Universal American Corp. v. Whois Privacy Protection Service, Inc. / Whois Agent
Claim Number: FA1106001392665
Complainant is Universal American Corp. (“Complainant”), represented by Barth X. deRosa of Dickinson Wright PLLC, Washington D.C., USA. Respondent is Whois Privacy Protection Service, Inc. / Whois Agent (“Respondent”), represented by Christina G. Radocha of Demand Domains, Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <todaysoption.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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 9, 2011.
On June 08, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <todaysoption.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@todaysoption.com. Also on June 13, 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.
A timely Response was received and determined to be complete on July 5, 2011.
The Response filed with the FORUM does not conform to ICANN Supplemental Rule 5(a), requiring that any and all annexes be submitted in a document separate from the Response. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panelist, however, at his discretion, has chosen to accept and consider the Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Management, Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
Complainant’s Additional Submission was timely received on July 7, 2011.
On July 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds a trademark, TODAY’S OPTIONS, which has been in use since August of 2003; registration of the mark was issued by the USPTO on July 27, 2005. Complainant purchased the domain name <todaysoptions.com> on September 24, 2003. This and similar domain names are used to promote the Complainant’s private “fee-for-service” healthcare plan.
Complainant’s health care plans are currently available throughout the United State s.
Complainant asserts that Respondent’s domain name, <todaysoption.com> is almost identical to the Complainant’s mark and is certainly confusingly similar. The domain simply omits the apostrophe and the letter “s” which makes the word option singular instead of plural.
These changes are not sufficient to avoid the allegation of identity or confusing similarity. Neither are the slight differences in spelling.
Complainant also accuses the Respondent of “typosquatting,” using the minor changes and differences in spelling to “trap” customers who misspell Complainant’s domain name.
Complainant also notes that another Panel, at Universal American Corp. v. Tae Young.Jung, FA 1283406 (NAF Oct. 26, 2009) has previously determined that this same domain name, <todaysoption.com> is confusingly similar to the mark.
Complainant asserts that the Respondent has no rights in the name. Complainant had used and registered the mark long before the October 31, 2010 registration of the domain name by Respondent.
Complainant asserts that the Respondent only uses the domain to attract and confuse Internet users, and actually offers no bona fide goods or services.
Of course, says Complainant, the “typosquatting” misspellings are further evidence that the Respondent has no rights in the name.
As to bad faith, Complainant states that Respondent certainly had notice of the mark – both constructive and probably actual notice. Because the Respondent’s web-site links to the sites of competitors, Respondent’s use results in disruption of Complainant’s business and confusion among consumers.
The web-site also offers the domain name for sale, another indicia of bad faith.
B. Respondent
Respondent begins by asserting that the Complaint names Whois Privacy Protection Service, Inc., (“WPPS”) as Respondent, although the domain name is registered to Demand Domains.
Respondent goes on to assert its good faith belief that the domain name is merely a combination of generic or descriptive words. Respondent asserts that it was unaware of the Complainant’s mark.
Respondent asserts that Complainant never asked the Respondent to transfer the domain name and asserts that its web site states that it has no intent to violate the rights of others and asks that persons with claims to the name please contact Respondent.
Respondent asserts that Complainant was negligent and allowed its interest in the disputed domain name to lapse after forcing a transfer of the domain name to Complainant in the 2009 action referenced above.
Respondent asserts that after receiving the Complaint, it has offered on at least three occasions to transfer the domain name at no cost or charge.
Respondent requests that the Complaint be dismissed, promising that it will immediately transfer the name. In the alternative, Respondent asks that no finding of “bad faith” be made and that the Panel “simply endorse Respondent’s offer to transfer the domain name.
C. Additional Submission
In response, Complainant requests a decision on the merits, arguing that Respondent has admitted identity and failed to rebut the allegations that it has no rights in the name and actions taken in bad faith.
Complainant does rebut the allegation that WPPS was improperly named as Respondent.
Otherwise, Complaint restates its Complaint, adding specific rebuttals of the various factual excuses set out by Respondent. Complainant concludes by asserting that a formal finding and decision should be entered given Respondent’s conduct.
First, the Complaint properly named WPPS as Respondent. The Rules (at Rule 1) and Supplemental Rules (at Supplemental Rule 1) define the “holder” of the domain name as the person listed in the WHOIS registration. That was and apparently remains WPPS.
Obviously, the domain name is identical to or confusingly similar to the mark. The generic or descriptive nature of the words in the domain name is not relevant where the USPTO has issued a mark.
Respondent certainly has no rights in the name and elements of bad faith have been clearly shown, including “typosquatting,” use of a registered mark as a domain name, offering the name for sale, and use of the domain name to misdirect Internet users to competitors of the Complainant. Also, Respondent had constructive notice that this very domain name had been previously awarded to Complainant in an earlier proceeding by another Panel.
The Panel also finds that Respondent has offered to transfer the domain name.
The one truly disputed issue, other than the irrelevant discussion of naming WPPS as Respondent, is whether the Panel should enter a domain name decision or allow Respondent to simply concede.
Ordinarily, the Panelist would allow the Respondent to simply concede and enter an order on the transfer of the domain name to Complainant. Here, given the Respondent’s pattern of conduct in the context of this domain name, the Panelist will enter a formal decision, finding that the three elements – identity of mark and domain name, rights in the name, and bad faith have been clearly established by the Complainant and not rebutted by the Respondent.
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.
Policy Paragraph 4(a)(i) requires a showing that the trademark and domain name are identical or confusingly similar. Here, the omission of an apostrophe and an “s” are not relevant. The domain name also bears the hallmarks of “typosquatting.”
Complainant has established its rights in the mark under Policy ¶ 4(a)(i) by duly registering said mark with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent failed to sufficiently differentiate its disputed domain name from Complainant’s mark making the two confusingly similar under Policy ¶ 4(a)(i). See Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
While Respondent contends that the <todaysoption.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Policy Paragraph 4(a)(ii) requires a showing that Respondent has no rights in the name. Here, the Complainant has made a prima facie case that Respondent has no such rights and the use to which the domain name has been put is certainly not for the bona fide offering of goods or services. Respondent has not made an adequate rebuttal.
See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not engaging in a bona fide offering of goods or services or making a legitimate noncommercial of fair use of the disputed domain name. Complainant maintains that the disputed domain name resolves to a site offering links to both Complainant and its competitors in the insurance industry. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not 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).”).
The offer to sell provides support for a finding that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Using a domain name which varies from the registered mark only by a slight typographical error indicates that Respondent is attempting to
“typosquat “on the disputed domain name. “Typosquatting” is evidence of respondent’s lack of rights or 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, the respondent had “engaged in typosquatting, which provides additional evidence that [the] 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 Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”) Thus, the Panel, if it finds Respondent is typosquatting, may utilize that determination to support a finding that Respondent lacks rights or legitimate interests under Policy ¶ 4(a)(ii).
Policy Paragraph 4(a)(iii) requires a showing of “bad faith.” Given that a prior panel, dealing with a different Respondent, had found that the domain name should be transferred, that the Complainant holds a registered mark, the clear appearance of “typosquatting,” and the listing of the name for sale, bad faith is evident.
Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Bad faith registration and use on the part of Respondent may be found on the basis of business interruption. The Complainant has shown that the disputed domain name resolves to a website offering links to Complainant’s competitors in the insurance industry. Internet users may arrive at the linked sites and purchase insurance services from a company other than Complainant. This use does disrupt Complainant’s business under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts Respondent gains commercially from the disputed domain name constituting bad faith registration and use. Complainant claims Respondent receives click-through fees for each Internet user diverted to the competing third-parties through the links offered. The Panel may find that Respondent is gaining commercially from the use of a confusingly similar domain name by offering links to Complainant’s competitors. If so, the Panel may also find Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes)
Respondent had constructive notice of its rights in the mark associated with the disputed domain name. The trademark registrations gave constructive notice of the mark and Complainant’s rights. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Respondent clearly has registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Here, there is evidence of “typosquatting “; Respondent has utilized a simple misspelling of Complainant’s mark as the disputed domain name. By apparently taking the mark and removing a single letter, Respondent certainly was trying to capitalize on a simple misspelling of its mark. “Typosquatting” supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <todaysoption.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: July 13, 2011
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