MedImpact Healthcare Systems, Inc. v. Quan Zhongjun / Juanita Co.
Claim Number: FA2204001992813
Complainant is MedImpact Healthcare Systems, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon Rees Scully Mansukhani LLP, California, USA. Respondent is Quan Zhongjun / Juanita Co. (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medimpacy.com>, registered with Cosmotown, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 19, 2022; the Forum received payment on April 19, 2022.
On April 29, 2022, Cosmotown, Inc. confirmed by e-mail to the Forum that the <medimpacy.com> domain name is registered with Cosmotown, Inc. and that Respondent is the current registrant of the name. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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 April 29, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2022 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@medimpacy.com. Also on April 29, 2022, 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 May 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in MEDIMPACT. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar “if not identical” to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides pharmacy and healthcare services by reference to the trademark, MEDIMPACT, which it has registered with the United States Patent and Trademark Office (“USPTO”) as, inter alia, Reg. No. 3,910,782 from January 25, 2011;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark; and
3. the disputed domain name was registered on March 28, 2022 and resolves to a website that carries the following links: “Buy Medicine Online”, “Pharmacy Services” and “Medical Billing Program”.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant provides proof of its registration of the trademark with the USPTO, a national trademark authority and so the Panel finds that it has established rights in MEDIMPACT.
Complainant submits that the “domain name is confusingly similar, if not identical, to Complainant’s registered mark.”
The disputed domain name differs from the trademark by replacement of the letter “T” by “Y” and addition of the gTLD, “.com”. Countless UDRP decision have held that in most cases the gTLD can be ignored for the purposes of comparison of a domain name with a trademark. However, even disregarding the gTLD, it is obvious that the compared terms are not identical as suggested. Further, the assertion of confusing similarity rests on the submission that “[i]n the case at bar, Respondent substitutes the “t” in the MEDIMPACT® mark with a “y”—which is right next to the “t” key on the keyboard.”
The Panel must underscore, once more and for the benefit of future complainants, that an assertion of typosquatting, even if accepted by a panel, is not automatic proof of confusing similarity. The typosquatted term may be confusingly similar to the relevant trademark, but very clearly it may be quite different, aurally and/or visually.
If an assertion of typosquatting is accepted, all that can be said is that a respondent set out to create a risk of confusion. No hard conclusions can be drawn about similarity which would apply to every case. All that may be inferred is that the respondent hopes that the malformed iteration of the intended word or mark will go unnoticed by the internet user. To that extent only, the respondent relies on a level of similarity between the terms in the hope that the error will go unnoticed.
The Complaint cites the decision of Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) which is at least articulate on this point, stating that “[w]here a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”
The Panel finds that there is a reasonable chance that “medimpacy” may pass for the trademark without notice. Accordingly, the Panel is prepared to find that the domain name is confusingly similar to the trademark. It follows that Complainant has satisfied the first element of the Policy.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).
In consequence of these proceedings the Registrar disclosed the name of the underlying domain name registrant as “Quan Zhongjun”. There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
The evidence in support of the Complaint includes the declaration of Yuo-Fong C. Amato, counsel of record for Complainant, who states that she “accessed Respondent’s <medimpacy.com> and clicked on each of the three options. Attached hereto as Exhibit “E” are true and correct copies of screenshots of the <medimpact.com> website.”
The Panel assumes that the reference to <medimpact.com> is itself a typographical error since the relevant exhibit is the site resolving from the disputed domain name. It carries links as described above, all being to services which broadly compete with those offered by Complainant under the trademark.
The use of the disputed domain name clearly does not constitute a bona fide offering of goods or services, or a legitimate non-commercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, 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 onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds that Respondent’s conduct falls under paragraph 4(b)(iv) above. The Panel has already found the domain name to be confusingly similar to the trademark. The likelihood is that the resolving website exists for commercial gain, most likely by way of referral fees. In terms of the Policy, the Panel finds that Respondent’s use of the domain name was intended to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of that website.
The Panel finds that the third and final element of the Policy is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <medimpacy.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: May 30, 2022
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