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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MultiCare Health System v. Margo Sobol

Case No. D2012-2348

1. The Parties

Complainant is MultiCare Health System of Tacoma, Washington, United States of America (“U.S.”), represented by Stokes Lawrence, P.S., U.S.

Respondent is Margo Sobol of Sunnyvale, California, U.S.

2. The Domain Name and Registrar

The disputed domain name <multicarepharmacy.com> is registered with Melbourne IT Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 28, 2012. On November 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2012, 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 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 December 6, 2012.

On December 6, 2012, the Center received an e-mail communication from the e-mail address corresponding to the Respondent’s Administrative Contact.

On December 11, 2012, the Center sent an e-mail communication to the Parties inquiring the Complainant to consider requesting a suspension of the proceedings to explore a possible settlement between the Parties.

On December 12, 2012, the Center received an e-mail communication from the Complainant requesting the suspension of the proceedings until January 11, 2013.

n January 10, 2013, the Center received an e-mail communication from the Complainant requesting the reinstitution of the proceedings. Accordingly, the new due date for the Respondent to submit a Response was January 25, 2013. The Respondent did not submit any Response.

The Center appointed Sandra J. Franklin as the sole panelist in this matter on February 6, 2013. 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 was founded in 1882 and is a major provider of health care services in the Tacoma, Washington area of the U.S. Complainant owns trademark registrations with the U.S. Patent and Trademark Office (the “USPTO”) for its MULTICARE (U.S. registration number 3,478,890), MULTICARE CONNECT (U.S. registration number 3,309,206), MULTICARE EXPRESS (Washington State registration number 52042), and MULTICARE BETTER CONNECTED (Washington State registration number 52877) trademarks, showing use of MULTICARE dating back to 1983. Complainant has been using the <multicare.com> domain name since 1994.

The disputed domain name <multicarepharmacy.com> was registered on May 25, 2006. The disputed domain name resolves to a parked page displaying the notice “under construction.”

5. Parties’ Contentions

A. Complainant

1. Respondent’s <multicarepharmacy.com> domain name is confusingly similar to Complainant’s MULTICARE trademark.

2. Respondent does not have any rights or legitimate interests in the <multicarepharmacy.com> domain name.

3. Respondent registered and is using the <multicarepharmacy.com> domain name in bad faith.

B. Respondent

On December 6, 2012, the Center received an e-mail communication from the e-mail address corresponding to the Respondent’s Administrative Contact. However, Respondent did not submit a response.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Case No. 0095095 (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

A. Identical or Confusingly Similar

The Panel finds that Complainant’s rights in its MULTICARE family of marks are established through its USPTO registrations for the purposes of Paragraph 4(a)(i) of the Policy. See Expedia, Inc. v. Elia Tan, NAF Case No. 0991075 (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy 4(a)(i)”).

The disputed domain name is confusingly similar to Complainant’s MULTICARE trademark, as it wholly incorporates the trademark, and merely adds the descriptive word “pharmacy” and the generic top-level domain (“gTLD”) “.com”. The term “pharmacy” is particularly suggestive of Complainant, which operates in the health care industry. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy / BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429 (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); and Walgreen Company v. Jon Reegy, WIPO Case No. D2011-1621 (finding that the addition of the suffix “pharmacy” in the disputed <walgreens-pharmacy.net> domain name increases, rather than eliminates, the similarity between respondent and complainant because the complainant’s main business includes pharmacy services).

The Panel finds that Complainant has satisfied Paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the <multicarepharmacy.com> domain name under Paragraph 4(a)(ii) of the Policy, the burden of production shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, NAF Case No. 0741828 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Paragraph 4(a)(ii) of the Policy before the burden of production shifts to the respondent to show that it does have rights or legitimate interests in a domain name); and AOL LLC v. Jordan Gerberg, NAF Case No. 0780200 (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names”).

Complainant alleges that Respondent does not posess any trademark rights in, and is not commonly known by the disputed domain name. The WhoIs information indicates that Respondent is “Margot Sobol”, which does not show that Respondent is commonly known by the <multicarepharmacy.com> domain name under Paragraph 4(c)(ii) of the Policy. See M. Shanken Communications Inc. v. WORLDTRAVELERSONLINE.COM, NAF Case No. 0740335 (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Paragraph 4(c)(ii) of the Policy based on the WhoIs information and other evidence in the record); and IndyMac Bank F.S.B. v. Grant Eshback d/b/a eMit Mortgage, Inc, NAF Case No. 0830934 (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). The Panel similarly finds that Respondent is not known by the disputed domain name under Paragraph 4(c)(ii) of the Policy.

Complainant states that Respondent has not used the disputed domain name as an active website since it was registered in 2006, and argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <multicarepharmacy.com> domain name, where the disputed domain name simply leads to a parked page. The Panel agrees and finds that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of under Paragraphs 4(c)(i) and 4(c)(iii) of the Policy. See Michael Gerard Tyson v. Dreamseller Inc. – In Stealth Mode, J. Williams DomainManager, WIPO Case No. D2011-1758 (no bona fide offering of goods or services established for domain name that has consistently been parked); and American Broadcasting Companies, Inc. v. Merrill Sech, NAF Case No. 0893427 (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).

The Panel finds that Complainant has satisfied Paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent has failed to make an active use of the <multicarepharmacy.com> domain name for more than six years, an indication of Respondent’s bad faith. Passive holding of a domain name has been deemed bad faith by past panels. See American Broadcasting Companies, Inc. v. Merrill Sech, NAF Case No. 0893427 (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); and International Business Machines Corporation v. Linux Security Systems srl, WIPO Case No. DRO2010-0004 (finding “passive holding” can constitute bad faith.)

Complainant argues that Respondent must have known of Complainant’s rights in its MULTICARE trademark, given the long use of that trademark in the health care industry. Complainant also states that Respondent is the owner of a pharmacy in California and likely intended to use the <multicarepharmacy.com> to divert Internet users away from Complainant. The Panel agrees and finds that Respondent knew of Complainant’s long-standing rights in its MULTICARE trademark and thus registered and used the disputed domain name in bad faith. See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios c/o Tamer Malekames, NAF Case No. 1031703 (holding that respondent registered a domain name in bad faith under Paragraph 4(a)(iii) of the Policy after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

The Panel finds that Complainant has satisfied Paragraph 4(a)(iii) of the Policy.

7. Decision

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 <multicarepharmacy.com> be transferred to the Complainant.

Sandra J. Franklin
Sole Panelist
Date: February 20, 2013

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