Medica Health Plans v. Robert K. Mueller / This domain is for Sale
Claim Number: FA2012001924073
Complainant is Medica Health Plans (“Complainant”), represented by Joel D. Leviton of STINSON LLP, Minnesota, USA. Respondent is Robert K. Mueller / This domain is for Sale (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medcamember.com>, registered with Dynadot, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2020; the Forum received payment on December 7, 2020.
On December 8, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <medcamember.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 December 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@medcamember.com. Also on December 10, 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 January 3, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant is a non-profit health plan provider that serves communities throughout the United States.
Complainant has rights in the MEDICA mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <medcamember.com> domain name is identical or confusingly similar to Complainant’s MEDICA mark as it merely deletes a single letter from the MEDICA mark and the <medicamember.com> domain name used by Complainant, and adds a generic top level domain.
Respondent lacks rights or legitimate interests in the <medcamember.com> domain name. Respondent is not commonly known by the at-issue domain name nor has Respondent been authorized by Complainant to use the MEDICA mark. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses the domain name to host competitive pay-per-click hyperlinks.
Respondent registered and uses the <medcamember.com> domain name in bad faith. Respondent uses the at-issue domain name to divert internet users to a parked page containing competitive hyperlinks. Furthermore, Respondent had actual knowledge of Complainant’s rights to the MEDICA mark prior to registering the domain name based on Respondent’s use of Complainant’s mark. Finally, Respondent engaged in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MEDICA.
Complainant’s rights in the MEDICA mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the domain to address a parked page displaying third party advertising links some of which compete with Complainant.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the MEDICA mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(I). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Furthermore, the at-issue domain name consists of an overt misspelling/mistyping of Complainant’s MEDICA trademark where the letter “i” is omitted, the suggestive term “member” is added, and all is followed by the top level domain name “.com.” The differences between the at-issue <medcamember.com> domain name and Complainant’s MEDICA trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <medcamember.com> domain name is confusingly similar to Complainant’s MEDICA trademark. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <medcamember.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Robert K. Mueller / This domain is for Sale” and the record before the Panel contains no evidence that otherwise tends to show that Respondent is commonly known by the <medcamember.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, Respondent uses the at-issue domain name to direct internet users to advertisements for third parties including some that are in competition with Complainant. One such link nominally refers to “Medica” but instead addresses a webpage that shows advertising for health plans that compete with MEDICA. Respondent’s use of the domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
Respondent’s <medcamember.com> domain name was registered and used in bad faith. As discussed below, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First and as mentioned above regarding rights and legitimate interest, Respondent’s confusingly similar <medcamember.com> domain name is used to address a parked webpage with links to third party advertisements some of which are in competition with Complainant. Such use of the confusingly similar <medcamember.com> domain name shows Respondent’s bad faith registration and use of the domain name per Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting).
Next, Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical error(s) or misspelling(s) into a trademark or related website address and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when attempting to browse to content related to the domain name’s target trademark or to a related website and/or, 2) in viewing the domain name will confuse the domain name with its target trademark/website. The domain name registrant may then use the confusion to inappropriately capitalize on the target mark’s goodwill by taking advantage of internet traffic that was actually meant for the trademark holder. Likewise, the registrant of the typosquatted confusingly similar domain name may use the domain name to host fraudulent email that pretends to be from the trademark holder in furtherance of a phishing scheme or scam. Typosquatting, in itself, indicates bad faith under Policy ¶ 4 (a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent formed the at-issue domain name by removing one character in Complainant’s MEDICA trademark and adding the term “member” and a top-level domain name. The domain name is easily confused with Complainant’s official website at <medicamember.com>. Upon glancing at Respondent’s <medcamember.com> domain name there is little doubt that some portion of internet user will mistake it for <medicamember.com>. Similarly, some percentage of internet users will predictably but inadvertently omit the “i” when browsing to Complainant’s <medicamember.com> website. Doing so will result in such users landing on Respondent’s website and being presented with links to advertisements benefiting Complainant’s competition. Respondent’s typosquatting demonstrates Respondent’s bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered <medcamember.com> knowing that Complainant had trademark rights in the MEDICA mark. Respondent’s prior knowledge is evident from Respondent’s overt misspelling of Complainant’s trademark in the at-issue domain name. Further, it is clear that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <medcamember.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <medcamember.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 4, 2021
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