The Complainant is Hill-Rom Services, Inc. of Batesville, Indiana, United States of America, represented by Thompson Hine LLP, United States of America.
The Respondent is Private Whois Service of Nassau, Bahamas.
The Disputed Domain Name <hilrom.com> is registered with Internet.bs Corp.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2010. On September 27, 2010, the Center transmitted by email to Internet.bs Corp a request for registrar verification in connection with the Disputed Domain Name. On September 28, 2010, Internet.bs Corp transmitted by email to the Center its verification response confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 22, 2010.
The Center appointed Charné Le Roux as the sole panelist in this matter on October 28, 2010. 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.
The Complainant is a worldwide leading manufacturer and provider of medical technologies and related healthcare services. It has been operational under the name HILL-ROM since 1929 and has used the trade mark HILL-ROM in commerce in connection with medical products since 1972. It has an annual revenue exceeding USD 1.3 billion. It employs more than 6500 people and has operations located around the world.
The Complainant registered the trade mark HILL-ROM through its wholly-owned holding company in the USA in November 1985. The Complainant, through its group of companies, also own registrations for various HILL-ROM trade marks in over 20 countries. In addition, it owns pending applications for HILL-ROM marks in 4 countries. The Complainant furthermore owns several domain names consisting of or incorporating HILL-ROM including <hill-rom.biz>, <hillrom.biz>, <hill-rom.com>, <hillrom.com>, <hill-rom.net>, <hillrom.net>, <hill-rom.us>, <hillrom.us>, <hill-rombiomed.com>, <hillrombiomed.com>,<hill-romdesign.com>, <hillromdesign.com>, <hill-romdirect.com>, <hillromdirect> and the like. The Complainant has expended, together with its affiliated companies and authorized licensees, great effort and monies to market and sell HILL-ROM branded products worldwide. The HILL-ROM trade mark is promoted through various forms of advertising including medical and trade publications, exhibits at trade shows and on the Complainant’s primary website at “www.hilrom.com”. The Disputed Domain Name was registered on February 21, 1997. The website at “www.hilrom.com” resolves to a classic pay-per-click advertising website and includes various sponsored links to the goods marketed by the Complainant and its affiliated company, but also medical-related goods sold by the Complainant’s competitors.
The Complainant contends that it is a famous and global provider of a range of medical services and products under the trade mark HILL-ROM. The Complainant contends that HILL-ROM is a well-known trade mark and that there is significant goodwill associated with it.
The Complainant contends that the Disputed Domain Name is confusingly similar to its HILL-ROM trade mark, save for the misspelling of the Complainant’s trade mark in omitting one of the two l’s and the hyphen. The Complainant contends that the Disputed Domain Name will, despite the omissions, create the overall impression of the designation as being a domain name connected to the Complainant or its products and services.
The Complainant also contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent has not been authorized by the Complainant to use or register any of the Complainant’s trade marks;
b) the Respondent has not used the Disputed Domain Name in connection with the bona fide offering of goods or services, but rather to divert traffic to the Respondent’s website;
c) the Complainant’s use of the HILL-ROM trade mark predates the Respondent’s registration of the Disputed Domain Name by nearly 70 years. The Complainant also puts forward an argument that other WIPO Panels have acknowledged the Respondent’s lack of bona fide offering of goods and services based on the Respondent’s identical conduct with respect to other domain names. The Complainant makes specific submissions in connection with the Respondent’s identity in this regard. It puts forward the case that the contact email addresses in connection with the Disputed Domain Name change on a periodic basis, making it difficult to contact the Respondent and that the Disputed Domain Name was previously registered in the name of an entity called Privacy Admin Gee Whiz Domains Privacy Service and that the true registrant of the Disputed Domain Name is in fact Gee Whiz Domains Privacy Service since the DNS information for the Disputed Domain Name has not changed despite the current registrant being reflected as the Respondent. The Complainant then continues to indicate that all the registrants identified previously and currently in connection with the Disputed Domain Name are aliases or business entities owned and controlled by one Gregory Ricks who has admitted in court proceedings that he is a principal of Gee Whiz Domains Privacy Service. The Complainant submits that other WIPO Panels have acknowledged that Mr Ricks is the actual registrant behind domain names owned by Gee Whiz Domains Privacy Service as well as other names including Nevis Domains Motherboard and Express Corporation. The WIPO Panels, to which the Complainant refers in support of its contention that the Respondent has previously been held to lack rights or legitimate interest in respect of the domain names in issue, refer to the Respondent as Ricks Gee Whiz Domains Privacy Service, Nevis Domains and Express Corporation. None of these decisions make reference to the Respondent on record; and
d) The Respondent does not operate a business under any name consisting of or incorporating “hilrom”.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith and it provides four arguments in support of its contention, namely:
1. That the use of the Complainant’s mark in connection with a pay-per-click site is evidence of bad faith;
2. That the Respondent disrupts the business of the Complainant on the basis that since the Respondent acts in opposition to the Complainant, offering the same goods or services as the Complainant, by diverting potential customers of the Complainant to the Respondent’s website by using a name which is virtually identical to the Complainant’s trade mark, disrupts the Complainant’s business;
3. By diverting traffic through confusion with the Complainant’s trade mark and by attempting to attract for commercial gain Internet users to the website to which the Disputed Domain Name resolves by creating a likelihood of confusion with the Complainant’s well-known HILL-ROM trade mark; the fact that the Complainant had prior dealings with the Respondent due to the fact that Gregory Ricks had previously expressly acknowledged the Complainant’s ownership rights in the HILL-ROM trade mark by virtue of a settlement entered into between the parties following the filing of a dispute concerning the registration of the domain name <hillrom.com> by Express Corporation, and despite the settlement agreement not to adopt use of or seek registration for any domain name that includes HILL-ROM or any variation thereof, the Disputed Domain Name was registered.
4. The Complainant contends lastly that there is a pattern of preventing trade mark owners from registering corresponding domain names by the registrant which constitutes evidence of bad faith. The Complainant lists a number of decisions where Panels have ordered transfer of domain name registrations which the Complainant argues belongs to the Respondent. Reference is made to a list of cases which include the following respondents: Gee Whiz Domains Privacy Service; Gregory Ricks; Nevis Domains and Express Corporation. There is no specific reference to the Respondent in this case.
The Complainant requested that the Disputed Domain Name be transferred to it.
The Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove:
i) That the Disputed Domain Name is identical or confusingly similar to the mark in which it has rights;
ii) That the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
iii) That the Disputed Domain Name has been registered and is being used in bad faith.
In accordance with paragraph 14(b) of the Rules the Panel will draw such inferences from the Respondent’s Default as it considers appropriate. This will include the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds on the evidence that the Complainant itself and through its affiliated companies owns both registered and common law rights in the trade mark HILL-ROM.
The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s HILL-ROM trade mark, the only difference being the omission of the extra letter “l” and the hyphen from the Disputed Domain Name. The Panel finds that this does not assist the Respondent in escaping a finding of confusing similarity. The first requirement of paragraph 4(a) of the Policy is satisfied.
Given the circumstances of this case, the Panel considers that the Respondent’s use of the Disputed Domain Name is not in connection with a bona fide offering of goods and services, such as to confer on the Respondent rights or legitimate interests for the purposes of the Policy. On the contrary, its use of the Disputed Domain Name takes unfair advantage of the reputation of the Complainant’s HILL-ROM trade mark and of the Disputed Domain Name’s identity to or confusing similarity with that trade mark, in order to divert Internet users seeking information about the Complainant and its goods and services to the Respondent’s website and the goods and services promoted through it.
The Panel further finds that the Respondent is not commonly known by the Disputed Domain Name, that it is not making legitimate noncommercial or fair use of the Disputed Domain Name and that it is not authorized by the Complainant to use the Disputed Domain Name. There is no other basis on which the Respondent could claim to have rights or legitimate interests in the Disputed Domain Name in this case. The Panel does not however agree with the Complainant’s contentions that the fact that other Panels have found lack of rights or legitimate interests by what clearly seems to be aliases or related entities belonging to the same owner, namely Gregory Ricks, as support or contentions in this regard.
The Panel holds that the second requirement of paragraph 4(a) of the Policy is satisfied.
The Panel finds on the evidence that the Complainant has not made a case that the Complainant had prior dealings with the Respondent or that a pattern of registering corresponding domain names by the Respondent could be made out. The Respondent in this matter is indicated as Private Whois Service. In order to succeed on the ground of paragraph 4(a)(iii) of the Policy, it is necessary for the Complainant to make out a case that the Respondent on record has made a pattern of registering domain names on behalf of the parties. In the circumstances of this case, it is not sufficient to indicate that there is a link between this Respondent and the other respondents in connection with which such a finding had previously been made.
Nevertheless, the Panel agrees with the Complainant. There is sufficient evidence of registration and use in bad faith to support the third element required in order to succeed with the Complaint. The Panel finds that the Respondent is using the Disputed Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship and affiliational endorsement of the Respondent’s website and the products and services offered or promoted through it. In the Panel’s view, Internet users seeking information about the Complainant’s healthcare services and medical equipment are liable to be diverted by confusion between the Disputed Domain Name and the Complainant’s mark to the Respondent’s website where services and products relating to various goods and services are offered and promoted for commercial gain and in which the Respondent no doubt shares. The Panel also finds that the actions of the Respondent disrupt the business of the Complainant.
In accordance with paragraph 4(b)(iii) and paragraph 4(b)(iv) of the Policy, these circumstances constitute evidence of registration and use of the Disputed Domain Name in bad faith. There is no evidence displacing this presumption. Thus the Panel finds that the third requirement of paragraph 4(a) of the Policy is satisfied.
For all the aforegoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <hilrom.com> be transferred to the Complainant.
Charné Le Roux
Sole Panelist
Dated: November 11, 2010