WIPO Domain Name Decision: D2006-0543

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Saint Francis Hospital and Medical Center v. Registrant (187640)

Case No. D2006-0543

1. The Parties

The Complainant is Saint Francis Hospital and Medical Center, Hartford, Connecticut, United States of America, represented by David C. Stone, United States of America.

The Respondent is Registrant (187640), Hong Kong, SAR, The People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <stfranciscare.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2006. On May 8, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On May 8, 2006, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with amendment satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on that date.

On June 6, 2006, the Center appointed J. Christopher Thomas, Q.C. as the sole panelist in this matter. The Panel finds that it was properly constituted. As required by the Center to ensure compliance with the Rules, paragraph 7, the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence.

4. Factual Background

The Complainant was the only party to file evidence in support of its case.

The Complainant is Saint Francis Hospital and Medical Center, a non-stock corporation, incorporated in the State of Connecticut, U.S.A.

Saint Francis Hospital and Medical Center has used the name Saint Francis Care for over ten years in providing services to the greater Hartford and Connecticut community. However, the Complainant acknowledges that Saint Francis Hospital and Medical Center has not registered a trademark or service mark for Saint Francis Care.

The Respondent is not commonly known by any name that includes Saint Francis. There is no evidence in the registration information for the domain name or on the website that the Respondent ever used the name Saint Francis in any way.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

The disputed domain name <stfranciscare.com> registered by the Respondent is confusingly similar to the trademark or service mark in which the Complainant has rights. It is contended that the Respondent’s use of <stfranciscare.com> is confusingly similar to <saintfranciscare.com> and <stfranciscare.org>, domain names registered and used by the Complainant. The domain name in question is confusingly similar to the name used by Saint Francis Hospital and Medical Center for its various facilities and services. Saint Francis Hospital and Medical Center has used this name for over ten years in providing services to the greater Hartford and Connecticut community and is used on various publications, on letterhead, in signs and in media advertising.

The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant alleges that neither the “stfranciscare.com” site, nor the linked sites, represent any bona fide offering of goods or services. The categories found on the <stfranciscare.com> site link the user to other sites that have no relationship to any entity named Saint (or St.) Francis, but rather are sites that generally deal with employment, college degrees, or generalized physician information. The Respondent is not commonly known by any name that includes St. Francis and there is no evidence that the Respondent ever used the name St. Francis in any way, except as the domain name in question.

The Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain. It is noted further that the Respondent is making no legitimate non-commercial or fair use of the domain name and is diverting consumers who may be seeking information from Saint Francis Hospital and Medical Center in Hartford away from the Complainant’s websites and is tarnishing its name by the use of the disputed domain name. Since Saint Francis Hospital and Medical Center has registered <saintfranciscare.com> and <stfranciscare.org>, it is considered likely that internet users will attempt to seek information from Saint Francis Hospital and Medical Center by using the domain name <stfranciscare.com>. If they do so, they will be brought to a web site that provides no information about Saint Francis Hospital and Medical Center. Users will not be able to link to the Saint Francis Hospital and Medical Center website.

The Respondent registered the domain name and is using it in bad faith. It is contended that the Respondent registered the domain name in order to prevent Saint Francis Hospital and Medical Center from using that domain name. The Respondent has engaged in similar conduct with other domain names and the WIPO Arbitration and Mediation Center has dealt with such activity by the Respondent.

It is further asserted that the Respondent has registered the name to attract internet users away from the Saint Francis Hospital and Medical Center sites. Internet users who may have used the Saint Francis Hospital and Medical Center registered sites at saintfranciscare.com or stfranciscare.org may inadvertently reach the site with the domain name registered to the Respondent. Its similarity is designed to divert users away from the Saint Francis Hospital and Medical Center sites. The Respondent’s use of the domain name in question creates confusion that benefits the Respondent, despite the fact that it has no legitimate interest in the name, has never used the name, and does not appear to intend to use the name to offer products for services.

B. Respondent

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

6. Discussion and Findings

In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, the Complainant must prove, as required by paragraph 4(a) of the Policy, that:

(i) the contested domain name is identical or confusingly similar to a trademark 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.

Although the Panel considers that the Complainant has made out two of the three requisite elements, it has not made out all three and therefore the Panel has no choice but to reject the Complaint.

Paragraph 4(a) of the Policy is plainly predicated upon a Complainant first proving that it has rights to a trade or service mark in relation to which the disputed domain name, being identical or similar, gives rise to confusion. The latter subparagraphs (ii) and (iii) are additional requirements.

The Complainant has not registered a trade mark or service mark for the name it wishes to protect. The issue therefore becomes whether the Complainant has proved common law rights to the trade mark alleged to be confusingly similar to the disputed domain name.

In this regard, the Complaint states that:

“[w]hile Saint Francis Hospital and Medical Center has not registered a trade mark or service mark for Saint Francis Care, it has used this name for over ten years in providing services to the greater Hartford and Connecticut community. Saint Francis Care, or its variant, St. Francis Care is well known in the community and is used in various publications, on letterhead, in signs, and in media advertising”.

The Panel notes, however, that no evidence was produced in support of this allegation and therefore it has not been able to conclude that the terms “Saint Francis Care” or “St. Francis Care” have been used by the Complainant in a way and to an extent which would justify a finding of trade mark rights under the Policy.

The Complainant has therefore failed to discharge its burden of proof under Policy, para. 4(a)(i). Without this necessary foundational requirement, the Complainant cannot make out a breach of paragraph 4(a) of the Policy and accordingly its Complaint must fail, this being said without prejudice to any claims that might be made before national tribunals.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel declines the requested remedy.

J. Christopher Thomas, Q.C.
Sole Panelist

Dated: June 19, 2006