Laboratory Corporation of America Holdings v. Joey Eringman
Claim Number: FA2012001926124
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Joey Eringman (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <labcorpcovid.com> and <labcorp-covid.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.
Dr. Reinhard Schanda 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 <labcorpcovid.com> and <labcorp-covid.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 December 29, 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@labcorpcovid.com, postmaster@labcorp-covid.com. Also on December 29, 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.
A timely Response was received and determined to be complete on December 29, 2020.
On January 4, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Reinhard Schanda 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant provides healthcare diagnostic services, including testing for the COVID-19 virus. Complainant has rights in the LABCORP mark through its registrations with the United States Patent and Trademark Office (“USPTO”). (e.g. Reg. 2,000,799, registered Sep. 17, 1996; Reg. 2,249,939, registered Jun. 1, 1999). Complainant contends that Respondent’s <labcorpcovid.com> and <labcorp-covid.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and adds the generic or descriptive term “covid”, and/or a hyphen, as well as the “.com” generic top-level domain (“gTLD”).
Complainant further contends that Respondent lacks rights and legitimate interests in the <labcorpcovid.com> and <labcorp-covid.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its LABCORP mark in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead offers the disputed domain names for sale.
Complainant finally contends that Respondent registered and uses the <labcorpcovid.com> and <labcorp-covid.com> domain names in bad faith. Respondent offers the disputed domain names for sale. Respondent attempts to divert internet users from Complainant’s official website to the disputed domain names’ resolving websites.
B. Respondent
Respondent agrees with Complainant’s request that the disputed domain names be transferred. The Panel notes the <labcorpcovid.com> and <labcorp-covid.com> domain names were registered on Dec. 8, 2020.
The Panel finds that:
(1) The domain names <labcorpcovid.com> and <labcorp-covid.com> are confusingly similar to Complainants’ registered trademarks.
(2) The Respondent has not established rights or legitimate interests in the domain names <labcorpcovid.com> and <labcorp-covid.com>.
(3) The Respondent has registered and is using the domain names <labcorpcovid.com> and <labcorp-covid.com> 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.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
As mentioned above, the Respondent consents to transfer of the disputed domain name to the Complainant. But the Complainant, anticipating this tactic of the Respondent, specifically asked that the Panel make findings under each of the three UDRP elements. Accordingly, before addressing the merits of this domain name dispute, the Panel first considers whether, in these circumstances, it should even make a substantive determination, or instead simply order the transfer of the disputed domain name – the latter being the desire of the Respondent.
Paragraph 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) considers whether a UDRP panel can decide a case based on a respondent’s consent to transfer:
“Where parties to a UDRP proceeding have not been able to settle their dispute prior to the issuance of a panel decision using the “standard settlement process” described above, but where the respondent has nevertheless given its consent on the record to the transfer (or cancellation) remedy sought by the complainant, many panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).
In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights. ”
The Panel has decided to proceed to a substantive determination for the following reasons:
1. The Respondent has not conceded that the three elements of paragraph 4(a) have been satisfied.
2. The Complainant has not agreed to a consent decision.
3. The Panel is of the view that Respondent’s motivation is not, to avoid the Panel wasting time and resources on an undisputed matter but, rather, to minimize its negative UDRP track record.
4. The Panel is also persuaded that there is a broader interest in reaching and recording a substantive determination so that the conduct of the Respondent in this case, if found to have registered and used the disputed domain name in bad faith, can be taken into account by other future UDRP panels, e.g., in connection with assessment of patterns of conduct under paragraph 4(b)(iii) of the Policy.
5. Additionally, the Panel has sympathy with those panelists who have taken the view that once a complainant has invoked the Policy and paid the fee, it is entitled to what it paid for (see Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909; Davis+Henderson, Limited Partnership v. Whois Privacy Protection Service, Inc./Demand Domains Inc., WIPO Case No. D2008-1162).
6. Finally, proceeding to a proper consideration of the three elements of paragraph 4(a) of the Policy reduces the risk of an injustice.
For these reasons, the Panel proceeds to issue findings and make a determination of this dispute on the merits.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant contends that since both domain names were registered on the same day, and are held by a Registrant named „Joey Eringman“, and resolves to generally the same content and layout, the disputed domain names are likely held by the same Respondent.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), with reference to consolidation at paragraph 4.11.2, includes the following paragraph:
„Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).“
In the present case, the following elements indicate that the two disputed domain names are under common control: (1) the names of the registrants are identical; (2) the addresses of the registrants are identical; (3) the telephone numbers of the registrants are identical; (4) the email addresses of the registrants are identical; (5) the two disputed domain names point to similar websites; (6) each website displays the same phone numbers for customer service at the bottom of each page; (7) the registrar of the disputed domain names is the same; (8) the registry admin ID of the two domain names are identical.
Accordingly, applying the abovementioned principles to the facts in this case, and in the absence of any response from the Respondents, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds evidence of such common control to be appropriate to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
Complainant claims rights in the LABCORP mark through its registrations with the USPTO. (e.g. Reg. 2,000,799, registered Sep. 17, 1996; Reg. 2,249,939, registered Jun. 1, 1999). Registration with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Therefore, the Panel finds Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <labcorpcovid.com> and <labcorp-covid.com> domain names are identical or confusingly similar to Complainant’s LABCORP mark. Under Policy ¶ 4(a)(i), the addition of generic or descriptive terms that relate to a Complainant’s business, along with a hyphen and the “.com” gTLD is generally insufficient in differentiating a disputed domain name from the mark it incorporates. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The disputed domain names incorporate the LABCORP mark in its entirety, add the generic or descriptive word “covid”, which arguably relates to Complainant’s testing services, and add the “.com” gTLD to the end of the mark. One disputed domain name spaces the words “labcorp” and “covid” with a hyphen. Therefore, the Panel finds Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the <labcorpcovid.com> and <labcorp-covid.com> domain names, nor has Complainant authorized or licensed Respondent to use its LABCORP mark in the disputed domain names. Under Policy ¶ 4(c)(ii), relevant WHOIS information, among other evidence, is generally sufficient in demonstrating that a Respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark). The WHOIS of record identifies Respondent as “Joey Eringman”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its LABCORP mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent does not use the <labcorpcovid.com> and <labcorp-covid.com> domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), offering a disputed domain name for sale or lease is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Complainant provides screenshots of the disputed domain names’ resolving websites, which redirect to websites advertising the domain names for sale. Therefore, the Panel finds Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <labcorpcovid.com> and <labcorp-covid.com> domain names in bad faith. Under Policy ¶ 4(b)(i), offering a disputed domain name for sale, likely for greater out of pocket costs than the domain names were paid for, is generally considered evidence of bad faith. See Airbnb, Inc. v. Super Privacy Service LTD c/o Dynadot, FA 1821386 (Forum Jan. 10, 2019) (“Complainant argues that Respondent registered and uses the <airbnbb.com> domain name in bad faith by offering it for sale. The Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).”); see also loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i). ”).
The Panel recalls Complainant’s screenshots of the disputed domain names’ resolving websites, which currently offer the disputed domain names for sale. Complainant argues that Respondent is likely attempting to capitalize on the salience of the current COVID-19 pandemic by attempting to sell the disputed domain names at a far greater cost than what it paid for them. Therefore the Panel finds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(i).
Complainant argues Respondent registered and uses the <labcorpcovid.com> and <labcorp-covid.com> domain names in bad faith. Attempting to attract internet users for commercial gain to a disputed domain name’s resolving website, instead of Complainant’s actual website is generally considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (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). Complainant argues that Respondent is attempting to divert internet users from Complainant’s <labcorp.com> website about COVID to the disputed domain names, where Respondent offers the domain names for sale. The Panel shares this view and finds that Respondent uses the disputed domain names in bad faith under Policy ¶ 4(b)(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 <labcorpcovid.com> and <labcorp-covid.com> domain names be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
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