Laboratory Corporation of America Holdings v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2012001926123
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <labcorpbiling.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 23, 2020; the Forum received payment on December 23, 2020.
On December 23, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <labcorpbiling.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 December 28, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2021 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@labcorpbiling.com. Also on December 28, 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 20, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant operates a global health care diagnostics company. Complainant has rights in the LABCORP trademark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,000,799, registered Sep. 17, 1996). Respondent’s <labcorpbiling.com> domain name is confusingly similar to Complainant’s LABCORP trademark, only differing by the addition of the generic term “billing” with one “L” missing, and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <labcorpbiling.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LABCORP trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet users to a parked page that hosts links to Complainant’s competitors.
Respondent registered and uses the <labcorpbiling.com> domain name in bad faith. Respondent has displayed a pattern of bad faith registration as shown by numerous negative UDRP decisions. Additionally, Respondent’s use of the LABCORP trademark within the disputed domain name creates a likelihood of confusion which disrupts Complainant’s business interests. Respondent also registered the disputed domain name to attract users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,000,799 LABCORP (word), registered September 17, 1996 for services in classes 35 and 42;
No. 2,249,939 LabCorp (fig), registered June 1, 1999 for services in classes 35 and 42;
No. 4,053,848 LABCORP BEACON (word), registered November 8, 2011 for services in class 35;
No. 4,053,850 LABCORP BEACON (word), registered November 8, 2011 for services in class 42;
No. 4,053,851 LABCORP BEACON (word), registered November 8, 2011 for services in class 44;
No. 4,116,076 LABCORP MEDWATCH (word), registered March 20, 2012 for services in class 44; and
No. 4,195,514 LABCORP TOUCH (word), registered August 21, 2012 for services in class 44.
The disputed domain name <labcorpbiling.com> was registered on December 7, 2020.
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 asserts rights in the LABCORP trademark through its registration with the USPTO. Registration of a trademark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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).”). Complainant provides evidence of registration with the USPTO (e.g., Reg. 2,000,799, registered Sep. 17, 1996). Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <labcorpbiling.com> domain name is confusingly similar to Complainant’s LABCORP trademark, differing only by the addition of the generic term “billing” with one “L” missing, and the “.com” gTLD. Addition of a generic or descriptive term and a gTLD does not necessarily negate confusing similarity between a domain name and a trademark under Policy ¶ 4(a)(i). 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.”). Therefore, the Panel find that the disputed domain name is confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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”).
The Complainant argues that Respondent lacks rights and legitimate interests in the <labcorpbiling.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LABCORP trademark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record indicates that the registrant of the disputed domain name used a privacy service. However, the registrar verified that the registrant of the disputed domain name was “Carolina Rodrigues / Fundacion Comercio Electronico,” Respondent in this proceeding. The Panel may therefore clearly find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the <labcorpbiling.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, but rather diverts Internet users to a parking page which hosts links related to Complainant’s services. Using a disputed domain to host links to various competing or unrelated services does not constitute a bona fide offering of goods or services, nor does it equate to a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Complainant provides a screenshot of the resolving parking page for the disputed domain name which contains links with names such as “Quest Diagnostic Labs,” “Medical Insurance,” and other services similar to Complainant’s services. The Panel therefore agree that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
The Complainant claims that Respondent registered and uses the <labcorpbiling.com> domain name in bad faith based on Respondent having over one hundred previous UDRP decisions against it, evincing a pattern of bad faith. Previous UDRP decisions can be used to show a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)). Complainant provides evidence of the previous UDRP decisions against Respondent. Therefore, the Panel find that Respondent indeed and clearly has a pattern of bad faith registration, and therefore also find bad faith registration and use in this case under Policy ¶ 4(b)(ii).
Complainant further alleges that Respondent registered and uses the <labcorpbiling.com> domain name in bad faith because Respondent uses a confusingly similar domain name to host links related to Complainant’s services, disrupting Complainant’s business for Respondent’s financial gain. Hosting hyperlinks that lead to a complainant’s competitors displays bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). As noted above, the Complainant provides a screenshot of the resolving parking page for the disputed domain name, which displays hyperlinks to webpages potentially in competition with Complainant. The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <labcorpbiling.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 25, 2021
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