Case No. D2005-1305

1. The Parties

The Complainant is Lee Memorial Health System, Fort Myers, Florida, United States of America, represented by Armstrong Teasdale, LLP, United States of America.

The Respondent is Oleg Zaizef, Moscow, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <leememorialfoundation.org> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2005. On December 16, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On December 17, 2005, eNom 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 administrative, billing, and technical contact. The Center verified that the Complaint 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 December 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2006.

The Center appointed James McNeish Innes as the sole panelist in this matter on January 26, 2006. 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 and has been since 1916, a leading provider of healthcare services in South West Florida, United States. It offers patient care throughout the region ranging from traditional in-patient services in five hospitals to outpatient facilities and walk-in centers in five locations. It also operates the Lee Memorial Health System Foundation which solicits and manages donations from individuals and organizations throughout the United States for the purpose of the furtherance of the Complainants mission of providing a health care delivery system that is second to none. The Respondent is a Russian private individual. The domain name was first registered by the Respondent on March 5, 2004.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

(i) The Complaint is based on the common law service marks LEE MEMORIAL AND LEE MEMORIAL HEALTH SYSTEM FOUNDATION. The Complainant has used the marks in connection with the provision of healthcare services in its region for the past 89 years.

(ii) The Complainant does not have federal registrations for the marks but a federal registration is not required to prevail in a domain name dispute under the Policy.

(iii) The Respondent is not related to the Complainant and does not have the Complainant’s permission to use the marks.

(iv) The Respondent is not using the disputed domain name or marks in connection with a bona fide offering of goods or services. The Respondent is using the domain name to divert internet users to a pornography site and the domain name is also offered for sale.

(v) At the time of registration the Respondent had actual knowledge of the Complainant’s marks. The Respondent has also previously registered a domain name identical to a third party’s trade mark to poach customers of a legitimate business.

(vi) The Respondent is using the confusingly similar domain name in an attempt to profit from the Complainant’s established marks and goodwill by luring internet users seeking information regarding the Complainant’s services to its site.

(vii) The use of the domain name that is identical to the Complainant’s marks in order to display pornography and other tarnishing material is considered evidence of bad faith registration.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

2) That the Respondent has no rights or legitimate interests in respect of the domain name.

3) That the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant seeks to assert common law trade mark rights. Paragraph 4(a)(i) of the Policy refers to a “trademark or service mark” it does not distinguish between registered and unregistered trademarks. Consequently it is possible for the Complainant to assert common law marks under the Policy see: Imperial College v. Christoph Dessimoz, WIPO Case No. D2004-0322; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; see also MatchNet plc. V. MAC Trading, WIPO Case No. D2000-0205; Emmanuel Vincent Seal trading as Complete Sports Betting v. Ron Basset, WIPO Case No. D2002-1058.

The Panel finds that the Complainant has shown that the name has become a distinctive identifier associated with its services and that it is entitled to assert common law rights to the marks. The next question is to consider whether the domain name <leememorialfoundation.org> is identical or confusingly similar to the marks in question. On the evidence the Panel finds that the domain name is confusingly similar. The Panel finds that the Complainant has satisfied the Policy Paragraph 4(a)(i).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that any of the following circumstances in particular but without limitation if found by the Panel to be proved based upon its evaluation of the evidence presented shall demonstrate a Respondent’s rights or legitimate interests in the domain name for the purpose of Paragraph 4(a)(ii);

(i) before any notice to you [respondent] of the dispute, your use of, or demonstrable preparation to use, the domain name of a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [respondent] (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.

The Respondent has not submitted a Response and has failed to invoke any circumstances which could have demonstrated any rights or legitimate interests. There is no independent evidence of any circumstances which could have demonstrated any rights or legitimate interests on the part of the Respondent. The Panel finds that the Complainant has demonstrated prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel finds based on the Complainant’s supported allegations and in the absence of a rebuttal, that the requirements of the Policy Paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the domain name must be both registered and used in bad faith.

Given the Respondent’s failure to file a Response the Panel accepts as true all the factual allegations of the Complaint. The Respondent’s default does not however result in an automatic ruling for the Complainant. The Complainant must still show that it is entitled to the transfer of the domain name. The fact that the disputed domain name is redirected to a pornographic website is an indication that the domain name has been registered and used in bad faith. This conclusion has been reached in several WIPO UDRP cases. See for example:

Ty Inc v. O.Z. Names, WIPO Case No. D2000-0370, finding that absent contrary evidence, linking the domain names in question to pornographic, adult-orientated websites is evidence of bad faith. Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022, noting that “the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the domain name was registered and is being used in bad faith.”

The Panel finds that the Respondent is taking advantage of the Complainant’s reputation and its goodwill in the trademark LEE MEMORIAL FOUNDATION to divert internet users to a pornographic website for the Respondent’s financial gain within the meaning of paragraph 4(b)(iv) of the Policy.

The Panel finds that the requirements of the Policy paragraph 4(a)(iii) have been satisfied.

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 <leememorialfoundation.org> be transferred to the Complainant.

James McNeish Innes
Sole Panelist

Dated: February 9, 2006