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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez

Case No. D2009-0036

1. The Parties

Complainants are Loma Linda University Adventist Health Sciences Center, a United States non-profit organization incorporated under the laws of the State of California, United States of America and its affiliated entities Loma Linda University and Loma Linda University Medical Center ("Complainants").

Respondent is JM XTrade, Inc., Joseph Martinez ("Respondent") located in San Dimas, California, United States.

2. The Domain Names and Registrar

The domain names at issue are <lomalinda.org> and <lomalinda.net> (the "Domain Names"). The registrar is Name.com (the "Registrar").

3. Procedural History

On January 14, 2009, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email.

On January 14, 2009, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent`s name.

On January 16, 2009, the Center received hardcopy of the Complaint.

On January 23, 2009, the Center notified Complainant of a deficiency in the Complaint. On January 27, 2009, the Center received an Amended Complaint from Complainant via email.

On January 28, 2009 the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On January 30, 2009, the Center received the Amended Complaint in hardcopy.

The Center verified that the Amended Complaint satisfies the formal requirements of the 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").

On January 29, 2009, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with a copy of the Amended Complaint, with a copy (by email) to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On January 29, 2009, February 16, 2009 and February 18, 2009, the Center received a series of emails from Respondent which the Panel deems to be the Response of Respondent.

On February 18, 2009, the Center received a Supplemental Filing from Complainant. On February 23, 2009, the Center received a hardcopy of the Supplemental Filing.

On February 25, 2009, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Panel"), the Center notified the parties of the appointment of a single-member panel consisting of the Panel.

The Panel has decided not to consider the Supplemental Filing as part of this decision.

4. Factual Background

Complainants are close affiliates. Loma Linda University Adventist Health Sciences Center is the umbrella organization for numerous educational and medical organizations that have been founded by the Seventh-Day Adventists, including Loma Linda University and Loma Linda University Medical Center. Complainants are located in what is now known as Loma Linda, in the State of California, United States.

The city that is now called Loma Linda was first called Mound City. Complainants trace their origin to 1905 when the Southern California Conference of Seventh-Day Adventists opened the "Loma Linda Sanitarium". After 1908, the sanitarium included a post office in its main building, indicating "Loma Linda" as the postal address for the sanitarium`s community.

Loma Linda University began in 1906, originally called the Loma Linda College of Evangelists. The Loma Linda Sanitarium and the college were consolidated in 1910. The Seventh-Day Adventists also opened the Loma Linda Hospital in 1913.

In 1961, the college changed its name to Loma Linda University and by 1970 the Loma Linda sanitarium and hospital had been displaced by the Loma Linda University Medical Center.

The City of Loma Linda was incorporated in 1970, sixty-five (65) years after the predecessors of Complainants began using the name. In short, the city was named after Complainants.

The modern Loma Linda University Medical Center has been a renowned hospital since it opened in 1967. It is the only "Level One" region trauma center for several southern and eastern California counties – a region comprising twenty-six percent (26%) of California`s land area and approximately eleven percent (11%) of its population. It is also the only tertiary-care hospital in the same area.

The Loma Linda University Medical Center is also recognized as the international leader in infant heart transplantation and proton treatment for cancer. These specialties are bolstered by the Loma Linda University Medical Center`s affiliates, Loma Linda University Children`s Hospital and Loma Linda University Proton Treatment Center. Together, the Loma Linda University Medical Center`s hospitals admit more than 33,000 inpatients and serve about a quarter million outpatients each year. The Loma Linda University Medical Center also operates one of the largest United States clinical programs in the areas such as neonatal care.

The Loma Linda University Adventist Health Services Center has rights to two registered service marks: "Loma Linda University 1905 To Make Man Whole" and "Loma Linda University To Make Man Whole Center for Spiritual Life and Wholeness".

Complainants have continuously used the names of various predecessors to the Complainants since 1905, including the names of its schools and hospitals which contain the name "Loma Linda". Loma Linda University has been operating under that name since 1961 and Loma Linda University Medical Center has been operating under that name since 1967. Loma Linda University Children`s Hospital has been operating under that name since it was founded as an affiliate of Loma Linda University Medical Center in 1993. In Southern California and in the national medical and educational communities, these entities are commonly called "Loma Linda". Loma Linda is also now the name of a city in which Complainants are located. However, the name "Loma Linda" has for decades longer been used to refer specifically to the medical and educational institutions that were the source of the city`s growth. For example, when a Californian reports that a person has gone "down to Loma Linda", it is commonly understood that he or she has gone to the Loma Linda University Medial Center for medical treatment.

Complainants are also using the Internet to promote their educational and medical services. Loma Linda University Adventist Health Service Center is the owner of the domain name <lomalindhealth.org>. The domain names <lomalindahealth.org>, <lomalindahealth.net>, and <lomalindahealth.com> resolve to Loma Linda University Medical Center`s primary website, on which Loma Linda University Medical Center services are promoted. The name <lomalindahealth.org/childrens-hospital> resolves to Loma Linda University Children`s Hospital`s primary website.

An Internet user entering <lomalinda.org> or <lomalinda.net> finds webpages that display links to a changing selection of commercial websites and search engines, frequently including references to Complainants. Among those links are many advertisements for hospital- and education-related information under such headings as "Loma Linda Hospital", "prostate cancer", "medical school", "medical university", and "heart surgery". These links purport to provide access to medical advice, but simply display lists of links to third parties` commercial websites and search engines. The nature of the medical information presented on these sites varies, and there is a significant potential that non-accredited or otherwise questionable medical sites are included in these listings. The prominence given to headings for "prostate cancer" and "heart surgery" on the websites exploits Loma Linda University Medical Center`s renown as the United States` first hospital-based proton treatment center for cancer and was one of the world`s leading centers for infant heart transplantation. Moreover, "Loma Linda Hospital" was the name for one of Loma Linda University Medical Center`s predecessors and is still a common name that people in the regional community use to refer to Loma Linda University Medical Center.

Internet users reaching the websites at the Domain Names <lomalinda.org> or <lomalinda.net> may encounter pop-up advertisements featuring a variety of links to commercial websites or search engines, indicating that websites are designed to divert Internet traffic to increase the number of advertisements the owner is credited for displaying.

Complainants attempted to resolve this issue by sending correspondence to Respondent regarding the unauthorized registration and use of the Domain Names, but Respondent was unwilling to cease and desist.

5. Parties` Contentions

A. Complainant`s contentions

(i) Complainants contend that they have official and legal names using "Loma Linda" and enjoy trademark registrations and common law trademark rights using "Loma Linda" (the "LOMA LINDA Mark").

(ii) Complainants argue that the Domain Names are confusingly similar to the LOMA LINDA Mark, pursuant to paragraph 4(a)(i) of the Policy, because the Domain Names wholly incorporate the common law LOMA LINDA Mark with the addition of generic terms ".org" and ".net".

(iii) Complainants contend that Respondent has no rights or legitimate interests in the Domain Names, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Complainants assert that Respondent is in the business of selling domain name registrations. Respondent operates a website at <website-biz.net> offering to sell domain name registrations to the highest bidder. Respondent also operates a website at "www.medicalsupply.net" which advertises medical supplies as well as domain name registrations. According to Complainants this website indicates that Respondent also deals in Internet traffic related to the medical equipment business and may benefit commercially by diverting Internet traffic about medical inquiries away from Complainants` website by registering confusingly similar Internet domain names. Complainants conclude that such activities are not legitimate and are commercial in nature.

The heading over the browser window that displays one of Respondent`s webpages indicates "Domain Registration, Hosting and Satisfaction Guarantee Web Design @ Website-Biz.com". Moreover, pages within the websites display "http" addresses hosted by <searchportal.information.com>. Both of these factors indicate that the sites are hosted by a domain "parking" service and the purpose of the websites is to attract interest in purchasing the domain names or to seek profits by diverting Internet traffic to its links to maximize its "click-through" revenue.

Respondent does not have any connection with, trademark for, or other intellectual property in the Domain Names. Respondent is reported to be the registrant of more than one thousand domain names. Respondent has already been ordered to transfer domain names by previous WIPO panels.

Complainants contend that Respondent cannot demonstrate rights or legitimate interest in the Domain Names under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Complainants contend that Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(ii) because it is not commonly known under any variation of LOMA LINDA. Respondent has no connection or affiliation with Complainants and has not received any license or consent, express or implied, to use the LOMA LINDA Mark in a domain name or in any other manner.

Complainants contend that Respondent cannot demonstrate rights or legitimate interests in the Domain Names under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Names without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Complainants further contend that Respondent has deliberately registered Domain Names containing the LOMA LINDA Mark to attract the attention of Internet users searching for information on Complainants` medical and educational services. More specifically Complainants contend that because of their extraordinary scope of service, many people from a wide area seek information about the hospital, its doctors, and health care service through the Internet potentially in urgent circumstances. Because of these specialties, the Complainants` Internet sites attract many people searching for advice about the condition that they or their loved ones are experiencing.

(iv) Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of paragraph 4(a)(iii).

Complainants contend that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line locations, by creating a likelihood of confusion with the Complainants` LOMA LINDA Mark as to the source, sponsorship, affiliation, or endorsement of Respondent`s website and location of a product.

B. Respondent`s contentions

(i) Respondent disputes that Complainants can establish trademark rights in LOMA LINDA because it is the name of a city and geographical names are not a viable basis for asserting trademark rights.

(ii) Respondent does not contest that the Domain Names are identical or confusingly similar to the purported trademark.

(iii) Respondent asserts that it has rights to or legitimate interests in the Domain Names because it is conducting a legitimate public service supplying information relating to the city of Loma Linda.

(iv) Respondent denies that it registered or used the Domain Names in bad faith, because it is providing a public service.

6. Discussion and Findings

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."

Because both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes. 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 shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (WIPO April 10, 2001).

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

(i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

6.A. Identical or Confusingly Similar

Complainants contend that they have official and legal names using "Loma Linda" and enjoy trademark registrations and common law trademark rights using the LOMA LINDA Mark.

Respondent disputes that Complainants can establish trademark rights in LOMA LINDA because it is the name of a city and geographical names are not a viable basis for asserting trademark rights.

Depending on the goods and services offered, as a general rule geographic names may not be a proper basis for asserting trademark rights. However, the current situation is highly unusual. The city of Loma Linda was named after the long standing medical and educational institutions which are the predecessors and affiliates of Complainants. Therefore, the Panel finds that for purposes of this proceeding secondary meaning does exist and is a viable basis for asserting protectable common law rights in the LOMA LINDA Mark.

Complainants contend that the Domain Names are identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Complainants argue that the Domain Names are confusingly similar to the LOMA LINDA Mark, pursuant to paragraph 4(a)(i) of the Policy, because they wholly incorporate the common law LOMA LINDA Mark with the addition of generic terms ".org" and ".net".

Respondent does not contest that the Domain Names are identical or confusingly similar to the purported trademark.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant`s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH) and Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (WIPO May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not generally affect a finding that the domain name is identical or confusingly similar to the complainant`s registered trademark.

The Panel notes that the entirety of the LOMA LINDA Mark is included in the Domain Names.

Therefore, the Panel finds that the Domain Names are identical with or confusingly similar to the LOMA LINDA Mark pursuant to the Policy paragraph 4(a)(i).

6.B. Rights or Legitimate Interests

Complainants contend that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii) and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names. Complainants further contend that the Domain Names are "parked" and thus collecting "click-through" revenue. Under these circumstances, the activities of Respondent should be seen as commercial and are not a legitimate use of the Domain Names.

Respondent asserts that it has rights to or legitimate interests in the Domain Names because it is conducting a legitimate public service supplying information relating to the city of Loma Linda.

Paragraph 4(a)(ii) requires Complainants to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once Complainants establish a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainants to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (WIPO June 6, 2000).

The Panel finds that Respondent has no relationship with or permission from Complainants for the use of the LOMA LINDA Mark.

The Policy paragraph 4(c) allows three non-exclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or 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 misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Names. Although Respondent asserts that the Domain Names are being used to provide a public service, on balance, and given that the Respondent has not demonstrated any of the circumstances in paragraph 4(c), the Panel finds that the weight of the evidence supports the finding that Respondent`s registration and use of the Domain Names have been commercial in nature.

Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

6.C. Registered and Used in Bad Faith

Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four non-exclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant`s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product.

Complainants contend that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Complainants further contend that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and other on-line locations, by creating a likelihood of confusion with the Complainants` LOMA LINDA Mark as to the source, sponsorship, affiliation, or endorsement of Respondent`s website and location of a product.

Respondent denies that it registered or used the Domain Names in bad faith, because it is providing a public service.

The Panel has already found that the activities of Respondent appears to be commercial. In addition, the Panel finds that the actions of Respondent meet the criteria of paragraph 4(b)(iv) of the Policy and constitute bad faith.

Based upon this evidence, the Panel finds that Complainants have shown sufficient facts to support a finding that the Domain Names were registered and are being used in bad faith pursuant to the Policy paragraph 4(a)(iii).

6.D. Reverse Hijacking

Complainants have prevailed on their claim and, therefore, have not engaged in reverse hijacking, as was argued by the Respondent.

7. Decision

The Panel concludes (a) that the Domain Names <lomalinda.net> and <lomalinda.org> are confusingly similar to Complainants` common law rights in the LOMA LINDA Mark, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names be transferred to Loma Linda University Adventist Health Sciences Center.

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Richard W. Page
Sole Panelist

Dated: March 11, 2009