Laboratory Corporation of America Holdings v. Mark Gavie
Claim Number: FA1905001842187
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Mark Gavie (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <labicorp.com>, registered with Web4Africa Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 9, 2019, Web4Africa Inc. confirmed by e-mail to the Forum that the <labicorp.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@labicorp.com. Also on May 10, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Laboratory Corporation of America Holdings, uses their mark LABCORP in connection with clinical and diagnostic consulting services. Complainant has rights in the LABCORP mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,000,799, registered Sep. 17, 1996). See Compl. Annex F. Respondent’s <labicorp.com> domain name is confusingly similar to Complainant’s LABCORP mark, as it includes the entire LABCORP mark, merely adding the letter “i” between “lab” and “corp,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <labicorp.com> domain name. Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the LABCORP mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name to engage in illegal activity by impersonating Complainant, using fraudulent emails seeking sensitive and personal financial information from unsuspecting recipients.
Respondent registered and is using the <labicorp.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s use of the disputed domain name to pass off as an employee of Complainant in order to send phishing emails demonstrates bad faith. Respondent’s addition of the letter “i” to an otherwise identical domain name constitutes typosquatting. Furthermore, Respondent had actual knowledge of Complainant’s rights in the LABCORP mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the trademark LABCORP based upon longstanding use of the mar and registration of the mark with the USPTO (e.g. Reg. No. 2,000,799, registered Sep. 17, 1996). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the LABCORP mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <labicorp.com> domain name is confusingly similar to the LABCORP mark, as it includes the entire LABCORP mark, merely adding the letter “i” between the words “lab” and “corp,” and adding the generic top-level domain (“gTLD”) “.com.” Generally, the addition of a letter and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). Here, Respondent added the letter “i” and the gTLD “.com” to Complainant’s mark when registering the disputed domain name. The Panel thus agrees with Complainant that the disputed domain name is confusingly similar to the LABCORP mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <labicorp.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the LABCORP mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Mark Gavie” and, in view of the lack of a Response or other submission by Respondent, there is no information on record to indicate that Respondent is known otherwise or that it was authorized to register a domain name with Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <labicorp.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <labicorp.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant contends that the disputed domain name instead to engage in illegal phishing activity by impersonating Complainant through fraudulent email that seek sensitive and personal financial information from unsuspecting recipients. Further, the disputed domain name automatically redirects users to Complainant’s own www.labcorp.com website as shown in the evidence submitted by Complainant. Use of a domain name to pass oneself off as an employee of a complainant in order to phish for sensitive user information does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, Complainant has attached a copy of Respondent’s use of the disputed domain name to send phishing emails while passing itself off as a senior employee of Complainant’s business. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <labicorp.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the LABCORP mark prior to registering the <labicorp.com> domain name. Generally, a respondent’s actual knowledge of a complainant’s rights in a mark may demonstrate bad faith under Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant argues that Respondent’s actual knowledge is demonstrated by its use of the disputed domain name to pass itself off as an employee of Complainant in furtherance of a fraudulent phishing scheme. The Panel agrees and finds that Respondent had actual knowledge of the LABCORP mark and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant next argues that Respondent’s bad faith is indicated by its use of the <labicorp.com> domain name to pass itself off as a senior employee of Complainant in order to send phishing emails seeking bank account information from recipients. Generally, use of a disputed domain name to pass oneself off as an employee of a complainant in order to further a fraudulent phishing scheme may demonstrate bad faith under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Here, the Panel notes that Complainant has attached examples of Respondent’s use of the disputed domain name to send phishing emails. The Panel thus finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Finally, Complainant asserts that Respondent’s bad faith is demonstrated by its act of typosquatting Complainant’s LABCORP mark when registering the nearly identical <labicorp.com> domain name. Generally, a respondent’s registration of a disputed domain name that introduces a typographical error in a complainant’s mark may demonstrate bad faith under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here, Respondent added the letter “i” to Complainant’s LABCORP mark when registering the disputed domain name. The Panel thus finds that, by engaging in typosquatting, Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <labicorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: June 4, 2019
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