Northshorelij.org

The timeline behind northshorelij.org

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION North Shore - Long Island Jewish Health System, Inc. v. NorthshoreLIJ in Russia Claim Number: FA0705000983034 PARTIES Complainant is North Shore - Long Island Jewish Health System, Inc. (“Complainant”), represented by Kenneth P. George, of Amster, Rothstein & Ebenstein, 90 Park Avenue, New York, NY 10016. Respondent is NorthshoreLIJ in Russia (“Respondent”), g. Lytkarino, 25 - 52, Lyubereckii raion, Moskovskaya oblast' 140082, Russian Federation. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <northshorelij.org>, registered with Wild West Domains, Inc. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 15, 2007. On May 14, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <northshorelij.org> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On May 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@northshorelij.org by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On June 8, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <northshorelij.org> domain name is confusingly similar to Complainant’s NORTH SHORE-LIJ mark. 2. Respondent does not have any rights or legitimate interests in the <northshorelij.org> domain name. 3. Respondent registered and used the <northshorelij.org> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, North Shore-Long Island Jewish Health System, Inc., has used the NORTH SHORE-LIJ mark in connection with hospital, hospice, and home care services since at least 1997. Complainant has also used the NORTH SHORE-LIJ mark as the name of its healthcare system incorporating many services, including fifteen hospitals, hospice and home care services, a medical research institute, and many other health-related facilities. Complainant has provided services under the NORTH SHORE-LIJ mark to many patients, including over one million patients in 2005 alone. Complainant has registered the <northshorelij.com>, which it has used for seven years for the promotion of its health care services, receiving over 2.8 million visitors in 2006. Respondent registered the <northshorelij.org> domain name on November 27, 2003. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which resolves to another website located at <whitehouse.org>. The website contains political commentary about the United States White House and current governmental leaders with the website’s title being, “The White House: The Officious Website of George W. Bush.” This website also sells various political merchandise and hosts banner advertisements. In response to Complainant’s attempts to have Respondent transfer or sell the disputed domain name to Complainant, Respondent suggested on two occasions via e-mail that Complainant buy the <northshorelij.org> domain name. On the third occasion, Respondent offered to sell the disputed domain name for €250,000.00. Respondent stated via e-mails that “we receive significant income from the content the domain provides as well as commission on items from the gift shop” and “the income from this domain is more than EU1,000.00/week.” Respondent also states in one e-mail that it intends to use the <northshorelij.org> domain name to display adult-oriented material “very soon.” DISCUSSION 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." 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 Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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. Identical and/or Confusingly Similar Complainant is not required under Policy ¶ 4(a)(i) to hold a registered trademark to establish rights in the NORTH SHORE-LIJ mark. Common law rights are sufficient to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”). Complainant has established common law rights in the NORTH SHORE-LIJ mark through extensive and continual use of the mark since 1997. The Panel finds that Complainant has established substantial consumer recognition and secondary meaning in the NORTH SHORE-LIJ mark sufficient to establish Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Respondent’s <northshorelij.org> domain name is confusingly similar to Complainant’s NORTH SHORE-LIJ mark as it incorporates Complainant’s mark in its entirety and merely omits the hyphen from the mark. Respondent’s <northshorelij.org> domain name creates further confusion as it is identical to Complainant’s <northshorelij.com> domain name except for the different generic top-level domain (“gTLD”). The Panel finds that the omission of the hyphen does not sufficiently negate the confusingly similar aspects of Respondent’s domain name under Policy ¶ 4(a)(i). See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Additionally, Respondent adds the gTLD “.org” to Complainant’s mark. Panels have previously held, as the Panel holds here, that the addition of a gTLD is irrelevant in considering whether a domain name is confusingly similar or not. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant alleges that Respondent does not have rights or legitimate interests in the <northshorelij.org> domain name. Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show that it has rights or legitimate interests in the <northshorelij.org> domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel assumes that Respondent lacks rights or legitimate interests here because Respondent has failed to respond to the Complaint. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will consider all available evidence before determining whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). Complainant alleges that Respondent is using the <northshorelij.org> domain name to redirect Internet users to Respondent’s website which resolves to another website containing political commentary and banner ads while also selling merchandise. Complainant provides e-mails from Respondent where Respondent admits to earning income from the content displayed as well from commissions for the sale of the merchandise. The Panel finds that Respondent’s use of the <northshorelij.org> domain name to display banner ads and earn income from the content and sale of merchandise is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name). Additionally, Complainant provides several e-mails indicating that Respondent has offered to sell the <northshorelij.org> domain name to Complainant. Complainant alleges that Respondent offered to sell the disputed domain name for the sum of €250,000.00. The Panel finds that Respondent’s offer to sell the disputed domain name demonstrates that Respondent lacks rights or legitimate interests in the <northshorelij.org> domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). Finally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <northshorelij.org> domain name. While Respondent’s WHOIS information identifies Respondent as “NorthShoreLIJ in Russia,” Respondent offers no evidence indicating that Respondent was commonly known by the disputed domain name prior to registration of it or that Respondent is in fact commonly known by the <northshorelij.org> domain name beyond the registration of the domain name. Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered and is using the <northshorelij.org> domain name to redirect Internet users to Respondent’s website which resolves to a website displaying banner ads and selling political merchandise for the profit of Respondent. Respondent indicates in its e-mail that it is using the <northshorelij.org> domain name to obtain income from the content and the commissions from sales of merchandise via the disputed domain name. The Panel finds that because Respondent’s disputed domain name is confusingly similar to Complainant’s NORTH SHORE-LIJ mark, Internet users may become confused as to Complainant’s affiliation with the website. Respondent has admitted via e-mails that it is profiting from this confusion in the amount of at least €1,000 per week. As a result, the Panel finds that such uses constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant also contends that Respondent has offered to sell the <northshorelij.org> domain name to Complainant three times, the last time asking for €250,000.00 for the transfer of the disputed domain name to Complainant. While Complainant offered to buy the domain name, Respondent suggested selling the domain name prior to any offer by Complainant. Therefore, the Panel finds that Respondent’s offer to sell the domain name in addition to the actual amount asked for demonstrates bad faith registration and use under Policy ¶ 4(b)(i). See Matmut v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy ¶ 4(b)(i) where the respondent stated in communication with the complainant that it would be ready to sell the <matmut.com> domain name registration for $10,000); see also Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding the respondent’s offer to sell the domain name for $100,000 constitutes bad faith). Finally, Complainant contends, based on the e-mails received, that Respondent intends to use the <northshorelij.org> domain name to display adult-oriented material. The Panel finds that Respondent’s intent to display adult-oriented material on a website confusingly similar to Complainant’s mark is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the respondent’s threat to develop the domain name in question into a adult-oriented content site supported a finding of bad faith); see also Jon-Don Prods., Inc. v. CarpetSolutions, FA 95293 (Nat. Arb. Forum Aug. 24, 2000) (finding bad faith where the respondent threatened to use the domain name for adult-oriented material). The Panel finds the Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <northshorelij.org> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: June 12, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.