Laboratory Corporation of America Holdings v. Gavin Zhang
Claim Number: FA2010001917721
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Gavin Zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <labcorp-billing.com> and <labcorp-com-billing.com> (‘the Domain Names’), registered with GoDaddy.com, LLC.
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.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2020; the Forum received payment on October 20, 2020.
On October 21, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <labcorp-billing.com> and <labcorp-com-billing.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 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@labcorp-billing.com, postmaster@labcorp-com-billing.com. Also on October 22, 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 17, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The information disclosed by the Registrar has shown that the Domain Names are commonly owned/controlled by a single Respondent.
A. Complainant
Complainant is the owner of the mark LABCORP registered, inter alia, in the USA for laboratory related goods and services including patient billing services with first use of the LABCORP mark recorded as 1995.
The Domain Names registered in 2018 are confusingly similar to the Complainant’s LABCORP mark adding only hyphens, the generic terms ‘billing’ and/or ‘com’ and the gTLD “.com” which does not prevent said confusing similarity.
The Respondent does not have rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant.
The Domain Names have been used for web sites purporting to offer competing billing services to the Complainant using the Complainant’s url <www.lapcorp.com/billing> on those websites and referring to the Complainant and/or using its logo showing actual knowledge of the Complainant, its business, rights and services. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is registration and use in opportunistic bad faith attracting Internet users for commercial gain including advertising and possibly phishing. The Respondent has been the subject of other adverse rulings under the UDRP.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark LABCORP registered, inter alia, in the USA for laboratory related goods and services including patient billing services with first use of the LABCORP mark recorded as 1995.
The Domain Names registered in 2018 have been used for sites purporting to offer competing billing services referring to the Complainant and using the Complainant’s url <www.labcorp.com/billing> and/or its logo.
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 Domain Names in this Complaint combine the Complainant’s LABCORP mark (registered, inter alia, in the USA for laboratory related goods and services with first use recorded as 1995), the generic terms ‘billing’ and/or ‘com’, hyphen or hyphens and the gTLD “.com.”
The addition of generic terms and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).). Nor does the addition of a hyphen. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).).
Accordingly, the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The use of the Domain Names is commercial and so cannot be legitimate noncommercial use.
It is clear from the evidence that the Respondent has used the sites attached to the Domain Names to promote competing billing services which are not connected with the Complainant. The usage of the Complainant’s url and/or logo and reference to the Complainant’s trade mark which has a significant reputation in relation to billing services is not fair as the web site does not make it clear that there is no commercial connection with the Complainant and the Respondent appears to refer to itself, its business and/or its services using LABCORP the mark and/or the Complainant’s logo in a misleading way passing itself off as or as authorized by the Complainant. As such this cannot amount to the bona fide offering of goods and services. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s trademarks in this way. As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
As determined above the Respondent's use of the Domain Names is commercial and it is using them to make profit from competing services not associated with the Complainant in a confusing manner. The use of the Complainant’s url and/or logo and references to the Complainant on the web site attached to the Domain Names makes it clear that the Respondent was aware of the significance of the LABCORP name and the Complainant and its rights, business and services.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users by creating likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or the Respondents web sites or services offered on them. This also appears designed to disrupt the business of a competitor. See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA 1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii).); see also CAN Financial Corporation v. William Thomson/CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that Respondent had engaged in bad faith under Policy ¶ 4(b)(iv) by using a confusingly similar domain name to attract internet users where it offered competing services).
The Panel did not see any actual evidence of phishing.
However, the Respondent has been the subject of other adverse decisions under the Policy.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith under paragraphs ¶¶¶ 4(b)(ii), (iii) and (iv) and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <labcorp-billing.com> and <labcorp-com-billing.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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