national arbitration forum

 

DECISION

 

My Health Direct, Inc. v. Roosa Arvio

Claim Number: FA1001001301310

 

PARTIES

Complainant is My Health Direct, Inc. (“Complainant”), represented by Jennifer L. Gregor, of Godfrey & Kahn, S.C., Wisconsin, USA.  Respondent is Roosa Arvio (“Respondent”), Finland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <myhealthdirect.net>, registered with Uk2 Group Ltd.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2010.  With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.

 

On January 13, 2010, Uk2 Group Ltd. confirmed by e-mail to the National Arbitration Forum that the <myhealthdirect.net> domain name is registered with Uk2 Group Ltd. and that Respondent is the current registrant of the name.  Uk2 Group Ltd. has verified that Respondent is bound by the Uk2 Group Ltd. 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 20, 2010, a Written Notice of the Complaint, setting a deadline of February 9, 2010 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@myhealthdirect.net by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <myhealthdirect.net> domain name is identical to Complainant’s MY HEALTH DIRECT mark.

 

2.      Respondent does not have any rights or legitimate interests in the <myhealthdirect.net> domain name.

 

3.      Respondent registered and used the <myhealthdirect.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, My Health Direct, Inc., is a provider of online services designed to improve access to healthcare.  Complainant owns a trademark registration for its MY HEALTH DIRECT mark with the United States Patent and Trademark Office (“USPTO”) in association with its operation of online marketplaces for sellers of healthcare products and services (Reg. No. 3,720,151 issued December 1, 2009).  Complainant has used the mark commercially since at least 2006.

 

Respondent, Roosa Arvio, registered the <myhealthdirect.net> domain name on September 20, 2009.  The disputed domain name resolves to a website claiming to be associated with a company called “My Health Direct Inc.”  The disputed domain name’s website purportedly provides Internet users with the opportunity to make medical payments to a variety of associated medical providers, as well as to enroll in the company’s bill payment service or contact the company by entering the Internet user’s name, mailing address and email address.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence of its trademark registration for the MY HEALTH DIRECT mark (Reg. No. 3,720,151 issued December 1, 2009).  Although the registration date for Complainant’s mark is subsequent to the date of Respondent’s registration of the disputed domain name, the Complainant filed the application for registration of its MY HEALTH DIRECT mark on December 21, 2005, a date which substantially predates Respondent’s registration of the disputed domain name on September 20, 2009. The Panel finds that, for the purposes of Policy ¶ 4(a)(i) and establishing Complainant’s rights in the mark, the relevant date to be considered is the filing date of the trademark registration.  See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).  Therefore, Complainant has established its rights in the MY HEALTH DIRECT mark pursuant to Policy ¶ 4(a)(i).

 

Respondent’s <myhealthdirect.net> domain name is identical to Complainant’s MY HEALTH DIRECT mark pursuant to Policy ¶ 4(a)(i).  Respondent’s disputed domain incorporates Complainant’s mark in its entirety, differing only in the deletion of spaces between words and the addition of the generic top-level domain (“gTLD”) “.net.”  The Panel finds that these minor differences are insufficient to distinguish the disputed domain name from Complainant’s mark, especially when the disputed domain name incorporates Complainant’s mark in full. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).  Therefore, the Panel finds that Respondent’s <myhealthdirect.net> domain name is identical to Complainant’s MY HEALTH DIRECT mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.           

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have any rights or legitimate interests in the disputed domain name.  Once a prima facie case has been established by Complainant, the burden then shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).  The Panel finds that Complainant has adequately established a prima facie case in these proceedings.  Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name.  The Panel, however, elects to consider the evidence in the record in light of the Policy ¶ 4(c) factors to determine if Respondent has any rights or legitimate interests in the disputed domain name.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).

 

Complainant argues that Respondent is neither commonly known by nor authorized to use the disputed domain name.  The Panel finds that the WHOIS information for the disputed domain name does not identify registrant as the disputed domain name but instead lists the registrant as “Roosa Arvio.”  Thus, there is no evidence showing that Respondent is commonly known by the disputed domain.  Complainant states that Respondent is not authorized to use the disputed domain name by Complainant.  Pursuant to Policy ¶ 4(c)(ii), therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Respondent’s disputed domain name resolves to a website purporting to be associated with Complainant and to provide online bill payment services for various affiliated medical providers.  As Respondent’s website claims to be associated with Complainant and provides medical-related services like Complainant, the respondent appears to be presenting itself as being associated with Complainant, an action known as “passing off.”  The Panel finds that Respondent’s attempt to pass itself off as being associated with Complainant and capitalize on Internet users’ confusion or inability to distinguish Respondent’s website from Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

Complainant contends that Respondent uses the disputed domain name to operate a phishing scheme that lures unsuspecting Internet users into providing their personal information in exchange for the completion of bill payments or in exchange for employment offers.  See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Nat. Arb. Forum Dec. 13, 2007) (“[T]here is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant.  This fraudulent use [is] known as ‘phishing . . ..’”).  The Panel finds that Respondent’s phishing activities are further evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy       ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent is using the disputed domain name to pass itself off as being associated with Complainant, presumably for profit, as unsuspecting Internet users may be deceived into providing personal information.  The Panel finds that Respondent’s efforts to ensnare and subsequently profit from and even cause harm to confused Internet users seeking Complainant constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).

 

Respondent’s use of the disputed domain name that is likely to confuse or mislead Internet users in order to perpetuate phishing activities and fraud is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

       

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <myhealthdirect.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  March 2, 2010

 

 

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