Availity, L.L.C. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2207002003519
Complainant is Availity, L.L.C. (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <availityproviderlogin.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2022; the Forum received payment on July 8, 2022.
On July 14, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <availityproviderlogin.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 July 15, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@availityproviderlogin.com. Also on July 15, 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 August 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the AVAILITY mark established by its ownership of the portfolio of service mark registrations described below and extensive use of the AVAILITY mark, including on its website at <www.availity.com> to identify its services providing communications media to the healthcare industry, such as insurance processing and medical practice support services.
Complainant submits that the disputed domain name <availityproviderlogin.com> is confusingly similar to Complainant’s AVAILITY mark because it consists of the AVAILITY mark in its entirety, adding only the generic terms “provider” and “login” and the generic Top-Level Domain Name (“gTLD”) extension <.com>.
Complainant argues that it is well established that adding a generic term to another’s trademark does not avoid a finding of confusingly similarity. See Arvest Bank Corp. v. Vestris, FA 2001001880777 (Feb. 23, 2020) (addition of generic term “investment” to registered ARVEST mark to form arvestinvestment.com did not avoid confusing similarity).
Complainant submits that it is particularly so in casu with the disputed domain name, incorporating the terms “provider” and “login”, because healthcare providers log in regularly to Complainant’s website to access Complainant’s insurance processing and medical practice support services.
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name, arguing that Respondent has no right to use Complainant’s AVAILITY mark as part of the confusingly similar disputed domain name.
Complainant argues that it has maintained continuous use of the AVAILITY mark, including online use, since 2002, and its United States Registration No. 2,667,172 was filed on June 1, 2001, more than seventeen years prior to Respondent’s registration of the disputed domain name on July 19, 2018.
Further, Complainant asserts that it has never provided authorization of any kind, including through the grant of a license, which would permit Respondent to use the AVAILITY mark. See Telstra Corp., Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Feb. 18, 2000) (Respondent had no rights or legitimate interests in domain name in question in part because “the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of those marks . . . .”)
Furthermore, according to the Registrar’s response to Forum’s verification request for details of the registrant of the disputed domain name, the Registrar has confirmed that Respondent’s name is “Carolina Rodrigues/Fundacion Comercio Electronico”. Complainant submits that Respondent’s name has nothing in common with the disputed domain name and multiple panels have found that a claim to having a legitimate interest in a domain name is inherently suspect where the respondent’s name sounds nothing like the domain name at issue. See Tommy John, Inc. v. Domain Administrator, FA 1912001876247 (Forum Jan. 26, 2020) (“Domain Administrator/Fundacion Privacy Services” name had nothing in common with TOMMY JOHN trademark).
In addition, Complainant alleges that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or other legitimate use, but instead, as shown by the printout of the website to which the disputed domain redirects, Respondent is using the disputed domain name for the purpose of redirecting the user to various sites that purport to encourage the Internet user to install software or an extension to software for security purposes. In this regard Complainant refers to the screen capture of Respondent’s website, which is exhibited in an annex to the Complaint,
Complainant avers that upon information and belief, when the user clicks on the links to install software or an extension, malware is downloaded onto the user’s computer, and argues that this type of illegal use of a domain name is not a legitimate interest. See Morgan Stanley v. Foo, FA 1607001682650 (Aug. 11, 2016) (finding that use of morgastanley.com to redirect to users to a website that attempts to install malware was not a legitimate interest).
Complainant adds that in very similar circumstances, it has been determined in proceedings under the Policy that, where the registrant of the domain name <officeavaility.com> was using such name to deceive users into installing malware, such owner did not have any rights or legitimate interests in respect of such domain name. See Availity, L.L.C. v. Above.com Domain Privacy, FA 2011001919308 (Forum Nov. 27, 2020)
Complainant next alleges that the disputed domain name was egistered and is being used in bad faith, arguing firstly that Respondent has registered and is using the disputed domain name to redirect to websites that, upon information and belief, are used for the purpose of installing malware on the user’s computer.
Complainant argues that such use of a domain name confusingly similar to a well-known trademark to trick users into installing malware onto their computers constitutes bad faith registration. See Cardinal Health, Inc. v. Zhangwei, FA 2008001908971 (Sept. 17, 2020) (use of cardinalhealth.co to redirect users to a site that appears to trick users into installing malware on their computers was bad faith registration).
Secondly, Complainant submits that it is well established that actual knowledge of the prior registration of an identical or confusingly similar mark is a factor supporting a finding of bad faith. Barney’s Inc. v. BNY Bulletin Bd., WIPO Case No. D2000-0059.
Thirdly, Complainant argues that Respondent registered the disputed domain name through a privacy service, and it is well established that registration through a privacy service creates the presumption that the name was registered and is being used in bad faith, and bad faith can be found based on this ground alone. Harry Winston, Inc. v. [Redacted]/Winsfon, FA 1804001781418 (Forum May 14, 2018); iFinex Inc. v. Sergey Valerievich Kireev, FA 1709001750446 (Forum Nov. 7, 2017); Academy Ltd. v. domain Administrator, FA 1304001496511 (Forum May 31, 2013).
Fourthly, Complainant repeats that in very similar circumstances, a panel established under the Policy has found that registration and use of the domain name <officeavaility.com> to deceive customers into installing malware was bad faith registration and use of the domain name and ordered that the name be transferred to Complainant. See Availity, L.L.C. v. Above.com Domain Privacy, FA 2011001919308 (Forum Nov. 27, 2020).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant provides a range of services to business using the AVAIITY mark for which it owns a portfolio of service mark registrations including the following
· United States registered service mark AVAILITY, registration number 2,667,172, registered on the Principal Registered on December 24, 2002, for services in international class 42;
· United States registered service mark AVAILITY, registration number 3,671,801, registered on the Principal Register on August 25, 2009, for services in international class 42;
· United States registered service mark AVAILITY, registration number 3,721,388, registered on the Principal Register on December 8, 2009, for services in international class 35;
· United States registered service mark AVAILITY, registration number 3721396, registered on December 8, 2009, for services in international class 36;
· United States service mark registration AVAILITY, registration number 4573221, registered on the Principal Register on July 22, 2014, for services in international class 35;
· United States service mark AVAILITY and Design, registration number 4569172, registered on July 15, 2014, for services in international class 42.
The disputed domain name was registered on July 17, 2018, and resolves to a webpage that redirects the user to various sites that purport to encourage the user to install software or an extension to software for security purposes.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the response of the Registrar to the request by the Forum for the registration details for the disputed domain name.
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 provided uncontested evidence to prove that on the balance of probabilities it has rights in the AVAILITY mark, established by its ownership of its portfolio of service mark registrations described above and extensive use of the mark in providing services to the healthcare industry.
The disputed domain name consists of Complainant’s AVAILITY mark in its entirety, in combination with the terms “provider” and “login” and the gTLD extension <.com>.
Complainant’s AVAILITY mark is the dominant, and only distinctive, element in the disputed domain name. The elements terms “provider” and “login” are descriptive and the gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name
As the elements “provider” and “login” and the gTLD extension have no distinguishing character, their presence in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s AVAILITY mark.
This Panel finds therefore that the disputed domain name is confusingly similar to the AVAILITY mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant has maintained continuous use of the AVAILITY mark, including online use, since 2002, and its United States Registration No. 2,667,172 was filed on June 1, 2001, more than seventeen years prior to Respondent’s registration of the availityproviderlogin.com domain name on July 19, 2018;
· Complainant has never provided authorization of any kind, including through the grant of a license, which would permit Respondent to use the AVAILITY mark;
· according to the response to verification of the registration details of the disputed domain name, the Registrar has confirmed that Respondent’s name is “Carolina Rodrigues/Fundacion Comercio Electronico.”
· Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or other legitimate use;
· instead, as shown by the printout of the website to which the disputed domain redirects, a copy of which is attached as an exhibit in an annex to the Complaint, Respondent is using the disputed domain name for the purpose of redirecting the Internet users to various sites that purport to encourage the user to install software or an extension to software for security purposes, but upon information and belief, when the user clicks on the links to install software or an extension, malware is downloaded onto the user’s computer;
· such illegal use of the disputed domain name does not establish a legitimate interest.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <availityproviderlogin.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC Panelist
Dated: August 10, 2022
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