WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HCA, Inc. v. Zhu Xumei
Case No. D2017-1201
1. The Parties
The Complainant is HCA, Inc. of Nashville, Tennessee, United States of America (“United States”), represented internally.
The Respondent is Zhu Xumei of Huzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <hcahealthcare.net> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 20, 2017. On June 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Complainant submitted an amended Complaint on June 29, 2017, to correct an administrative formality.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2017.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 7, 2017. 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 a provider of healthcare services. Founded in 1968, the Complainant currently operates 174 hospitals and 119 freestanding surgery centers across the United States and the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The Complainant registered the <hcahealthcare.com> domain name in February 6, 2000, and has since used the domain name to provide information about the Complainant and its healthcare services.
The Complainant claims common law rights in the HCA HEALTHCARE mark, used in commerce since 2000, and has also applied for registration of this mark with the United States Patent and Trademark Office (“USPTO”) on April 18, 2017 (Application No. 87415608)
The disputed domain name was registered on May 8, 2014. According to evidence submitted (Annex G to the Complaint), it redirected visitors to a “parking website” which includes links to third party webpages. The “parking website” also included a “Buy This Domain” section.
5. Parties’ Contentions
The Complainant asserts, inter alia, as follows:
(i) that the disputed domain name is identical or confusingly similar to the service mark for HCA HEALTHCARE in which the Complainant has rights, in particular:
- the Complainant has common law rights in the HCA HEALTHCARE mark, having invested a substantial amount of time and effort in the creation of goodwill, and used that mark in the domain name <hcahealthcare.com> for many years, and having also applied for registration of this mark with the United States Patent and Trademark Office (“USPTO”) on April 18, 2017 (Application No. 87415608); and
- the disputed domain name comprises the Complainant’s HCA HEALTHCARE service mark in its entirety, and the generic Top-Level Domain (“gTLD”) “.net” does not distinguish the disputed domain name from the Complainant’s HCA HEALTHCARE mark.
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in particular:
- the Respondent is not related to or associated with the Complainant;
- there is no evidence of the Respondent’s use of the disputed domain name in connection with a bona fide offering of goods or services; and
- the disputed domain name comprises several pay-per-click links, including to third party webpages offering services that compete with or are otherwise similar to those of the Complainant, generating revenue through the traffic diverted to the Respondent’s website by use of the Complainant’s HCA HEALTHCARE mark.
(iii) that the disputed domain name was registered and is being used in bad faith, in particular:
- the Respondent chose to adopt the Complainant’s HCA HEALTHCARE mark in the disputed domain name with the intention to associate itself with the Complainant;
- the disputed domain name provides various pay-per-click links to generate commercial gain for the Respondent;
- the disputed domain name includes a “Buy This Domain” section, indicating the Respondent’s intention to sell the disputed domain name; and
- the Respondent has a documented history of “typosquatting” relating to other third-party marks.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the transfer of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the 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.
A. Identical or Confusingly Similar
As at the date of registration of the disputed domain name or filing of the Complaint, the Complainant has not registered the HCA HEALTHCARE mark, therefore the question arises as to whether this mark has nonetheless become a distinctive identifier which consumers associate with the Complainant’s services.
The Complainant asserts that it has used its website “www.hcahealthcare.com” for over seventeen years (since its creation in February 2000) in relation to its healthcare services offered under the HCA HEALTHCARE mark, but the only evidence of such use provided in support of this contention is a screenshot of the website hosted at “www.hcahealthcare.com” dated June 14, 2017 (Annex E to the Complaint). The Panel finds that this evidence alone, in the absence of registration of the HCA HEALTHCARE mark, is insufficient to prove that the Complainant has enforceable rights in the HCA HEALTHCARE mark.
However, the Panel has, as guided by section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), conducted independent checks on the “Wayback Machine” (at “www.archive.org”) which confirm the Complainant’s use of the HCA HEALTHCARE mark in its domain name <hcahealthcare.com> and on the website hosted thereon since 2010.
The Panel does not consider the HCA HEALTHCARE mark as a whole to be generic. Whilst the term “healthcare” describes the services provided by the Complainant, “HCA” is the name of the Complainant. The Panel is satisfied that relevant members of the public will associate the HCA HEALTHCARE mark with the Complainant and its healthcare services, and that the HCA HEALTHCARE mark is distinctive to the Complainant (see Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314). From the Panel’s own independent checks, it is clear that the Complainant’s mark has received significant exposure in at least the United States and the United Kingdom markets. As such, the Panel is satisfied that the Complainant has unregistered rights in the mark HCA HEALTHCARE for the purposes of the Policy.
Section 1.3 of WIPO Overview 3.0 also provides that the fact that a respondent is shown to have been targeting the complainant’s mark may support the complainant’s assertion that its mark has achieved significance as a source identifier. A screenshot of the disputed domain name (Annex G to the Complaint) shows that the pay-per-clink links all relate to medical and hospital services, which are identical to the services offered by the Complainant. For the reason set out below regarding “cybersquatting”, the Panel is satisfied that the Respondent has targeted the Complainant’s mark in this way.
The disputed domain name fully incorporates the Complainant’s HCA HEALTHCARE mark. The addition of the gTLD “.net” does not serve to distinguish the disputed domain name from the HCA HEALTHCARE mark, and should generally be disregarded for the purpose of the assessment of confusingly similarity.
Based on the above reasons, the Panel is satisfied that the Complainant has established that the disputed domain name is identical to a trade mark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel notes that there is no affiliation or association between the Respondent and the Complainant. The disputed domain name resolves to a pay-per-click page which redirects Internet users to third party webpages. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name (see section 2.9 of WIPO Overview 3.0).
Therefore, the Panel finds that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. The Respondent has not participated in the proceedings and has presented no evidence.
Accordingly, the Panel considers paragraph 4(a)(ii) of the Policy satisfied and that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a non-exhaustive lists of circumstances which indicate that a respondent may have registered and used the disputed domain name in bad faith.
As the mark HCA HEALTHCARE is not commonly used by traders and is distinctive of the Complainant, the Panel finds that the Respondent would have been aware of the Complainant’s rights in HCA HEALTHCARE when it registered the disputed domain name.
The disputed domain name resolves to a parked website with links to third-party webpages relating to healthcare services, which are in direct competition with the Complainant. It indicates that the Respondent registered the disputed domain name in order to exploit the Complainant’s HCA HEALTHCARE mark to obtain click-through revenues and to promote others’ competing services; a practice which previous UDRP panels have found to constitute bad faith (see, among others, Tata Sons Limited v. TATA Telecom Inc/Tata-Telecom.com, Mr. Singh, WIPO Case No. D2009-0671; Archer-Daniels-Midland Company v. Wang De Bing, WIPO Case No. D2017-0363).
The Panel does not think this is a “typosquatting” situation as alleged by the Complainant, because there is no misspelling of the Complainant’s HCA HEALTHCARE mark in the disputed domain name. However, the evidence before the Panel suggests this is an instance of cybersquatting, namely that the Respondent has incorporated the Complainant’s proprietors’ mark in the disputed domain name to garner traffic from Internet users searching for the Complainant. The Respondent has a documented history of such activity, having been found to “cybersquat” on other domain names incorporating well-known third-party marks such as BASF and SCHNEIDER ELECTRIC (see BASF SE v. Zhu Xumei, WIPO Case No. DMX2015-0032; Schneider Electric S.A. v. Zhu Xumei, WIPO Case No. DMX2014-0013).
On the basis of the above reasons, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <hcahealthcare.net>, be transferred to the Complainant.
Date: August 14, 2017