WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cardinal Health Inc. v. Whois Privacy Protection Service Inc / Comdot Internet Services Private Limited
Case No. D2008-0213
1. The Parties
The Complainant is Cardinal Health Inc., Dublin, Ohio, United States of America, represented by Bricker & Eckler LLP, United States of America.
The Respondent is Whois Privacy Protection Service Inc / Comdot Internet Services Private Limited, Andheri (West), Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <cardinalhealthcare.com> is registered with Lead Networks Domains Pvt. Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2008. On February 12, 2008, the Center transmitted by email to Lead Networks Domains Pvt. Ltd. a request for registrar verification in connection with the domain name at issue. On February 21, 2008, Lead Networks Domains Pvt. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 25, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 3, 2008. The Center verified that the Complaint together with the amendment to 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 March 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2008.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on April 9, 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, Cardinal Health is a renowned United States company in the health industry, which develops a wide range of medical and surgical products. The Complainant, through its subsidiary, Cardinal Health Technologies, LLC, owns a number of trademark registrations in the United States for the mark CARDINAL HEALTH as a word mark, design and a service mark, the oldest of which dates back to 1999. The trademark registrations cover a wide range of medical products and services, in various classes. Cardinal Health has also owned and operated under the domain name <cardinal.com> since 1993 and the domain name <cardinalhealth.com> since 1996.
The disputed domain name <cardinalhealthcare.com> was created on January 1st, 2005. In early August 2007, the Complainant became aware that the Respondent had registered the domain name <cardinalhealthcare.com> and used it in connection with a website to display medical themed photographs and provided links to sites offering supply chain services, anti-embolism products and artificial limbs.
On August 16, 2007, the Complainant sent the Respondent a letter advising the Respondent of the Complainant’s rights in the Cardinal Health Marks. The Respondent did not respond to the letter, however, the Respondent changed the content appearing on the “www.cardinalhealthcare.com” website to a click-through site.
5. Parties’ Contentions
The Complainant contends the following:
- The Complainant, since 1971 has become dominant in the area of healthcare supply chain services, and that the CARDINAL HEALTH Trademark has become and is associated solely and exclusively with Cardinal Health in the minds of consumers for health care products and services;
- Trademark registration certificates serve as prima facie evidence of the validity of the registered trademarks, the Complainant’s ownership of the registered trademarks, the Complainant’s exclusive right to use the registered trademarks in connection with the goods and services specified in the certificates of registration, as well as constructive notice of the Complainant’s claim of ownership under United States law;
- The Respondent had registered the disputed domain name <cardinalhealthcare.com> in an effort to capitalize on the recognition of the Cardinal Health Marks by those seeking information on the products and services provided by the Complainant, through using the disputed domain name in connection with a website, which initially displayed medical-themed photographs, and provided links to sites offering supply chain services, anti-embolism products and artificial limbs;
- In spite of notifying the Respondent that it is infringing on the Trademark Rights of the Complainant, the Respondent continued to use the domain name, but in connection with a more generic click—through website, which nevertheless lured consumers to sponsored links, many of which redirect browsers to competing sites, and as such the Respondent continued to use the disputed domain name in flagrant disregard of the Complainant’s objections, and with full knowledge of the Complainant’s superior rights in the Cardinal Health Marks;
- Trafficking in domains names that contain the trademarks of others is grounds for finding of bad faith registration and use;
- The Respondent’s use of the <cardinalhealthcare.com> domain name containing the Cardinal Health Mark merely to capture customers of Cardinal Health who are seeking information on Cardinal Health products and services is neither a legitimate, nor good faith, use of this domain name. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant’s mark is evidence of bad faith registration under the Policy;
- The Respondent has no legitimate interest in the disputed domain name <cardinalhealthcare.com> as the Respondent is not a licensee of, or otherwise currently affiliated with the Complainant. Also, the Respondent’s name does not include the word “Cardinal”;
- The Respondent is capitalizing on the CARDINAL HEALTH trademarks by registering a domain name that incorporates, in its entirety, the Complainant’s name “cardinal health” and then profiting from the resulting confused misdirected traffic;
- The Respondent has no rights or legitimate interests in respect to its use of the disputed domain name <cardinalhealthcare.com> as the Respondent’s use of the disputed domain to direct traffic to competitive products is not a legitimate use. Moreover, the Respondent clearly has no intention of making any legitimate use of the disputed domain name and refused to turn the domain over to the Complainant. Therefore, the Respondent is knowingly and flagrantly engaged in a transparent attempt to trade off of the Complainant’s Marks;
- The Respondent is not using the disputed domain name <cardinalhealthcare.com> in connection with a bona fide offering of goods or services. The Respondent's name does not include the words Cardinal or Cardinal Health. All of the content currently on the infringing website is misleading and confusing to consumers. Therefore, the disputed domain name was registered and is being used in bad faith, with a clear intent to profit from the confusion; and
- The Respondent registered the domain name <cardinalhealthcare.com> long after the Complainant’s Marks had become famous and long after the Respondent knew of the Complainant’s superior and prior rights. Moreover, the Respondent tailored the content on its original website to relate to the Complainant’s business and then changed the website content upon receipt of the Complainant’s demand letter, all the while continuing to direct browsers to competitors of the Complainant’s demonstrates the Respondent’s awareness of, and disregard for, Cardinal Health’s prior rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights; the disputed domain name <cardinalhealthcare.com> fully incorporates the trademark CARDINAL HEALTH, in respect of which the Complainant holds various trademark and service mark registrations, whether as a logo or word mark.
The Panel is convinced that the full incorporation of the trademark in the domain name is sufficient to make a finding of confusion between the trademark and the domain name, and that the addition of the generic term “care” is not sufficient to eliminate confusing similarity with the Complainant’s registered trademarks. Moreover, the added word in this particular case “care” adds emphasis on the nature of the products and services that the Complainant’s trade and service marks are being used in connection with.
Various WIPO Panel decisions have held that the addition of the generic terms to the domain name in dispute has little, if any, effect on a determination of whether the disputed domain name is identical or confusingly similar to a trademark. These include the decisions in Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 and Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
The fact that the trademarks in this case are registered in the name of the subsidiary of the Complainant does not affect the ownership rights of the Complainant in the respective trademarks; previous WIPO panels have found that in appropriate circumstances a related company such as a subsidiary or parent to the registered holder of a mark may be considered to have rights in a trademark under the UDRP. Such view was upheld by the panel in Telcel, C.A. v. jerm and Jhontattan Ramirez, WIPO Case No. D2002-0309, and the panel in Toyota Motor Sales U.S.A, Inc. v. J. Alexis Productions, WIPO Case No. D2003-0624, and Grupo Televisa, S.A., Televisa, S. A.de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796.
Consequently, the Panel finds for the Complainant on the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent does not have rights in the disputed domain name <cardinalhealthcare.com>, as the domain name is not part of the Respondent’s name, and the Respondent is not affiliated with the Complainant, nor does it have a license from the Complainant.
Considering that the Complainant holds various trademark and service mark registrations in the words “cardinal health”, in addition to using the same marks as a domain name to establish presence on the World Wide Web, the Panel accepts that the Complainant has developed considerable reputation in the CARDINAL HEALTH trademarks. The Respondent is using the disputed domain name to provide a click through service to websites that appear to compete directly with the Complainant’s website, and it had initially used it to display content clearly similar to that of the Complainant’s in a very confusing manner. The panel in Adobe Systems Incorporated. v. Domain OZ, WIPO Case No. D2000-0057 stated that mere use of the disputed domain names to attract customers, for commercial gain, to a respondent’s website by creating consumer confusion with a complainant’s trademarks would not, if such use were demonstrated, establish rights or legitimate interests in the domain names on the part of a respondent. Furthermore, it has been held by several WIPO panels that use of a domain name to provide click-through sponsored links to another website does not of itself grant the registrant rights or legitimate interests in the domain name. Such decisions include MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550, and Royal Bank of Canada v. Henry Chan WIPO Case No. D2003-0031 and The Knot, Inc. v. Ali Aziz, WIPO Case No. D2007-1006.
Given that the Respondent has failed to respond to the Complainant’s contentions, he has not provided the Panel with any evidence of a demonstrable preparation to use the disputed domain name for a bona fide offering of goods or services. The Respondent is apparently not commonly known by the disputed domain name and, as already noted, the Respondent is not making a legitimate non-commercial use of <cardinalhealthcare.com>.
Based on this analysis the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a list of indicative circumstances that suggest bad faith registration, however such list is not exhaustive and a finding of registration in bad faith depends on the circumstances of the case.
In this case, the Panel is of the view that, on a balance of probabilities, the Respondent was and is aware of the good will and fame of the service mark CARDINAL HEALTH, particularly in light of the fact that the domain name was registered a while after the date of the earlier registrations of the trademark in the name of the Complainant. Not only that, the Respondent was notified in writing by the Complainant that his use of the disputed domain name constitutes an infringement on the Complainant’s rights in the trademark CARDINAL HEALTH.
Various WIPO panels have found that the registration of a domain name, which incorporates a widely known trademark may (particularly in the absence of any explanation) constitute evidence of bad faith, such decisions include Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440.
Moreover, it is clear that the Respondent is using the domain name to create confusion with the Complainant’s association with the sponsored links, and most likely for financial gain, through receiving fees for the clicks it receives on its website, which direct browsers to websites of competitors to the Complainant; Some WIPO panels labeled such actions as “opportunistic bad faith”, such as the panel of Research in Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492.
In this case, the Complainant has demonstrated that its Mark CARDINAL HEALTH is a widely known mark, and in view of the above, the Panel finds for the Complainant on the third element of the Policy, particularly in light of the fact that the Respondent was put on notice that he is infringing on the rights of the Complainant, and yet continued to use the disputed domain name in this manner.
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, <cardinalhealthcare.com> be transferred to the Complainant.
Nasser A. Khasawneh
Dated: April 23, 2008