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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Alegent Health v. surper tree / Domains by Proxy, Inc.

Case No. D2011-2288

1. The Parties

The Complainant is Alegent Health of Omaha, Nebraska, United States of America, represented by McGrath North Mullin & Kratz, PC LLO, United States of America.

The Respondent is surper tree of Chizhou, Anhui, the People’s Republic of China, and Domains by Proxy, Inc. of Scottsdale, Arizona, United States of America, respectively.

2. The Domain Name and Registrar

The disputed domain name <alegent-health.info> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 27, 2011. On December 28, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On December 28, 2011, GoDaddy.com, LLC 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 December 29, 2011, 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 amended Complaint on January 3, 2012.

The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2012.

On December 29, 2011, the Center advised the Registrar that the Center had noted that the disputed domain name was set to expire on January 24, 2012, and requested the Registrar to confirm that: (1) the domain name will be placed in Registrar lock status after the lapse of the expiry date until the UDRP proceedings are concluded; and (2) whether any action is required by the parties to keep the domain name under Registrar lock so that the administrative procedure can continue as required under the UDRP. The Registrar replied to the Center on December 29, 2011, confirming that the disputed domain name would remain locked during the pending administrative proceeding, and stating it was the position of the Registrar to make the Complainant bear the burden of ensuring that the domain name does not expire. On January 4, 2012, the Center wrote to the Complainant and to both Respondents to contact the Registrar and to confirm to the Center when the necessary arrangements had been made with the Registrar to ensure that the domain name remains active. On January 6, 2012, the Complainant wrote to the Center confirming that the disputed domain name had been renewed for an additional year and is now set to expire on January 24, 2013.

The Center appointed Joan Clark as the sole panelist in this matter on February 6, 2012. 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 the registered owner of the trademark ALEGENT HEALTH registered in the United States Patent and Trademark Office on April 29, 1997.

The domain name <alegent-health.info> was registered with the Registrar, GoDaddy.com, LLC, on January 24, 2011, and was set to expire on January 24, 2012, but the registration was renewed during the course of this administrative procedure and is now set to expire on January 24, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant relies upon its United States (“U.S.”) trademark registration for the mark ALEGENT HEALTH registered with the United States Patent and Trademark Office on April 29, 1997, for use in connection with hospital services, namely, providing medical information services, managed health care services, emergency medical assistance and physician services.

The Complainant asserts that the disputed domain name is virtually identical to its trademark, save for the addition of a hyphen between the words “alegent” and “health”.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the disputed domain name, stating there is no evidence to suggest that the Respondent possesses any such rights or legitimate interests. The Complainant declares that it has not licensed or otherwise permitted the Respondent to use its ALEGENT HEALTH trademark.

The Complainant has produced a printout of pages retrieved from the website of the disputed domain name, which the Complainant says invites others to post content including “information about … your site” on the website associated with the disputed domain name. The Complainant maintains that the use of its trademark in the disputed domain name <alegent-health.info> for a site that invites others to post information about their sites is clearly an attempt to attract more visitors to the Respondent’s site through the exploitation of the goodwill of the Complainant’s mark. The Complainant notes that its trademark registration for ALEGENT HEALTH has existed since April 29, 1997, while the registration of <alegent-health.info> occurred nearly fourteen years later on January 24, 2011. The Complainant maintains that the existence of its U.S. trademark registration for a period of almost fourteen years prior to the registration of the disputed domain name should have been discovered by the Respondent had it conducted the most minor diligence. Further, the Complainant notes that the word “alegent” is a distinctive arbitrary word having no meaning in the English language, and that it can be no mere coincidence that the Respondent registered a domain name that combines the arbitrary word “alegent” with the word “health”, and which is identical to the Complainant’s federally registered trademark. The Complainant concludes that the Respondent registered and used the disputed domain name in bad faith.

The Complainant requests that the domain name <alegent-health.info> be transferred to the Complainant.

B. Respondent

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

Identity of the Respondent

According to the information from the WhoIs data base of the Registrar GoDaddy.com, LLC, the Respondent originally named in the Complaint was “Domains by Proxy, Inc.” Upon receiving the usual request from the Center for verification of the registrant, the Registrar advised that the registrant, or holder of the domain name, was “surper tree” of Chizhou, Anhui, China. According to paragraph 1 of the Rules, “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Therefore, Domains by Proxy, Inc. was properly named as the Respondent in the original complaint.

Although Domains by Proxy, Inc. was properly named as the Respondent, it would appear to be used as a masking or privacy service for the real beneficial owner surper tree. For purposes of the application of the Policy, the Panel should consider who is the beneficial owner of the disputed domain name.

The Panel considers that both the beneficial owner surper tree and the original registrant Domains by Proxy, Inc., should be named as Respondents. In the remainder of this decision, they will be described in the singular, as the Respondent. See The iFranchise Group v. Jay Bean / MDNH, Inc ./ Moniker Private Services (23658) WIPO Case No. D2007-1438, and Spenco Medical Corporation v. spencoarchsupports.net / PrivateWhoIs Service, WIPO Case No. D2011-0595.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of providing that all three elements are present in the Complaint, namely:

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

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith, but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <alegent-health.info> is almost identical and certainly confusingly similar to the Complainant’s trademark ALEGENT HEALTH, in which the Complainant has established that it has rights.

Accordingly, the Panel finds that the first condition for the complaint to succeed has been established.

B. Rights or Legitimate Interests

The Complainant affirms that it has not given any permission of license to the Respondent to use its trademark in the disputed domain name, and claims that the Respondent was not previously known by the disputed domain name and has no rights or legitimate interest in the disputed domain name. As the Respondent has not replied to the Complainant’s contentions, and there is no evidence in the file to the contrary, the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.

The Panel finds that the second condition for the Complaint to succeed has been established.

C. Registered and Used in Bad Faith

As the Complainant has pointed out, its trademark was registered some fourteen years before the disputed domain name was registered. While there is no evidence submitted by the Complainant to the effect that its trademark was widely known and had enjoyed extensive use over the years, nevertheless it was the responsibility of the registrant under paragraph 2 of the Policy in registering its domain name, “to determine whether (your) domain name registration infringes or violates someone else’s rights.” A simple review of the United States trademark register would have revealed the existence of the trademark ALEGENT HEALTH.

There is evidence that the Respondent was well aware of the Complainant, whose name embodies its trademark. The Complainant has produced printouts from the Respondent’s website which are headed “About – Alegent Health – Top Ranked Health Care System in Omaha, Nebraska”. One of the printouts further states “Alegent Health is Omaha’s health care leader with hospitals in Omaha, Council Bluffs, Southwest Iowa and rural Nebraska. Alegent Health provides medical services in virtually all fields of medicine.” The Panel finds that the Respondent was attempting to attract Internet users to its website by giving the impression that its website is sponsored by, or emanates from, the Complainant and by creating a likelihood of confusion with the Complainant and its trade mark ALEGENT HEALTH, which the Panel assumes was for pecuniary gain. The Panel is of the view that the disputed domain name was registered and has been used in bad faith.

The third condition for the Complaint to succeed has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <alegent-health.info> be transferred to the Complainant.

Joan Clark
Sole Panelist
Dated: February 18, 2012

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