Laboratory Corporation of America Holdings v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2101001929840
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 NAMES
The domain names at issue are <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.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 January 26, 2021; the Forum received payment on January 26, 2021.
On January 27, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.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 January 29, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 18, 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@labcorplinc.com, postmaster@labcorpwellconnect.com, postmaster@mylabcorps.com. Also on January 29, 2021, 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 February 24, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant operates the world’s leading healthcare diagnostics company. Complainant has rights in the LABCORP and LABCORP LINK trademarks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., LABCORP – Reg. 2,000,799, registered Sept. 17, 1996; LABCORP LINK – Reg. 5,456, 838, registered May 1, 2018). Respondent’s <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names are confusingly similar to Complainant’s LABCORP and LABCORP LINK trademarks, only differing by changing the “K” in the LABCORP LINK trademark to a “C” along with adding the “.com” generic top-level domain (“gTLD”) in the case of <labcorplinc.com>. In the case of the <labcorpwellconnect.com> domain name, Respondent merely added the generic terms “well” and “connect” with the “.com” gTLD. In the final case, Respondent merely placed the generic term “my” ahead of the LABCORP trademark along with adding the “.com” gTLD in the <mylabcorps.com> domain name.
Respondent lacks rights and legitimate interests in the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names as it is not commonly known by any of the disputed domain names and is neither an authorized user or licensee of the LABCORP or LABCORP LINK trademarks. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to redirect visitors to landing pages which provide links to competitors of Complainant. Additionally, Respondent offers the disputed domain names for sale.
Respondent registered and uses the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names in bad faith. Respondent offers the disputed domain names for sale. Additionally, Respondent has over 100 previous UDRP decisions issued against them, evincing a pattern of bad faith registration. Respondent also registered the disputed domain names to attract commercial gain by creating confusion as to the sponsorship and affiliation of the disputed domains. Complainant also claims that Respondent’s inactive holding of the disputed domain names is further evidence of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,000,799 LABCORP (word), registered on September 17, 1996 for services in Intl Classes 35 and 42
- No. 2,249,939 LABCORP (fig), registered on June 1, 1999 for services in Intl Classes 35 and 42
- No. 4,053,848 LABCORP BEACON (word), registered November 8, 2011 for services in Intl Class 35
- No. 4,053,850 LABCORP BEACON (word), registered November 8, 2011 for services in Intl Class 42
- No. 4,053,851 LABCORP BEACON (word), registered November 8, 2011 for services in Intl Class 44
- No. 4,116,076 LABCORP MEDWATCH (word), registered March 20, 2012 for services in Intl Class 44
- No. 4,195,514 LABCORP TOUCH (word), registered August 21, 2012 for services in Intl Class 44
- No. 5,456,838 LABCORP LINK (word), registered May 1, 2018 for services in Intl Classes 35, 42, 44
- No. 5,456,839 LABCORP LINK (fig), registered May 1, 2018 for services in Intl Classes 35, 42, 44
The disputed domain names were all registered on January 4, 2021.
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 Complainant asserts rights in the LABCORP and LABCORP LINK trademarks through 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 Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides evidence of its registration with the USPTO (e.g., LABCORP – Reg. 2,000,799, registered Sep. 17, 1996; LABCORP LINK – Reg. 5,456, 838, registered May 1, 2018). Thus, the Panel finds that Complainant has rights in the trademarks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names are confusingly similar to Complainant’s LABCORP and LABCORP LINK trademarks. The Panel notes that the <labcorplinc.com> domain name is nearly identical to Complainant’s LABCORP LINK trademark, merely changing the “K” in the trademark to a “C” and appending the “.com” gTLD. Changing a letter and adding a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Lucasfilm Entertainment Company Ltd. LLC and Lucasfilm Ltd. LLC v George Ring / DN Capital Inc., FA 1673825 (Forum June 7, 2016) (finding that “Respondent’s <lukasfilm.com> domain name incorporates the LUCASFILM mark and merely substitutes a phonetically identical ‘k’ for the ‘c,’” and is therefore confusingly similar). Further noting that the <labcorpwellconnect.com> and <mylabcorps.com> domain names are both confusingly similar to the LABCORP trademark, only adding the generic terms “well” and “connect” with the “.com” gTLD in the first case, and the generic term “my” along with the same gTLD in the latter instance. Addition of generic terms along with a gTLD also does not necessarily negate confusing similarity between a domain name and a trademark under Policy ¶ 4(a)(i). See 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.”). Thus, the Panel finds the disputed domain names are confusingly similar to Complainant’s trademarks pursuant to 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 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant argues that Respondent lacks rights and legitimate interests in the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names as it is not commonly known by any of the disputed domain names and is neither an authorized user or licensee of the LABCORP or LABCORP LINK trademarks. 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 Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information on record indicates the registrant utilized a privacy service when registering the disputed domain names. However, the registrar verified that the disputed domain names were registered by “Carolina Rodrigues / Fundacion Comercio Electronico,” Respondent in this proceeding. Additionally, there is nothing in the record to refute Complainant’s assertion that it never authorized Respondent to use the LABCORP or LABCORP LINK trademarks. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant maintains that Respondent does not use the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent hosts a parked website which displays links related to Complainant’s business, some of which links to Complainant’s competitors. Such use does not qualify as a bona fide offering of good or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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).”). Complainant provides a screenshot of each of the disputed domain names resolving to one of these parked websites, notably hosting links labeled “Lab Testing,” “Drug Testing,” “Lab Results,” and “Labcorp”. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶¶ 4(c)(i) and (iii).
Complainant also argues that Respondent lacks rights and legitimate interests in the disputed domain names as Respondent is offering the domain names for sale. Offering a confusingly similar domain name for sale is indeed further evidence of a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See AOL Inc. v. YourJungle Privacy Protection Service aka Whois Agent, FA1312001533324 (Forum Jan. 17, 2014) (“Respondent has offered the <aoljobsweek.com> domain name for sale to the general public, which demonstrates that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Complainant provides evidence of Respondent offering the disputed domains for sale. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
The Complainant claims that Respondent registered and uses the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names in bad faith as Respondent offered them for sale. Offering a confusingly similar domain name for sale evinces bad faith pursuant to Policy ¶ 4(b)(i). 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).”). As previously noted, Complainant provides screenshots of the disputed domain name’s resolving to a web page offering the domains for sale. The Panel therefore finds that Respondent registered and uses the disputed domains in bad faith under Policy ¶ 4(b)(i).
Complainant also points to over 100 previous UDRP decisions against the Respondent, along with the multiple domain names in the current case, as evidence of a pattern of bad faith registration. Per Policy ¶ 4(b)(ii), previous UDRP decisions may demonstrate a pattern of bad faith registration. See Twentieth Century Fox Film Corporation v. oranges arecool XD / orangesarecool.com, FA1405001558045 (Forum July 10, 2014) (finding that the respondent’s registration of multiple domain names in the instant proceeding and prior adverse UDRP history was evidence of bad faith registration and use of the domain names under Policy ¶ 4(b)(ii)). As noted, in this case, Complainant has identified over 100 previous instances of Respondent being made to transfer a disputed domain name after Panelists found bad faith. The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered and uses the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names to attract commercial gain. Particularly, hosting a parked website which displays links related to Complainant’s business and redirecting Internet users to Complainant’s competitors displays bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provides screenshots of the disputed domain names hosting links related to Complainant’s business which presumably lead to financial gain for Respondent. Thus, the Panel finds that Respondent registered and uses the disputed domains for bad faith attraction to commercial gain under Policy ¶ 4(b)(iv).
Additionally, Complainant points out that Respondent’s inactive holding of the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names are further evidence of bad faith registration and use. Previous Panels have held that failure to make active use of a disputed domain name may constitute bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Here, the disputed domain names, as noted above, have resolved to websites which either host hyperlinks related to Complainant’s business, or to pages which offer the disputed domain names for sale. In both instances, the websites lack any substantive content. The Panel therefore agrees that the Respondent has engaged in inactive holding of the disputed domain names, and therefore finds bad faith pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <labcorplinc.com>, <labcorpwellconnect.com>, and <mylabcorps.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 11, 2021
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