Complainant is Legacy Health System, of Portland, Oregon, United States of America, represented by Davis Wright Tremaine LLP, United States of America.
Respondent is Texas International Property Associates, of Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, Dallas, Texas, United States of America.
The disputed domain names <legacyemanuelhospital.com>, <legacysalmoncreek.com>, and <legacysalmoncreekshospital.com> are registered with Compana LLC d/b/a Budgetnames.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2008. On November 10, 2008, the Center transmitted by email to Compana LLC d/b/a Budgetnames.com, a request for registrar verification in connection with the disputed domain names. On November 11, 2008, Compana LLC d/b/a Budgetnames.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and provided 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 November 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2008. The Response was simultaneously emailed to the Center and the Complainant, and is time-stamped at four minutes after midnight, December 10, 2008. For purposes of this decision, the Response shall be considered timely filed.
The Center appointed Perry Viscounty as the sole panelist in this matter on December 29, 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.
Complainant, Legacy Health System (“Legacy”), is a system of health care facilities formed in 1989 that currently operates six hospitals in Portland, Oregon and Vancouver, Washington. Complainant's hospitals employ over 9,000 health care workers and its network is considered one of the largest and most well-known hospital systems in Oregon.
Complainant owns registrations on the following service marks (the “Legacy Marks”):
1. LEGACY HEALTH SYSTEM. Typed Drawing. Health Care Services. United States of America (“U.S.”) Trademark Reg. No. 1574033. Filed: April 25, 1989;
2. LEGACY. Design (Greek cross, squares/rectangles that are completely or partially shaded). Health Care Services. U.S. Trademark Reg. No. 1574034. Filed: April 25, 1989;
3 LEGACY. Typed Drawing. Health Care Services. U.S. Trademark Reg. No. 1847147. Filed: September 27, 1993; and
4. EMANUEL. Typed Drawing. Health Care Services. U.S. Trademark Reg. No. 2148452: November 15, 1993.
Complainant has maintained the domain name <legacyhealth.org> since December, 1996 and has used the site to provide, inter alia, information about its services, hospital locations, directions, hours of operation and contact information for personnel.
Two hospitals run by the Complainant are of particular concern in this action: (1) Legacy Emmanuel Hospital (operated through Legacy since 1989) and (2) Legacy Salmon Creek Hospital (opened by Legacy in August 2005).
Respondent, Texas International Property Associates, registered the disputed domain names: <legacyemanuelhospital.com> (on April 22, 2005), <legacysalmoncreek.com> (on February 4, 2005) and <legacysalmoncreekshospital.com> (on June 07, 2006) with Compana LLC d/b/a budgetnames.com.
From February 19, through April 15, 2008, Complainant sent a series of cease and desist notices to Respondent and demanded that Respondent remove all content from their websites and transfer ownership of the disputed sites to Legacy. On several occasions, Respondent e-mailed Complainant in response to the demands stating their intent to acquiesce to demands and assign their rights in the disputed domain names to Legacy. Complainant continued to contact Respondent requesting the authorization codes required to effectuate the domain name transfer, but Respondent never provided the required codes. Correspondence between the parties continued until November 7, 2008 when Complainant filed the pending action.
Complainant maintains that the disputed domain names are identical or confusingly similar to its registered Legacy Marks, that Respondent lacks rights or legitimate interests in the disputed domain names, and is using the disputed domain names in bad faith. Complainant seeks the transfer of the disputed domain names.
Respondent asserts the delay in transferring the authorization codes was “administrative in nature.” Respondent “agrees to the relief requested by Complainant and will, upon order of the Panel, do so.” Respondent maintains that “[t]his is not an admission of the three elements of paragraph 4(a) of the Policy but rather an offer of ‘unilateral consent to transfer.'” Respondent also argues that “[j]udicial economy dictates the panel should simply proceed to its decision [with no analysis].” The Respondent further requests that “[i]f the Panel decides that analysis is required… that the Respondent be given the opportunity to prepare a more formal response.”
Although each case is to be judged on its own merits, the Panel notes that Respondent is no stranger to unfavorable UDRP decisions. A search of UDRP precedent reveals over 80 cases in 2007 and 2008 where Texas International Property Associates was the Respondent, that collectively resulted in a transfer of more than 150 disputed domain names to the complainants. Earlier cases have noted this trend, and condemned Respondent for numerous bad faith registrations. See, e.g., United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0987 (collecting authority).
A detailed review of relevant UDRP panel decisions involving Respondent reveals a pattern of practice generally involving:
(1) registering domain names that are confusingly similar to another's legitimate intellectual property;
(2) responding to the legitimate intellectual property owner's inquiries by setting dates for which it will respond that never actually arrive or in the alternative, agreeing to domain name transfers that never occur;
(3) frustrating the legitimate intellectual property owner to the point of filing a UDRP action to force a domain name transfer; and
(4) responding to UDRP complaints, reiterating consent to a transfer admitting no fault and requesting that “in the interest of judicial economy” that no paragraph 4(a) of the Policy analysis be conducted by the panel under the rules.
Other panels have found that Respondent “provided false contact information to the registrar” and were “engaging in intentional delaying tactics.” President and Fellows of Harvard College v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0597. Respondent was similarly found to have delayed domain name transfers in order to “generate another month or two of revenues.” Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211. Indeed, the panel in President and Fellows of Harvard College v. Texas International Property Associates, supra suggested that all future parties filing a claim against Respondent be provided with a copy of its decision to “avoid needless time wasting as a result of seemingly disingenuous ‘settlement' offers.”
Respondent's Request Not to Conduct 4(a) Analysis Under the Policy
In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the panel outlined three possible courses of action when the Respondent unilaterally consents to a transfer:
(i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (See Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195);
(ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and
(iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
As other panels have noted the first course of action may be appropriate where the facts of the case are unusually complex or where it is clear both parties consent to a transfer with no further analysis. Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190. Since these facts are not present, this action is not appropriate.
Similarly the second option, of declaring the paragraph 4(a) elements under the Policy deemed to have been met, is inappropriate here, where the respondent explicitly denies that it violated such Policy elements. Sassybax, L.L.C. v. Texas International Property Associates, supra.
To determine whether the third course of action is appropriate, prior panels have inquired whether “(i) the Respondent's consent was authentic and obviously expressed its true will and intention indicating expressly and unconditionally that the domain name should be transferred, (ii) the Respondent is without doubt the true registrant, and (iii) there are no other circumstances which may give rise to a reasonable doubt as to the true intention of any of the parties involved.” Société Française du Radiotéléphone-SFR v. Karen, supra. If the answer to all of these questions is “yes,” then full analysis may not be appropriate, however, here this is not the case. The Panel finds it entirely suspect that a party that wants others to believe it has some legitimate concern for the judicial economy would engage in such a clockwork pattern of needless delay tactics in the countless actions where they are the Respondent. If Respondent's consent were genuine, the transfer would have been effectuated months ago when the Respondent first agreed to transfer the disputed domain names. But this never occurred due to unexplained “administrative” delay. As such, the Panel is skeptical that Respondent's consent was authentic.
Therefore, the Panel will conduct a full analysis under paragraph 4(a) of the Policy.
Paragraph 5(b)(i) of the Rules states the response shall “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set fourth in the Provider's Supplemental Rules).”
The Respondent chose not to specifically address the statements and allegations contained in the Complaint. Respondent was provided the same amount of time that all respondents receive to respond to a UDRP complaint. Accordingly, Respondent has not demonstrated an exceptional case for a time extension under paragraph 10(c) of the Rules. Indeed, granting an extension for Respondent to supplement their reply would cause additional delay and the Panel recognizes that delay has likely been Respondent's intention all along.
As a result, no time extension will be granted to Respondent.
The elements of paragraph 4(a) under the Policy are now considered in turn:
Complainant has demonstrated trademark rights in the marks LEGACY and EMANUEL as applied to health care. The Complainant registered its marks with the USPTO, established a reputation using the marks, and built up substantial goodwill by applying these marks in commerce, branding, and promoting its health services and hospitals. The disputed domain name <legacyemanuelhospital.com> is a clear reference to Complainant's hospital and combines both of Complainant's registered marks in an identical manner.
Although Complainant does not have a registration for “Salmon Creek,” the term refers to a geographic location. A domain name such as <legacysalmoncreek.com> “created by appending a geographic term to another's trademark or service mark does not change the domain name from being confusing[ly] similar to the trademark.” Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601. Additionally, use of this particular geographic term is a direct reference to Complainant's Salmon Creek Hospital and likely serves to even further confuse consumers when used in conjunction with the protected LEGACY mark.
Further, the addition of an “s” onto the word “creek” by Respondent in <legacysalmoncreekshospital.com> does nothing to distinguish the disputed domain name from being confusingly similar to the Complainant's mark. See, e.g., Accolo, Inc. v. Research Inc., WIPO Case No. D2008-0057 (“The addition of an extra letter “l” does not sufficiently distinguish the disputed domain name from the Complainant's mark for the purposes of Policy paragraph 4(a)(i)”).
The Panel finds the disputed domain names confusingly similar to Complainant's marks.
The domain names, which are substantially identical to Complainant's hospital names and registered marks, have no obvious association, as it appears from the record, of any kind with Respondent and Respondent does not suggest otherwise. Additionally, Complainant has asserted that it has never granted Respondent a license or any other rights in its marks. Complainant has met its burden of making out a prima facie case which Respondent has not successfully rebutted.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(b)(iv) of the Policy states that bad faith in the registration and use of a domain name is shown when the Respondent, by using the domain name, has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] website […], by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent's website or of products on the website.
Collecting referral or advertising fees for confusingly similar domain names is evidence of bad faith. See Fresh Intellectual Properties, Inc. v. Matt Braska, WIPO Case No. D2005-0096. Here, Respondent used <legacysalmoncreekshospital.com> to conduct pay-per-click advertising, using the site to display links to other providers often doing business involving the term “legacy” (e.g. “Legacy Furniture,” “Silver Legacy Hotel,” “Legacy Visa,” and “Subaru Legacy”). All of the disputed domain names had NS1.HITFARM.COM and NS2.HITFARM.COM as their name server. Hitfarm's website, (at “www.hitfarm.com/tour.html”) advertises that it “provides domain portfolio holders with an easy way to earn revenue from their domain assets through [Hitfarm's] professional domain solutions. By parking your domains with us, you can expect a hassle-free and investment-free opportunity to effectively and efficiently monetize traffic to your domains.” Hitfarm's own marketing and prior UDRP decisions establish that Hitfarm is “a pay-for-traffic web engine that pays compensation to domain name owners for pop-up ads.” See, e.g., PepsiCo, Inc., v. Forum LLC, WIPO Case No. D2005-0737.
Respondent also has engaged in a pattern of registering domain names that are confusingly similar to others' legitimate intellectual property rights for commercial gain. Although not dispositive, this type of behavior is an indication of bad faith. See Brownells, Inc. v. Texas International Property Associates, supra. Complainant first contacted Respondent in February 2008 and this action was not filed until November 2008. Respondent's suspicious behavior likely resulted in a period of nine months of additional revenue, generated by pay-per-click advertising, using the disputed domain names. Disingenuous settlement offers and delay tactics as evidenced here are a further indication of bad faith. See President and Fellows of Harvard College v. Texas International Property Associates, supra.
The Panel finds that the Respondent deliberately attracted, for commercial gain, internet users to the disputed domain names by creating a likelihood of confusion with the Complainant's mark and as such, finds the requisite bad faith under paragraph 4(a) of the Policy.
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 names, <legacyemanuelhospital.com>, <legacysalmoncreek.com> and <legacysalmoncreekshospital.com> be transferred to the Complainant.
Perry J. Viscounty
Dated: January 7, 2009