WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intermountain Health Care, Inc., IHC Health Services, Inc. v. Randy Delcore
Case No. D2017-0265
1. The Parties
Complainants are Intermountain Health Care, Inc. and IHC Health Services, Inc., both of Salt Lake City, Utah, United States of America (“United States”), represented by Stoel Rives, LLP, United States.
Respondent is Randy Delcore of Cedar City, Utah, United States, represented by Mudd Law Offices, United States.
2. The Domain Names and Registrar
The disputed domain names <cedarcityhospital.co>, <cedarcityhospital.com>, <cedarcityhospital.org>, <intermountaincedarcityhospital.co>, <intermountaincedarcityhospital.com>, <intermountaincedarcityhospital.net>, <intermountaincedarcityhospital.org>, <intermountainstgeorgehospital.com>, <intermountainstgeorgehospital.net>, and <intermountainstgeorgehospital.org> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2017. On February 13, 2017, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On February 14, 2017, the Registrar transmitted by e-mail 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2017. On March 13, 2017, Respondent requested an automatic four-day extension of the deadline to file a Response. The Center granted the requested extension and confirmed that the new deadline for Response was March 17, 2017. On March 16, 2017, Respondent requested an extension of time to file the Response to March 31, 2017. On March 17, 2017, the Center granted Respondent an extension of time to file the Response, confirming the new deadline for Response was March 27, 2017. The Response was filed with the Center on March 27, 2017. On April 3, 2017, Complainant filed an unsolicited Supplemental Filing. On April 5, 2017, Respondent filed an unsolicited Supplemental Filing.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 18, 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
Complainant, comprised of two entities, describes itself as a “well-known not-for-profit system of hospitals, surgery centers, doctors, clinics, homecare and hospice providers in the United States.” Complainant has 22 hospitals, more than 185 clinics, 1,400 multi-specialty doctors and caregivers, and more than 37,000 employees.
Complainant holds numerous trademark registrations featuring the word “Intermountain.” One such mark, INTERMOUNTAIN HEALTH CARE, was registered with the United States Patent & Trademark Office (“USPTO”) in 1995 and indicates a first use in commerce in 1975. Other USPTO registrations held by Complainant include INTERMOUNTAIN MEDICAL CENTER and INTERMOUNTAIN CLINICS. Complainant also maintains an Internet presence, with its main website at “www.intermountainhealthcare.org”.
One of Complainant’s hospitals is the Cedar City Hospital located in Cedar City, Utah. That hospital had been known as Valley View Medical Center since 1963. On November 16, 2015, Complainant announced that Valley View Medical Center was changing its name to Cedar City Hospital.
Respondent is a physician who operates a medical service in Cedar City, Utah. He performs surgical procedures at Cedar City Hospital as well. Respondent registered all of the Domain Names on November 17, 18 and 19, 2015, shortly after Complainant’s announcement that it was changing the name of Valley View Medical Center to Cedar City Hospital.
SelectHealth, Inc. (“SelectHealth”) is a subsidiary of Complainant which provides health insurance coverage to members enrolled in an integrated healthcare plan through Complainant’s health system. According to a SelectHealth officer, Respondent said he registered the Domain Names as leverage in order to induce SelectHealth to add Respondent’s clinic as an “in-network” health care provider. A Cedar City Hospital administrator also recounted a discussion with Respondent in November 2016 during which the latter reiterated that he would sell the Domain Names to Complainant if SelectHealth would add Respondent’s clinic as an “in-network” provider.
The Domain Names containing the word “Intermountain” and <cedarcityhospital.co> do not resolve to an active website. The other two Domain Names <cedarcityhospital.com> and <cedarcityhospital.org> are redirected to Respondent’s main website, located at “www.delcore.org”.
5. Parties’ Contentions
According to Complainant, Respondent registered the Domain Names with no legitimate interest and in bad faith because he is seeking leverage in his efforts to have his clinic added to the SelectHealth list of “in‑network” health care providers. In addition, Complainant contends that Respondent’s redirection of some of the Domain Names to Respondent’s main website is in bad faith because Respondent offers medical services in competition with Complainant’s services.
With respect to the issue whether Complainant has protectable rights in the unregistered CEDAR CITY HOSPITAL mark, Complainant asserts that prior decisions under the Policy have recognized trademark rights in the context of geographically descriptive terms. Moreover, Complainant asserts that prior decisions under the Policy have found a respondent in bad faith where the respondent registers a domain name upon learning that a trademark owner is about to change its mark or create a new mark.
Respondent has consented to the transfer of the Domain Names which contain the word “Intermountain.” With respect to the three remaining Domain Names, however, Respondent contends that Complainant is not entitled to a transfer of those Domain Names.
According to Respondent, he registered the “Cedar City Hospital” Domain Names because he plans to open a hospital in Cedar City. Respondent purchased property years ago, allegedly for this purpose, and Respondent offers into the record the affidavits of two doctors who confirm that Respondent has discussed with them his plans to open a hospital.
Respondent also contends that Complainant lacks trademark rights in the alleged and unregistered mark CEDAR CITY HOSPITAL, because that term is merely descriptive of a hospital located in Cedar City, and that, in any event, Complainant had not acquired any common law rights in such a mark during the hours between Complainant’s announcement of the name change of Valley View Medical Center and Respondent’s registration of the Domain Names.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name 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 Panel will not discuss the merits of the Domain Names <intermountaincedarcityhospital.co>, <intermountaincedarcityhospital.com>, <intermountaincedarcityhospital.net>, <intermountaincedarcityhospital.org>, <intermountainstgeorgehospital.com>, <intermountainstgeorgehospital.net>, and <intermountainstgeorgehospital.org>, because Respondent has consented to the transfer of those Domain Names. The Panel will confine its discussion and findings to the merits of the Domain Names <cedarcityhospital.co>, <cedarcityhospital.com>, and <cedarcityhospital.org>, which remain in dispute.
A. Supplemental Filings
Both Parties have submitted unsolicited Supplemental Filings. Complainant’s Supplemental Filing (“Complainant’s Reply”) responds to arguments made in Respondent’s Response, and Respondent’s Supplemental Filing consists of a sworn affidavit signed by Respondent providing additional factual allegations.
Paragraphs 10 and 12 of the Rules grant the Panel sole discretion to determine the admissibility of Supplemental Filings. In this case, the Panel will exercise its discretion to admit both Supplemental Filings to account for new arguments and new information that could not have been addressed in the Parties’ initial Complaint and Response submissions.
B. Identical or Confusingly Similar
In prior decisions under the Policy, panels have exceptionally recognized common law trademark rights in the context of geographical terms or phrases to satisfy the first element of the Policy if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the mark in relation to the complainant’s goods or services. See, e.g., BAA plc, Aberdeen Airport Limited v. Mr. H. Hashimi, WIPO Case No. D2004-0717 (<aberdeenairport.com>), and Thompson Island Outward Bound Education Center v. Larrie Noble/ Dirty Mackn Entertainment Corp, WIPO Case No. D2013-1144 (<thompsonisland.org>).
In this case, the Panel concludes that Complainant has rights in the mark CEDAR CITY HOSPITAL. Complainant’s main website advertises Cedar City Hospital as “providing excellence in healthcare in Iron County.” Moreover, Complainant went to considerable lengths to publicize the name change of an established, 52 year-old hospital, Valley View Medical Center, to Cedar City Hospital. Complainant issued e-mail announcements, amended agreements with doctors, insurers, vendors, etc., replaced signs, banners, etc., and noted the change in its advertising and promotional materials.
The Domain Names <cedarcityhospital.co>, <cedarcityhospital.com>, and <cedarcityhospital.org> reproduce the CEDAR CITY HOSPITAL mark in its entirety, and accordingly the Panel finds that the Domain Names are confusingly similar to a trademark in which Complainant holds common law trademark rights.
Complainant has established Policy paragraph 4(a)(i).
C. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes on balance that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent contends that he registered the “Cedar City Hospital” Domain Names in aid of his long-range plan to open a hospital in Cedar City, Utah. This goal may be genuine, but there is no evidence that Respondent intended to call such a hospital Cedar City Hospital.
More importantly, Respondent’s credibility suffers from the fact that he also registered seven Domain Names containing Complainant’s longstanding and registered trademark INTERMOUNTAIN. Although he does not contest the transfer of these Domain Names in this proceeding, the fact that he registered them at the same time as he registered the “Cedar City Hospital” Domain Names remains part of the story. The registration of the seven INTERMOUNTAIN-formative Domain Names renders far more plausible the assertion by Complainant that Respondent’s motivation here was to leverage the Domain Names in exchange for “in‑network” status within Complainant’s health insurance system.
Complainant has established Policy paragraph 4(a)(ii).
D. Registered and Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
Respondent asserts that he cannot have registered the Domain Names in bad faith under the Policy because at the time he registered the Domain Names Complainant lacked trademark rights in CEDAR CITY HOSPITAL. This type of situation has been addressed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). In response to Question 3.1 (“Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?”), the WIPO Overview 2.0 states:
“Consensus view: Generally speaking, although a trademark can form a basis for a UDRP action under the first element irrespective of its date [see further paragraph 1.4 above], when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.
However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant’s enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant’s likely rights in that mark. (In all such cases, in order to have a chance to succeed in any filed UDRP complaint, the complainant must actually demonstrate relevant trademark rights, as these are a precondition for satisfying the standing requirement under the first element of the UDRP for rights in a mark.)”
The Panel concludes that Respondent registered the Domain Names in bad faith. It is undisputed that Respondent was aware of Complainant’s recent announcement that it was changing the name of Valley View Medical Center to Cedar City Hospital at the time he registered the Domain Names. Moreover, although Respondent denies that he ever intended to sell the Domain Names to Complainant, he does not deny the repeated allegation that he was using the Domain Names as leverage in his negotiations to become listed as an “in-network” provider in Complainant’s health insurance system.
The Panel concludes that Respondent’s intended use of the Domain Names as bargaining leverage to qualify for Complainant’s health insurance network constitutes bad faith within the meaning of Policy paragraph 4(b)(i), quoted above. The benefits that would accrue to Respondent’s business from being an “in-network” provider presumably outweigh by a great margin the cost of registering the Domain Names.
In addition, the current use of the Domain Names, either to resolve to pay-per-click pages or to redirect to Respondent’s website, is further evidence of bad faith use.
The Panel concludes, on the record before it, that Respondent registered and has used the Domain Names in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <cedarcityhospital.co>, <cedarcityhospital.com>, <cedarcityhospital.org>, <intermountaincedarcityhospital.co>, <intermountaincedarcityhospital.com>, <intermountaincedarcityhospital.net>, <intermountaincedarcityhospital.org>, <intermountainstgeorgehospital.com>, <intermountainstgeorgehospital.net>, and <intermountainstgeorgehospital.org> be transferred to Complainant.
Robert A. Badgley
Date: May 2, 2017