Health Care Service Corporation v. CK Ventures, Inc.
Claim Number: FA1103001378486
Complainant is Health Care Service Corporation (“Complainant”), represented by Sean Garrison of Lewis and Roca LLP, Arizona, USA. Respondent is CK Ventures, Inc. (“Respondent”), Barbados.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dentermax.com>, registered with Fabulous.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2011; the National Arbitration Forum received payment on March 17, 2011.
On March 17, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <dentermax.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2011 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@dentermax.com. Also on March 23, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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" 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 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:
Complainant markets a dental network and related dental services and products.
Complainant owns service mark registrations for the DENTEMAX mark on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 1,570,223, issued December 5, 1989.
Respondent registered the <dentermax.com> on October 26, 2005.
The disputed domain name resolves to a pay-per-click website featuring links to the websites of enterprises offering dental services and products competing with the business of Complainant.
Respondent’s <dentermax.com> domain name is confusingly similar to Complainant’s DENTEMAX mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not authorized or licensed to use Complainant’s mark or to register domain names containing Complainant’s mark.
Respondent does not have any rights to or legitimate interests in the domain name <dentermax.com>.
Respondent registered and uses the disputed <dentermax.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the DENTEMAX mark for purposes of Policy ¶ 4(a)(i) by virtue of its service mark registrations with a national trademark authority, the USPTO. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that a complainant’s national trademark registration established its rights in a mark under Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for purposes of paragraph 4(a)(i) of the Policy whether a complainant’s mark is registered in a country other than that of a respondent’s place of business).
Respondent’s <dentermax.com> domain name is confusingly similar to Complainant’s DENTEMAX mark because the disputed domain name merely misspells Complainant’s mark by inserting the letter “r” and the generic top-level domain (“gTLD”) “.com.” These differences are insufficient to distinguish the domain name from the mark under the standards enunciated in the Policy. See Google, Inc. v. DkBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004):
The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).
See also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but renders the resulting domain name confusingly similar to a complainant’s mark).
Similarly, the addition of a gTLD to Complainant’s mark in forming the disputed domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Therefore, the Panel finds that Respondent’s <dentermax.com> domain name is confusingly similar to Complainant’s DENTEMAX mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the disputed domain name. Once Complainant has made out a prima facie case on this point, the burden shifts to Respondent pursuant to Policy ¶ 4(a)(ii) to demonstrate that it has rights to or legitimate interests in the disputed domain name. See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it does have rights or legitimate interests.
Complainant has adequately established a prima facie case under this head of the Policy. Because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we may presume that it lacks rights to or legitimate interests in the disputed domain name. See Am. Express Xo. 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.
We nonetheless elect to examine the evidence of record, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first note that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is not authorized or licensed to use Complainant’s mark or to register domain names containing Complainant’s mark. Moreover, the WHOIS information for the <dentermax.com> domain name indicates only that the registrant is “CK Ventures, Inc.,” which does not resemble the contested domain name. On this record, we must conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in the domain pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the domain name <coppertown.com>, and so had no rights to or legitimate interests in that domain, where there was no evidence in the record, including the WHOIS information, suggesting that that respondent was commonly known by the disputed domain).
We next observe that Complainant alleges, without objection from Respondent, that Respondent’s <dentermax.com> domain name resolves to a directory website, which promotes third-party dental plans, dental insurance services, and dental care in competition with Complainant through featured pay-per-click links. This use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that a respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain name to operate a website containing links to various competing commercial websites, which was not a use in connection with 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)).
Finally, Respondent is evidently capitalizing on a common misspelling of Complainant’s DENTEMAX mark to create a domain name which misdirects Internet users seeking Complainant’s online presence. Under Policy ¶ 4(a)(ii), this constitutes typo-squatting, which is evidence that Respondent lacks rights to and legitimate interests in the disputed domain name. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent “had engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of a complainant’s LTD COMMODITIES mark and that:
‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <dentermax.com> domain name resolves to a pay-per-click website that promotes dental services, dental plans, and dental insurance in competition with the business of Complainant. This disrupts Complainant’s business. The disruption of Complainant’s business in the manner alleged demonstrates bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 720601 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of disputed domain names pursuant to Policy ¶ 4(b)(iii) by, among other things, using them to operate a search engine with links to the products of a complainant and to the websites of that complainant’s commercial competitors); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a contested domain name to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)).
Additionally, Respondent’s evidently deliberate misspelling of Complainant’s DENTEMAX mark in forming the <dentermax.com> domain name makes clear Respondent’s intent to capitalize on a common typing mistake made by Internet users when searching for Complainant’s products online. In the circumstances here presented, we may comfortably presume that Respondent is compensated on a pay-per-click basis. Respondent’s efforts thus to mislead Internet users for its commercial gain constitutes evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant to its own website, likely profiting in the process); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006):
Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Furthermore, Respondent is engaged in the practice of typo-squatting through the use of the contested domain name. The practice of typo-squatting is itself evidence of bad faith registration and use of a domain name under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that a respondent’s registration and use of the <nextell.com> domain name was in bad faith because that domain name epitomized typo-squatting in its purest form). See also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the domain name <dermatologica.com> was a “simple misspelling” of a complainant’s mark DERMALOGICA, which indicated typo-squatting and therefore bad faith registration and use of the domain under Policy ¶ 4(a)(iii)).
For these reasons, the Panel finds that the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is, hereby, GRANTED.
Accordingly, it is Ordered that the <dentermax.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 28, 2011
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