Laboratory Corporation of America Holdings v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2103001936244
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 <pixlelabcorp.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 11, 2021; the Forum received payment on March 11, 2021.
On March 12, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pixlelabcorp.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 March 15, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@pixlelabcorp.com. Also on March 15, 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 April 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is the world’s leading health care diagnostics company, providing comprehensive clinical laboratory services throughout the world. Complainant has rights in the LABCORP mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,000,799, registered September 17, 1996).
2. Respondent’s <pixlelabcorp.com>[i] is confusingly similar to Complainant’s LABCORP mark as it fully incorporates Complainant’s LABCORP mark, merely adding the misspelled word “pixle,” which is part of another one of Complainant’s registered marks, and the gTLD “.com.”
3. Respondent lacks rights or legitimate interests in the <pixlelabcorp.com> domain name. Respondent is not commonly known by the domain name and Respondent has no right to own or use any domain name incorporating Complainant’s LABCORP Mark.
4. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses it in connection with competitive hyperlinks.
5. Furthermore, Respondent offers the domain name for sale.
6. Respondent registered and uses the <pixlelabcorp.com> domain name in bad faith. First, Respondent offers the domain name for sale. Additionally, Respondent has a history of bad faith registration.
7. Finally, Respondent uses the domain name in connection with competitive hyperlinks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LABCORP mark. Respondent’s domain name is confusingly similar to Complainant’s LABCORP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <pixlelabcorp.com> domain name and that Respondent registered and uses the domain name 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.
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 has rights in the LABCORP mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 2,000,799, registered September 17, 1996). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per 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.”). Therefore, Complainant has demonstrated rights in the LABCORP mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <pixlelabcorp.com> is confusingly similar to Complainant’s LABCORP mark as it fully incorporates Complainant’s LABCORP mark, merely adding the misspelled word “pixle,” which is part of another one of Complainant’s registered marks, and the gTLD “.com.” The addition of a misspelled descriptive term fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). Therefore, the <pixlelabcorp.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <pixlelabcorp.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <pixlelabcorp.com> domain name as Respondent is not commonly known by the domain name and Respondent has no right to own or use any domain name incorporating Complainant’s LABCORP Mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the <pixlelabcorp.com> domain name lists the registrant as “Carolina Rodrigues,” and Complainant argues there is no other evidence to suggest that Respondent was authorized to use the LABCORP mark. Therefore, the Panel holds that Respondent is not commonly known by the <pixlelabcorp.com> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <pixlelabcorp.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent offers it for sale and uses it in connection with competitive hyperlinks. Offering a domain name incorporating the mark of another for sale and using it to host competing hyperlinks is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). The record shows that the <pixlelabcorp.com> domain name is currently being offered for sale through Afternic at a price of $999. Complainant also provides a screenshot of Respondent’s resolving website which features linked advertisements, some of which promote products and services of competitors of Complainant, and through which the Respondent presumably receives click-through revenue. Therefore, Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <pixlelabcorp.com> domain name in bad faith as Respondent offers the domain name for sale and has a history of bad faith registrations. This can demonstrate bad faith per Policy ¶¶ 4(b)(i) and (ii). 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 Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The record shows that the <pixlelabcorp.com> domain name is offered for sale through Afternic at a price of $999. Additionally, Complainant has shown that there have been hundreds of UDRP decisions against Respondent, including over 100 Forum decisions. Therefore, the Panel holds that Respondent registered and uses the <pixlelabcorp.com> domain name in bad faith per Policy ¶¶ 4(b)(i) and (ii).
Complainant also contends Respondent registered the <pixlelabcorp.com> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the LABCORP mark prior to registration of the domain name based on the famous nature of the mark. Worldwide prominence of a mark can demonstrate actual knowledge of a complainant’s rights in a mark and show bad faith. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that considering Complainant’s worldwide reputation for clinical laboratory services under its LABCORP mark, it is reasonable to conclude that Respondent registered the <pixlelabcorp.com> domain name with full knowledge of Complainant’s rights in the LABCORP mark. Therefore, the Panel holds that Respondent registered the <pixlelabcorp.com> domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <pixlelabcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 21, 2021
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