel finds that the extensive use of NEW YORK - PRESBYTERIAN HOSPITAL since 1998, together with the millions of dollars spent to advertise and promote this term, have created a protectable common law trade and/or service mark.

The Panel also finds that the domain name is identical or confusingly similar to this trade or service mark. The only differences are the inclusion of the top-level domain ".org" in the domain name, the absence of spacing between words, and the use of a hyphen in the mark. However, since the hyphen is not pronounced and the domain name necessarily omits spacing between words, the mark and the domain name are effectively the same. The point is emphasized because the trademark is used without a space between "New" and "York", albeit with the first letter of each word capitalized.

Respondent's use of the top-level domain ".org" as part of its domain name enhances the likelihood of confusion. The top-level domain ".org" is intended for the use of not-for-profit organizations, such as Complainant, New York-Presbyterian Hospital. Indeed, Complainant is the registered owner of no fewer than fourteen domain names incorporating the components of its name, thirteen of which use the top-level domain ".org". Therefore, actual and prospective users of the Hospital's facilities and services searching for information on the Internet who type in the domain name "NEWYORKPRESBYTERIANHOSPITAL.ORG", expecting to arrive at a website pertaining to Complainant, New York-Presbyterian Hospital, could instead find themselves at Respondent's web site. Thus, Respondent's use of Complainant's mark effectively will intercept and divert actual and prospective patients from reaching Complainant's own Internet websites. Indeed, prospective users of Complainant's services who are diverted to Respondent's web site could very likely fail to continue to search for Complainant's own home page due to the erroneous belief that Complainant's home page does not exist.

The evidence presented demonstrates that the domain name at issue is identical or confusingly similar to Complainant's name or mark. Therefore, the requirement of Paragraph 4(a)(i) is met.

Paragraph 4(c) of the Policy enumerates how a respondent may establish rights to and legitimate interests in a domain name. The evidence presented shows that Respondent never attempted to use the domain name in connection with offering any goods or services, nor any business of any kind. Respondent does not deny this. Therefore, subparagraph (i) and (ii) of Paragraph 4(c) are inapplicable. Paragraph 4(c)(iii), however, sets forth circumstances under which the Respondent can demonstrate such legitimate rights and interests even without a commercial use. This is where "you are 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."

Respondent states very clearly why he chose this name, it was to divert persons seeking information about the hospital to provide them with a warning. He states: "The reason I chose my domain name was to increase the chance of search engines returning with my Web site when a person seeking information about the hospital does a search." He also says he wishes to keep the domain name: "...so that the public has a better chance of receiving my information and important warning. This is a humanitarian effort on my part." When an Internet user is diverted to Respondent's site, he or she is told that the hospital is an "incompetent place" run by "untrained doctors".

The evidence presented demonstrates that Respondent had no rights or legitimate interests in respect to the domain name at issue. Respondent is not undertaking a legitimate fair use in accordance with Paragraph 4(c)(iii) since his non-commercial use misleadingly diverts customers and tarnishes the trade or service marks at issue. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been proved by the Complainant.

The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith." Respondent claims that it has both registered and continues to use the web site to "warn others about New York Presbyterian Hospital ... [and] about some of the doctors by name." Accepting this as true, this still does not allow appropriation of this domain name. Respondent has other ways to voice his opinions about the hospital and its staff without appropriating its trademark.

As the arbitrator explained in Compagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020:

"[i]t goes without saying that shareholders or other interested parties have the right to voice opinions, concerns and criticism with respect to a listed company and that the Internet constitutes an ideal vehicle for such activities. The issue at hand is however not as Respondent seems to contend, the freedom of speech and expression but the mere choice of the domain name used to exercise this inalienable freedom of speech and expression. When registering the Domain Name, Respondent knowingly chose a name which is identical and limited to the trademark of Complainant…. Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names. By failing to do so, and by knowingly choosing a domain name which solely consists of Complainant's trademark, Respondent has intentionally created a situation which is at odds with the legal rights and obligations of the parties."

See also E. & J. Gallo Winery v. Hanna Law Firm, WIPO Administrative Decision, August 3, 2000, Case No. D2000-0615. There, the Presiding Panelist explained:

"As a general proposition under United States law, Hanna Law Firm appears to have the right to establish "complaint websites" for the purpose of 'allowing consumers to voice complaints' about Gallo and Bartles & Jaymes. It appears also under United States law that Hanna Law Firm has the right to mention Bartles & Jaymes and its mark in the text at such a website. However, it is not so clear that Hanna Law Firm is entitled to use the Bartles & Jaymes name or mark as part of Hanna Law Firm's address for such a complaint website – notwithstanding Hanna Law Firm's right to establish complaint websites under appropriate circumstances.

Many addresses are available which would not impinge in anyway on the BARTLES & JAYMES mark. Hanna Law Firm consciously chose two addresses, each using the BARTLES & JAYMES mark, or a confusingly similar variant, to lead Internet users to the sites. The uncontested global fame of the BARTLES & JAYMES mark is likely to lead Internet users to the complaint sites as readily as to any other site relating to Bartles & Jaymes's products. This undoubtedly is Hanna Law Firm's hope. Indeed, Internet users would have every reason to believe that, until they actually arrived at one of the Hanna Law Firm complaint sites, they were on their way to visiting a Bartles & Jaymes sponsored or authorized website. Hanna Law Firm is consciously counting on initial confusion to divert Internet users from sites meant to promote Bartles & Jaymes's products to the Hanna Law Firm complaint websites. As noted in Section 5.1. above, Hanna Law Firm has not disavowed it has "intentionally attempted to attract . . . Internet users . . . by creating a likelihood of confusion" (Policy, Paragraph 4(b)(iv)).

Hanna Law Firm's express disclaimers at the sites themselves come too late. A domain name is not only an address, it is also a personal identifier. Hanna Law Firm is here using this identifier (a) to induce a visitor to a site in order to criticize the very entity whose name is used as the address for the site, and (b) to divert the visitor from a legitimate site authorized by the entity."

Considering all of the evidence presented by the parties, I find, for the reasons enunciated by the panelists in the two arbitrations above, that Respondent did both register and use the domain name in bad faith. Therefore, the requirement of Paragraph 4(a)(iii) of the Policy has been proved by the Complainant.

Claimant has proved the necessary elements that the names are identical or confusingly similar, that Respondent has no rights or legitimate interest in the domain name and that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. The domain name "NEWYORKPRESBYTERIANHOSPITAL.ORG" is to be transferred to Complainant.

Thomas L. Creel
Presiding Panelist

Dated: September 26, 2000

Footnotes:

1 Jerome Gilson, Trademark Protection and Practice § 3.02[2].

2 Gilson, supra note 1.