Loyal Health, Inc. v. Tim Godry
Claim Number: FA2009001915283
Complainant is Loyal Health, Inc. (“Complainant”), represented by Eric A. Larson of Morris, Manning & Martin, LLP, Georgia, USA. Respondent is Tim Godry (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loyalhealth.org> (the “disputed domain name”), registered with 1API GmbH.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 30, 2020; the Forum received payment on September 30, 2020.
On October 1, 2020, 1API GmbH confirmed by e-mail to the Forum that the <loyalhealth.org> disputed domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 October 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2020 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@loyalhealth.org. Also on October 12, 2020, 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 November 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides healthcare data management services. Complainant has common law rights in the LOYAL word trademark based on its use in commerce since 2017. Respondent’s <loyalhealth.org> disputed domain name is confusingly similar to Complainant’s LOYAL common law mark since it includes the mark as the primary term, simply adding the dictionary term “health” and the “.org” generic Top-Level Domain (“gTLD”). In addition, Complainant has rights in the LOYAL design mark also used in connection with healthcare data management services. The LOYAL word mark and the LOYAL design mark will hereinafter collectively be referred to as the “LOYAL Mark”.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor has Respondent been authorized by Complainant to register any variant of the LOYAL Mark in a domain name. Respondent is not making a bona fide offering of goods or services via the disputed domain name, nor a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant and conduct an e-mail phishing scheme.
Respondent registered and uses the <loyalhealth.org> disputed domain name in bad faith. Respondent attracts users for commercial gain by impersonating Complainant in an e-mail phishing scheme in an attempt to acquire confidential information from unsuspecting individuals who are conducting a job search. Further, Respondent had actual knowledge of Complainant’s rights in the LOYAL Mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law trademark rights in the LOYAL Mark. The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s LOYAL Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the Disputed Domain Name and that Respondent registered and is using the Disputed Domain Name 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”).
The Panel finds that the disputed domain name is confusingly similar to the LOYAL Mark. The Panel concurs that Complainant has common law rights in the LOYAL Mark based on continuous use of the mark in commerce since 2017. Registration of a mark is not necessary under Policy ¶ 4(a)(i) if a complainant can establish common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant must show that the mark has developed secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan, 22, 2018) (Complainant established common law rights with evidence of secondary meaning, including “annual sales of $50 million” and “advertisements of Complainant’s FIND YOUR BALANCE bracelets from Google searches, advertisements for Complainant’s goods found on social media, and a certification from Mark Izen, Complainant’s manager.”). Complainant provides evidence of secondary meaning such as the use of the LOYAL Mark on its website, reference to the LOYAL Mark in the press, and presence of the LOYAL Mark in Internet searches.
Respondent’s disputed domain name is confusingly similar to the LOYAL Mark under Policy ¶ 4(a)(i). The disputed domain name incorporates the LOYAL Mark, adds the dictionary term “health”, and then is followed by the gTLD “.org“.
Adding a dictionary term and a gTLD does not distinguish a disputed domain name from a trademark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark; see Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LOYAL Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in furtherance of an email phishing scheme. Use of a disputed domain name to pass off as a complainant in connection with phishing is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy¶ 4(c)(iii)”). Here, Complainant claims that Respondent posts fake employment notices and poses as Complainant through email to collect personal information from applicants. Complainant provides copies of emails and forms sent by Respondent while masquerading as Complainant. Thus, the Panel concludes that Respondent does not use the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the <loyalhealth.org> disputed domain name in bad faith.
First, Respondent uses the disputed domain name to impersonate Complainant in connection with an e-mail phishing scheme in which the Respondent attempts to pass off as Complainant. Such conduct is emblematic of bad faith pursuant to Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Respondent posts fake employment notices and poses as Complainant by means of fraudulent emails in an effort to collect confidential information from job applicants.
Second, the panel finds that Respondent registered the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the LOYAL Mark. Actual knowledge of a complainant’s mark prior to registering a domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact that 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.”). Thus, it is evident that Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loyalhealth.org> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: November 16, 2020
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