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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Emory University, Emory Healthcare, Inc. v. Abadaba S.A.

Case No. D2009-1241

1. The Parties

Complainants are Emory University and Emory Healthcare, Inc. of Atlanta, Georgia, United States of America, represented by Ballard Spahr, LLP, United States of America.

Respondent is Abadaba S.A. of Panama, Panama.

2. The Domain Name and Registrar

The disputed domain name <emoryhealth.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 18, 2009. On September 18, 2009, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On September 21, 2009, Fabulous.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on September 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent`s default on October 16, 2009.

The Center appointed Ross Carson as the sole panelist in this matter on October 21, 2009. 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

Complainant Emory University is a non-profit corporation existing under the laws of the state of Georgia, United States. Complainant Emory Healthcare, Inc. is a non-profit corporation existing under the laws of the state of Georgia, United States. Complainant Emory Healthcare, Inc. is the corporate organization responsible for Complainant Emory University`s clinical enterprises, including its hospitals and its faculty clinical practice plan. Complainant Emory Healthcare, Inc. is subject to the control of Complainant Emory University by virtue of, inter alia, the powers and authority of Complainant Emory University`s Vice President for Health Affairs who is also the Chairman of the Board of Directors of Complainant Emory Healthcare, Inc. Hereinafter, Complainant shall be used to refer to Emory University and Emory Healthcare, Inc. unless identified otherwise for reasons of date.

EMORY has been used continuously as a trademark in connection with educational services since 1836 when Emory College, Complainant Emory University`s predecessor, was founded. Complainant Emory University, created in 1915, is currently recognized in the United States and internationally for its liberal arts college and professional schools. Complainant Emory University is annually ranked as one of the top 25 universities in the United States (currently #17) according to the U.S. News & World Report annual report.

Since as early as 1915, the EMORY name and trademark has been used to identify healthcare services provided by Complainant. Since then, Complainant has grown to become the largest, most comprehensive healthcare system in Georgia and one of the most prominent healthcare systems in the United States. Complainant`s Emory Hospital has consistently been ranked among the "Best Hospitals in the United States" by U.S. News & World Report. The publication has recognized Emory Hospital for many years prior to July 24, 2004 when Respondent registered the disputed domain name. In 2009, the U.S. News & World Report annual survey again ranked Emory Hospital among the best in the United States of America.

Complainant is the registered owner of numerous trademark registrations registered on the Principal Register in the United States, for or including "Emory" as the distinctive element, registered in relation to goods and services associated with education and health services. The registered trademarks include EMORY, US reg. no. 2,382,245, registered September 5, 2000, showing an earliest date of first use of 1836; EMORYCARE, US reg. no. 1,822,089, registered Feburary 15, 1994, showing an earliest date of use of September 28, 1992; EMORY COLLEGE, reg. no. 2,340,112, registered April 11, 2000, showing an earliest date of first use of 1836; EMORY UNIVERSITY, US reg. no. 2,340,117, registered April 11, 2000, showing a date of first use of January 25, 1915; EMORY EYE CENTER and design, US reg. no. 2,047,408, registered March 25, 1997, showing an earliest date of use of March 27, 1995; EMORY HEALTHCARE, US reg. no. 2,222,078, registered February 2, 1999, showing an earliest date of use of April 3, 1997; EMORY HEALTHCARE and design, US reg. no. 2,225,907, registered February 23, 1999, showing an earliest date of use of April 3, 1997; and EMORY HEALTHCARE, US reg. no. 2,520,403, registered December 18, 2001, showing an earliest date of use of August 7, 2001. Each of the above registered trademarks were registered and appeared on the Principal Register in the United States prior to the date of registration of the disputed domain name on July 24, 2004.

Complainant registered its primary domain name <emory.edu> on June 2, 1986. Since then Complainant has continuously updated and advertised its well-known educational and/or medical care services on the website. Complainant registered the domain name <emoryhealthcare.com> on January 12, 1999. Since then, Complainant has continuously published healthcare information through a resulting website. The present domain name at one time re-directed to the website found at <emoryhealthcare.org>. Complainant registered the domain name <emoryhealthcare.org> on February 1, 2000. Since then, Complainant has continuously published healthcare information through a resulting website.

Respondent registered the disputed domain name with Fabulous.com Pty Ltd. on July 24, 2004. The disputed domain name directs users to a parked page website that offers links to services similar in kind to the services offered by Complainant. Complainant offers some online distance learning services, as part of certain degree programs, under the EMORY trademark. Respondent`s website offers links to "Online Business Education" links. The links at one time led to advertisements for universities such as Phoenix University <phoenix.edu>, Mountain State University <mountainstate.edu> and the University of Notre Dame <notredameonline.com>. The website associated with the disputed domain name also included links to institutions that offered healthcare services. For example, one of the provided links previously led users to the website for the University of Iowa Health Care <uihealthcare.com>.

5. Parties` Contentions

A. Complainant

A.1 Identical or Confusingly Similar

Complainant states that as found in section 4 above it is the owner of many trademark registrations in the United States for or including the trademarks EMORY and EMORY HEALTHCARE registered in relation to goods and services relating to education and health services. The trademarks have been widely used in Georgia and referred to in publications and online in other states to attract educators, healthcare workers and students and are well-known in relation to the goods and services for which they are registered and used.

Complainant submits that the disputed domain name is confusingly similar to Complainant`s trademarks for or including EMORY because they incorporate the entirety of Complainant`s EMORY trademarks. In addition, the disputed domain name incorporates Complainant`s EMORY HEALTHCARE trademarks with the exception of the term "care".

Complainant further submits that the disputed domain name adds only a non-distinctive term "health" to Complainant`s EMORY trademarks. The addition of a non-distinctive, descriptive or generic term "health" does not change the overall impression of the mark or avoid confusion. See Sanofi-aventis v. Mircea Taralunga, WIPO Case No. D2008-0460.

A.2 No Rights or Legitimate Interests in respect of the Domain Name

Complainant submits that Respondent is not affiliated with Complainant, is not a licensee of Complainant and is not authorized by Complainant to use any of Complainant`s trademarks as a domain name or otherwise.

Complainant further states that Respondent has never used or made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Complainant submits that Respondent is not and has never been commonly known by the disputed domain name.

Complainant further submits that Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. To the contrary Respondent is making a commercial use of the disputed domain name with intent for commercial gain by misleading consumers looking for Complainant`s own website.

Complainant states that it is well-established that where a complainant contends that respondent has no rights or legitimate interests in a disputed domain name, the burden of proof shifts to respondent to come forward with proof to the contrary. Absent a showing to the contrary by Respondent, Complainant has established that Respondent has no legitimate interests in the disputed domain name.

A.3 Registration in Bad Faith

Complainant states that Respondent registered the disputed domain name on July 24, 2004, long after Complainant`s earliest use and registration of its EMORY and EMORY HEALTHCARE trademarks.

Complainant further states that Respondent in all probability had actual knowledge of Complainant`s rights in the EMORY and EMORY HEALTHCARE trademarks. Not only were Complainant`s marks registered but were well-known worldwide, including in Panama. Respondent was more likely than not to have been aware of Complainant`s trademarks, domain names and active websites because Respondent likely encountered each when it registered the disputed domain name. Complainant contends that the present case is analogous to DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653, where the panel found that "[r]espondent very likely knew of the [c]omplainant`s trademark and reputation in the relevant industry" where "no plausible explanation whatsoever for the [r]espondent`s choice of domain name and manner in which the website ... was presented" and AirTran Holdings Inc. v. Private Pers, Andrew Cappone, WIPO Case No. D2008-1153 where in the absence of contrary evidence and explanation, registration of complainant`s widely used mark supports an inference of bad faith.

Complainant further submits that the inference of bad faith registration is strengthened by Respondent`s failure to respond to Complainant`s cease and desist letter which apprised Respondent of Complainant`s rights and requested that the website be deactivated. Respondent`s failure to respond with any explanation supports an inference of both bad faith registration and use, citing Sterling Jewelers Inc. v. Sterling Jewelers, Inc. and Domain Traffic, WIPO Case No. D2002-0772 and TPI Holdings, Inc. v. Elaine Noe, WIPO Case No. D2009-0568.

A.4 Use in Bad Faith

Complainant submits that it is apparent the disputed domain name was deliberately used for commercial gain to attract Internet users to Respondent`s website based on a likelihood of confusion with Complainant`s EMORY and EMORY HEALTHCARE trademarks, which satisfies the requirement of paragraph 4(b)(iv) of the Policy. Respondent`s website previously included links to entities providing services related in kind to services offered by Complainant. As of July 8, 2009, the disputed domain name resolved to a parked site that provided links to a number of topics including "health insurance" which in turn ultimately provided links to health services offered by the University of Iowa. As of September 2009, the disputed domain name resolved to a parked website that provided a link to "Online Business Education" which in turn provided links to several "distance learning" or online educational services providers, i.e., Phoenix University and Mountain State University. The services offered by these providers are similar to the online education services provided by Complainant, and are in the same field as a number of degree programs offered by Complainant.

Complainant states that linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use, citing Brink`s Network, Inc. v. Jenny Ho, brinksplacetv.com, WIPO Case No. D2009-0530 ("Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant`s competitors, a holding of bad faith use will typically follow"); Credit Industriel et Commercial S.A. v. Christopher Hunt, WIPO Case No. D2008-0892 ("Panels have held that the use of a domain name to resolve to a parking site that contains links to competitors of the complainant is in and of itself an indicia of bad faith. ACCOR v. Steve Kerry / North West Enterprise, Inc., WIPO Case No. D2006-0649").

Complainant states that a reverse WhoIs report reveals that Respondent is listed as registrant for more than 2,400 domain names, some of which include other well-known marks in the domain name, e.g., <superbowluniform.com>, <macysjobs.org>, <sonyrecords.com>, <playstation2cheatscodes.com>, <pepsicola.org>, <toshiba-usa.com>, <dartmouthcollege.org>, <georgiastateuniversity.org>, <playboy-photos.com>, <disney-games.com>, and <wicopedia.com>.

Complainant further submits that Respondent was extracting financial gain via click-through revenue. Complainant argues that "professional domainers" that register large number of domain names "for the purposes of sale or pay-per-click advertising … must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others." Yara International ASA v. undefined, Domain Admin, Mrs. Jello LLC, WIPO Case No. DTV2008-0015. Respondent has failed to make any efforts to avoid registering domain names that incorporate marks of others and the totality of all the circumstances of Respondent`s behavior equates to bad faith.

Complainant states that Respondent registered the disputed domain name in order to prevent Complainant from reflecting its marks in a corresponding domain name and is involved in a pattern of such conduct constituting evidence of registration and use in bad faith as set forth in paragraph 4(b)(ii) of the Policy. In addition to the disputed domain name at issue in this case, Respondent has registered the domain name <1800flowers.org> which was nearly identical to the registered trademark owned by 1-800-Flowers.com, Inc. 1-800-Flowers.com, Inc. commenced a UDRP action against Respondent, and the panel transferred the domain name to complainant (see 1-800-Flowers.com, Inc. v. Domain Admin, Abadaba S.A., WIPO Case No. D2009-0325).

B. Respondent

Respondent did not reply to Complainant`s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant`s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, Complainant must establish rights in a trademark and secondly that the disputed domain name is identical to or confusingly similar to the trademark in which Complainant has rights.

Complainant has established that it is the owner of registered trademarks for and including EMORY registered on the Principal Register in the United States in relation to the goods and services described in section 4 above. Complainant is also the owner of United States Trademark Registrations for the trademark EMORY HEALTHCARE registered on the Pricipal Register in the United States in relation to the goods and services in the healthcare field. Complainant`s registered trademarks were in use and registered many years prior to the date of registration of the disputed domain name on July 24, 2004.

The disputed domain name <emoryhealth.com> incorporates the entirety of Complainant`s trademarks in EMORY. In addition, the disputed domain name incorporates Complainant`s EMORY HEALTHCARE trademarks with the exception of the term "care". Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety. See eBay, Inc vs. Progressive Life Awareness Network, WIPO Case No. D2001-0068 (finding that the domain name <gayebay.com> incorporated the complainant`s mark in its entirety and holding it to be confusingly similar to complainant`s EBAY mark); Auxilium Pharmaceuticals, Inc. v. Kumar Patel, NAF Claim No. 642141 (finding <auxilium-pharmaceuticals.com> confusingly similar to complainant`s AUXILIUM name and mark)

The disputed domain name, <emoryhealth.com>, deletes the term "care" from Complainant`s EMORY HEALTHCARE trademark. The deletion of the term "care" does not change the overall impression of the domain name or avoid confusing similarity with Complainant`s EMORY HEALTHCARE trademark.

The inclusion of the top level domain descriptor ".com" in the disputed domain name does not affect a finding of confusing similarity. WIPO Administrative Panels have repeatedly held that the specific top level of the domain name such as ".org", ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Complainant has proven that the disputed domain name is confusingly similar to Complainant`s trademarks EMORY and EMORY HEALTHCARE.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant`s registered trademark or any trademarks confusingly similar thereto.

The disputed domain name as of September 11, 2009 directed users to a parked page website that offers links to services similar in kind to the services offered by Complainant. For example, Respondent`s website offers links to "Online Business Education" links. The links led at that time to advertisements for universities such as Phoenix University <phoenix.edu>, Mountain State University <mountainstate.edu> and the University of Notre Dame <notredameonline.com>. Emory University offers some online distance learning services as part of certain degree programs under the EMORY trademark. The website associated with the disputed domain name as of July 8, 2009 included links to institutions that offered healthcare services. For example one of the provided links previously led users to the website for University of Iowa Health Care <uihealthcare.com>. Providing links to websites of competitors of Complainant is not a bona fide use of the disputed domain name.

It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a disputed domain name. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the disputed domain name pursuant to paragraph 4(c) of the Policy. Previous decisions under the UDRP have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once this showing is made, the burden of proof shifts to respondent to demonstrate its rights or legitimate interests in the disputed domain name. Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.

The Panel finds that Complainant has proven on a balance of probabilities that

Respondent does not have any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must prove that the disputed domain name has been registered and used in bad faith.

C.1. Registered in Bad Faith

Complainant has established that it is the owner of registered trademarks for and including EMORY registered on the Principal Register in the United States in relation to the goods and services described in section 4 above. Complainant is also the owner of United States Trademark Registrations for the trademark EMORY HEALTHCARE registered in relation to various health services. EMORY has been continuously used as a trademark in connection with educational services in the United States since 1836 when Emory College was founded. Emory University is annually ranked as one of the top 25 universities in the United States. Complainant`s registered trademarks were registered many years prior to the date of registration of the disputed domain name on July 24, 2004.

The disputed domain name incorporates the entirety of Complainant`s EMORY trademark as its distinctive element. In addition, the disputed domain name <emoryhealth.com> incorporates the entirety of Complainant`s EMORY HEALTHCARE trademark minus the term "health". Complainant has established that as a result of extensive use of its trademarks in association with the services with which they have been used since 1836, its trademarks were well-known in the United States prior to registration of the disputed domain name in 2004. The disputed domain name was confusingly similar to Complainant`s trademarks when registered for the reasons expressed above.

The non-distinctive term "health" used as part of the disputed domain name <emoryhealth.com> suggests some connection with the health services field in which Complainant has been involved in association with its trademark EMORY.

Respondent has registered numerous other domain names incorporating the trademarks of third parties, including, but not limited to, <superbowluniform.com>, <macysjobs.com> and <pepsicola.org>.

It is difficult to conceive how Respondent could have created the disputed domain name including the name of Emory University in conjunction with the term "health" without prior knowledge of Complainant`s registered trademarks for and including EMORY and EMORY HEALTHCARE and the healthcare services which Complainant advertised and offered to the public in association with its trademarks since 1836. The websites associated with the disputed domain name incorporate links to healthcare services. Respondent was invited to file a Response. Respondent`s failure to explain any reason for choosing the disputed domain name strengthens the Panel`s inference that Respondent registered the disputed domain name with knowledge of Complainant`s trademarks and healthcare services which were well-known in the United States at the date of registration of the disputed domain name on July 24, 2004.

The Panel finds that Respondent registered the disputed domain name in bad faith.

C.2. Domain Name Used in Bad Faith

Paragraph 4(b) of the Policy provides that using a domain name to intentionally attempt to attract Internet users to your website for commercial gain by creating a likelihood of confusion with a complainant`s mark as to the source, sponsorship, affiliation, or endorsement of a respondent`s website constitutes evidence of bad faith use of a domain name.

The advertising pages currently and previously linked to by the disputed domain name include links to entities providing services related to the kind of services offered by Complainant without any information relating to Respondent, its purpose, business, or proposed business, if any. Respondent`s use of the disputed domain name which is confusingly similar to Complainant`s registered and well-known trademarks for or including EMORY as the distinctive element enables Respondent to draw Internet users to the website for profit by misleading Internet users associating the disputed domain name with Complainant. The Panel infers that Respondent is receiving click through profits as the pages associated with the disputed domain name make no reference to Respondent, its purpose, business or proposed business. Linking to websites of institutions that are active in the same field as Complainant is evidence of bad faith use. Brink`s Network, Inc. v. Jenny Ho, brinksplacetv.com, WIPO Case No. D2009-0530 ("Where, as here, the disputed domain name is used to link, inter alia, to websites of the [c]omplainant`s competitors, a holding of bad faith use will typically follow").

Respondent has registered numerous other domain names incorporating the trademarks of third parties, including, but not limited to, <superbowluniform.com>, <macysjobs.org>, <sonyrecords.com>, <playstation2cheatscodes.com>, <pepsicola.org>, <toshiba-usa.com>, <dartmouthcollege.org>, <georgiastateuniversity.org>, <playboy-photos.com>, <disney-games.com>, and <wicopedia.com>. These registrations show Respondent has engaged in a bad faith pattern of conduct, satisfying paragraph 4(b)(ii) of the Policy. See Inter-IKEA Systems B.V. v. Technology Education Center, WIPO Case No. D2000-0522 (finding Respondent`s registrations of domain names containing trademarks owned by third parties was prima facie evidence of engaging in a pattern of conduct to prevent trademark owners from reflecting their marks in a corresponding domain name); Army and Air Force Exchange Service (AAFES) v. Modern Empire Internet Ltd., WIPO Case No. D2006-0510 (registration by respondent of domain names incorporating trademarks of other parties constitutes an engagement in a pattern of such conduct).

In addition to the disputed domain name at issue in this case, Respondent has registered the domain name <1800flowers.org> which was nearly identical to the registered trademark owned by 1-800-Flowers.com, Inc. 1-800-Flowers.com, Inc. commenced a UDRP action against Respondent, and the panel transferred the domain name to complainant. See 1-800-Flowers.com, Inc. v. Domain Admin, Abadaba S.A., WIPO Case No. D2009-0325; see also Forest Laboratories Inc. v. Abadaba S.A., WIPO Case No. D2008-0413 and MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325.

The Panel finds that Complainant has proven on a balance of probabilities that Respondent has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(ii) and paragraph 4(b)(iv) of the Policy, and that Complaint satisfies the requirement under paragraph 4(a)(iii) of the Policy.

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 <emoryhealth.com> be transferred to Complainant.


Ross Carson
Sole Panelist

Dated: November 3, 2009

 

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