WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lehigh Valley Hospital v. Gregg Schubach

Case No. D2002-0214

Complainant is Lehigh Valley Hospital ("Lehigh Valley" or "Complainant"), Cedar Crest & I-78 (JDMCC#414), Allentown, PA 18105-1556, USA.

Respondent is Gregg Schubach, 4166 Fawn Trail Road, Allentown, PA 18104, USA.

The domain names at issue are: <lehighvalleyhospital.com> and <lehighvalleyhospital.org> (the "Domain Names").

The registrar is Register.com (the "Registrar"), 575 8^th Avenue – 11^th Floor, New York, NY 11018, USA.

The WIPO Arbitration and Mediation Center (the "Center") received Lehigh Valley’s Complaint in hard copy on March 5, 2002, and by e-mail on March 15, 2002. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Complainant made the required payment to the Center.

On March 15, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. Also on March 15, 2002, the Registrar transmitted via e-mail to the Center its response, confirming that (1) a copy of the Complaint was sent to it by Complainant as required by Supplemental Rule 4(b); (2) the Domain Names were registered through it; (3) Respondent is the current registrant of the Domain Names; (4) the Administrative Contact for the Domain Names is Respondent, and the Technical Contact for the Domain Name is the Registrar; (5) the Policy applies to the Domain Name; and (6) the current status of both Domain Names is active.

On March 19, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier to Respondent and to the Registrar. The Center advised that Respondent’s Response was to be submitted by April 7, 2002, and pointed out that the Response should be in accordance with the Rules and the Supplemental Rules (requiring both e-mail and hard copies), and described the consequences of a default if the Response was not sent by the due date. The Center also noted that the Complainant had elected for a single Panelist to decide this matter.

The requirements of Rule 2(a) having been satisfied, the date of the formal commencement of this administrative proceeding, pursuant to Rule 4(c), is March 18, 2002.

No Response was received from Respondent by the April 7, 2002 deadline. On April 8, 2002, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default. The Center advised Respondent that (a) Respondent had failed to comply with the deadline for submission of its Response and (b) the consequences of default, including (1) appointment of a single Panelist (per the Complainant’s request); (2) the Panel would be informed of Respondent’s default and would decide in its sole discretion whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondent.

The Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by April 30, 2002.

On April 15, 2002, the Center transmitted the case file to the Panel.

The Complaint is based on Complainant’s ownership of rights to the mark LEHIGH VALLEY HOSPITAL CENTER (the "Trademark"). Complainant owns U.S. Trademark Registration No. 1,323,832 for the Trademark, which was registered in 1985. A copy of the registration certificate and evidence that Complainant is the current owner of the registration were attached to the Complaint.

The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. A copy of the Registrar’s registration agreement, which incorporates the Policy by reference, is appended to the Complaint.

Complainant asserts as follows:

-Complainant is the owner of the Trademark.

-Respondent, Gregg Schubach, registered the Domain Names, which are almost identical to the Trademark. Respondent does not have any association or affiliation with Lehigh Valley Hospital, nor does he have any legitimate interest in the Trademark.

-On February 4, 2002, in response to several telephone messages concerning the ownership of the domain names, Respondent’s counsel sent Complainant’s counsel a letter offering to sell the domain names to Complainant for $50,000 or to lease them for 99 years at a rate of $5,000 per year.

-Complainant alleges that Respondent is a licensed medical doctor, who, upon information and belief, registered the domain names for the purpose of disrupting the business of its competitor, Lehigh Valley Hospital.

Respondent is in default pursuant to Rule 5(b) and Rule 14 because it did not file a Response, either by e-mail or by hard copy, by the April 7, 2002 deadline (nor since then).

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panel’s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the Domain Names, each of the following:

(i)The Domain Names are identical or confusingly similar to a trademark in which Complainant has rights; and

(ii)Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii)The Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the Domain Names for purposes of Paragraph 4(a)(ii).

In this case, since the Respondent has defaulted, the Panel will consider the evidence as presented by the Complainant.

Complainant has proven that it is the owner of trademark rights in the mark LEHIGH VALLEY HOSPITAL CENTER.

Complainant’s rights in the mark LEHIGH VALLEY HOSPITAL CENTER are established by its longstanding federal registration of that mark. Complainant’s registration of its mark on the Principal Register of the U.S. Patent and Trademark Office establishes a presumption of validity of the mark under United States law. See 15 U.S.C. § 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainant’s ownership of the mark. See 15 U.S.C. § 1072. Accordingly, even if Respondent had denied knowledge of the trademark, it would be irrelevant.

The Domain Names are confusingly similar to Complainant’s registered mark. The removal of the generic word "center" does not avoid confusion.

There is no evidence in the record that Respondent has any legitimate interest in the Domain Names. Through default, Respondent has not denied Complainant’s allegations that he is not associated or affiliated, nor does he have interest in Lehigh Valley Hospital Center.

Respondent has apparently made no Internet usage of the Domain Names prior to the notice of the dispute or at any other time. By default, Respondent does not claim, or provide evidence to show, that he was commonly known by the Domain Name. Further, by default, he does not claim to have made any non commercial or fair use of the Domain Names.

Accordingly, Respondent has not met any of the criteria under Policy Paragraph 4(c) for showing rights or legitimate interest in the Domain Names.

Complainant’s third hurdle is to establish that Respondent has registered and used the Domain Names in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark … or to a competitor of that Complainant, for valuable consideration in excess of [registrant’s] documented out-of-pocket costs directly related to the domain name."

In this case, the Panel finds evidence of this type of bad faith. The only use made of the Domain Name to date, as far as the evidence before the Panel indicates, was to offer to sell it to Complainant, the trademark owner, for the sum of $50,000, or to lease it for $5,000 per year. Either option involves a sum which appears to be in excess of any expenses Respondent incurred in connection with its registration and suggests a bad-faith intent to profit from another’s trademark. Further, Respondent still has no web sites accessible at the disputed Internet addresses, which he registered on September 4, 2000. By default he has not presented any evidence of record to suggest that he is making any other use of it[1]. Such inaction, particularly absent a plausible explanation or concrete evidence of plans to use, can be indicative of bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), (registration together with "inaction" can constitute bad faith). In addition, the fact that Respondent registered both the ".com" and ".org" Domain Names without making any apparent uses of them further weigh in support of a finding of bad faith. See Ticketmaster Corp. v. Brown, D2001-0716) (WIPO July 17, 2001), (Respondents’ ownership of ".com", ".net", and ".org" variations of Ticketmaster’s marks contribute to finding bad faith). In sum, this inaction, taken together with the registration of two domain names almost identical to Complainant’s trademark, and perhaps most notably with Respondent’s attempt to sell the Domain Names for $50,000 are sufficient to establish bad faith of the form illustrated by Paragraph 4(b)(i) of the Policy.

In its Complaint, Lehigh Valley suggests that Respondent, who is a licensed medical doctor not affiliated with Complainant, registered the Domain Names for the purpose of disrupting the business of its competitor, Lehigh Valley. However, Complainant does not present any evidence to support its allegation. Indeed, Complainant does not meet the threshold requirement of showing that Respondent is a competitor[2]. Accordingly, the Panel does not find bad faith intent under Paragraph 4(b)(iii).

In sum, the Panel concludes that Respondent has registered and used the Domain Name in bad faith, as exemplified by illustration (i) in Paragraph 4(b) of the Policy.

In light of the findings and analysis by the Panel, the Panel decides that Complainant has met its burden of proving: (1) the Domain Names are identical and/or confusingly similar to Complainant’s trademark; (2) Respondent has no rights and no legitimate interest in respect of the Domain Names; and (3) the Domain Names have been registered and used by Respondent in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Names <lehighvalleyhospital.com> and <lehighvalleyhospital.org> be transferred to Complainant.

1. It is, of course, possible to make use of a domain name without having a web site located at that address. For example, a domain name can be used for e-mail, FTP, and other such purposes without the need to create and host a publicly-accessible web site. However, there is no evidence or reason to believe that either Domain Name is being used for any purpose, and Respondent, by default, has not contended that there is.
2. It is not entirely clear whether, and if so to what extent, a Panel may consider evidence found through independent investigation that neither party has presented in its pleadings. Respondent's name appears on an on-line list of medical doctors at St. Luke's Hospital, which apparently has an Allentown, PA location at which Respondent sometimes practices. Given that Lehigh Valley is also located in Allentown, PA, and is also engaged in the provision of health-care services, it might well be argued that the Complainant and Respondent are competitors. Properly presented evidence of these facts could have helped support an allegation of bad faith registration under Paragraph 4(b)(iii). However, no such evidence was introduced to support Complainant's bare allegation that Respondent is a "competitor." Accordingly, Complainant has not met its burden of proving that Respondent is a competitor. Paragraph 4(b)(iii) therefore forms no part of the basis for this Panel's decision.