DiseaseTrak, Inc. v. American MediConnect, Inc. c/o Joseph Sameh
Claim Number: FA0801001130480
Complainant is DiseaseTrak, Inc. (“Complainant”), represented by David
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <diseasetrack.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 15, 2008.
On January 16, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <diseasetrack.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@diseasetrack.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <diseasetrack.com> domain name is confusingly similar to Complainant’s DISEASETRAK mark.
2. Respondent does not have any rights or legitimate interests in the <diseasetrack.com> domain name.
3. Respondent registered and used the <diseasetrack.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, DiseaseTrak, Inc., is an Internet heath care management provider. Complainant’s services allow members of the public as well as a variety of health providers to manage or monitor patient health through the use of questionnaires, disease information, as well as doctor-patient communication. Since 2003, Complainant has operated under the DISEASETRAK mark (Ser. No. 77/096,915 filed February 1, 2007), which has been applied for trademark status with the United States Patent and Trademark Office (“USPTO”). Complainant has owned and operated the <diseasetrak.com> domain name in conjunction with its operations since July 4, 2004. Complainant has invested substantial expenditures in marketing its Internet health management services and establishing the goodwill that surrounds the mark.
Respondent registered the <diseasetrack.com> domain name on October 28, 2004. Respondent is currently using the disputed domain name merely as a pass-through vehicle to divert Internet users to Respondent’s competing website.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant need not assert registration of a mark with a
federal agency such as the USPTO in order to assert sufficient rights in the
mark to grant UDRP standing pursuant to Policy ¶ 4(a)(i). See
Complainant has established sufficient common law rights in
the DISEASETRAK mark to achieve UDRP standing pursuant to Policy ¶
4(a)(i). Complainant has alleged that
the mark has become sufficiently distinct due to its usage in conjunction with
Complainant’s Internet health management operations for almost 5 years. In addition, Complainant has expended
substantial investment in the mark throughout such time in order to develop its
operations within the healthcare industry.
Finally, Complainant has conducted its operations through the
<diseasetrak.com> domain name, which is further evidence of common law
rights in the mark since the domain name is identical to Complainant’s
mark. Therefore, the Panel finds that
Complainant’s use of the mark sufficiently establishes its rights for the
purposes of Policy ¶ 4(a)(i). See Keppel TatLee Bank v. Taylor,
D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of
[KEPPEL BANK] in connection with its banking business, it has acquired rights
under the common law.”); see also Nat’l Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the
complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark).
Respondent’s <diseasetrack.com>
domain name incorporates Complainant’s DISEASETRAK mark while merely inserting
“c” into “trak,” as well as adding the generic top-level domain “.com.” Generally the addition of generic top-level
domains is irrelevant under a Policy ¶ 4(a)(i) analysis. Moreover, the addition of a letter from the
mark usually fails to render a disputed domain name distinct under Policy ¶ 4(a)(i). Therefore, the
Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com>
are confusingly similar to the complainant’s mark, ICQ).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <diseasetrack.com> domain name. Because Complainant has set forth a prima facie case supporting its allegations, Respondent carries the burden to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); 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).
Respondent is currently using the <diseasetrack.com> domain name as a vehicle designed
merely to divert Internet users to Respondent’s competing website. The Panel finds that such use cannot be said
to constitute a bona fide offering of
goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). See MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent has offered no evidence
in the record to show that it is commonly known by the disputed domain
name. Moreover, the WHOIS domain name
registration information lists the registrant as “American MediConnect, Inc.
c/o Joseph Sameh,” which does not resemble the disputed domain name. Therefore, the Panel finds that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(c)(ii). See Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); see also G.D. Searle & Co.
v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of
Complainant’s mark there must be strong evidence that Respondent is commonly
known by the disputed domain name in order to find that Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). However, there is no evidence
on record, and Respondent has not come forward with any proof to establish that
it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <diseasetrack.com> domain name is designed to divert Internet users to Respondent’s competing website. The Panel therefore finds that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii), because Respondent’s primary purpose was to disrupt Complainant’s business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent’s use of the disputed domain name operates to divert Internet users seeking Complainant’s services to Respondent’s competing website. Such diversion is accomplished through the disputed domain name’s intentional addition of the letter “c” to “trak,” which constitutes an attempt to manipulate obvious consumer typographical errors to Respondent’s advantage. Respondent has thus created a likelihood of confusion regarding the source and affiliation of the disputed domain name and Respondent’s corresponding website. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <diseasetrack.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 29, 2008
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