national arbitration forum

 

DECISION

 

AMERIGROUP Corporation v. Rui Zhang

Claim Number: FA1208001460387

 

PARTIES

Complainant is AMERIGROUP Corporation (“Complainant”), represented by Amy G. Marino of Williams Mullen, Virginia, USA.  Respondent is Rui Zhang (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nyamerigroup.com> and <amerigroupga.com>, registered with MONIKER.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically August 29, 2012; the National Arbitration Forum received payment August 29, 2012.

 

On August 30, 2012, MONIKER confirmed by e-mail to the National Arbitration Forum that the <nyamerigroup.com> and <amerigroupga.com> domain names are registered with MONIKER and that Respondent is the current registrant of the names.  MONIKER verified that Respondent is bound by the MONIKER registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 31, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2012, 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@nyamerigroup.com, postmaster@amerigroupga.com.  Also on August 31, 2012, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On September 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

  1. Complainant makes the following allegations in this proceeding:

 

Complainant owns the AMERIGROUP mark and has trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its AMERIGROUP mark (Reg. No. 2,215,444 registered December 29, 1998). See Exhibit 4. Complainant provides healthcare and health-insurance related services and markets its business through advertising media, including through the Internet. Complainant has invested substantial time and resources to develop its marks and has made significant sales of its services in the United States. Complainant owns websites on the Internet at the <amerigroup.com> and <amerigroupcorp.com> website.

 

Respondent registered the <nyamerigroup.com> and <amerigroupga.com> domain names, which resolve to websites that display sponsored links to Complainant’s competitors in the healthcare industry. See Exhibits 12–13, 17–20. The disputed domain names are confusingly similar to Complainant’s AMERIGROUP mark. Respondent’s use of the disputed domain names is not in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent is not commonly known by the <nyamerigroup.com> and <amerigroupga.com> domain names. Respondent registered the disputed domain names in bad faith, as demonstrated by its pattern of registering other entities’ trademarks, and by creating a likelihood of confusion with Complainant’s mark in order to make a commercial profit.

 

  1. Respondent did not submit a Response.

 

FINDINGS

Complainant established rights in a mark that has been used by another in confusingly similar domain names.

 

Respondent has shown no rights to or legitimate interests in the mark contained within these confusingly similar domain names that Respondent registered.

 

Respondent registered and used the disputed domain names in bad faith.

 

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."

 

Paragraph 4(a) of the Policy requires Complainant to 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.

 

Given 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 will draw such inferences as the Panel 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.”).

 

Identical and/or Confusingly Similar

 

Complainant claims to own rights in the AMERIGROUP mark via trademark registration with the USPTO (Reg. No. 2,215,444 registered December 29, 1998). In UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), the panel stated that the complainant had secured rights in its asserted marks through its trademark registrations with the USPTO. The Panel finds that Complainant’s USPTO trademark registration successfully establishes its rights in the AMERIGROUP mark for the purposes of Policy ¶ 4(a)(i). The Panel also finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the same country where Respondent resides and operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant argues that the <nyamerigroup.com> and <amerigroupga.com> domain names are confusingly similar to its AMERIGROUP mark. Complainant asserts that the <nyamerigroup.com> domain name includes the letters “ny,” the <amerigroupga.com> domain name includes the letters “ga,” and both domain names include the generic top-level domain (“gTLD”) “.com.” Complainant alleges the letters “ny” and “ga” are geographically descriptive abbreviations that stand for New York and Georgia, respectively. The Panel finds that the disputed domain names are confusingly similar to Complainant’s AMERIGROUP mark pursuant to Policy ¶ 4(a)(i) despite the addition of geographic terms and a gTLD. See Expedia, Inc. v. Mandanice, FA 146598 (Nat. Arb. Forum Apr. 7, 2003) (finding that the <expedia-uk.com> domain name was confusingly similar to the complainant’s EXPEDIA mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests.  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.”).

 

Complainant asserts that Respondent is not commonly known by the <nyamerigroup.com> and <amerigroupga.com> domain names and does not have permission from Complainant to use the AMERIGROUP mark or variations thereof. Complainant cites the WHOIS information to support its allegation, which identifies “Rui Zhang” as the registrant for both disputed domain names. See Exhibits 1-2. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), found that the WHOIS information gave no indication that the respondent was commonly known by the disputed domain names, and the complainant did not authorize the respondent’s use of its mark to register a domain name. The Panel finds that Respondent is not commonly known by the <nyamerigroup.com> and <amerigroupga.com> domain names under Policy ¶ 4(c)(ii), as demonstrated by the WHOIS information and Respondent’s lack of permission to use the AMERIGROUP mark.

 

Complainant contends that Respondent fails to use the <nyamerigroup.com> and <amerigroupga.com> domain names in a manner connected with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving websites of both domain names to display hyperlinks to competing businesses in the healthcare industry. Complainant argues that Respondent uses Complainant’s marks to benefit financially, which Complainant claims demonstrates that Respondent does not have rights or legitimate interests in the disputed domain names. The Panel finds that Respondent’s use of the <nyamerigroup.com> and <amerigroupga.com> domain names to sponsor hyperlinks to competing third-party businesses is evidence that Respondent is not using the domain names to make 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(ii). 

 

The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent demonstrates a pattern of registering domain names that incorporate the domain names of other entities and provides evidence of two UDRP decisions against Respondent from the National Arbitration Forum and one UDRP decision against the Respondent from the World Intellectual Property Organization that demonstrate Respondent’s repeated attempt to prevent trademark owners from reflecting their marks in a corresponding domain name. See Am. Airlines, Inc. v. Zhang, FA 1361211 (Nat. Arb. Forum Jan. 10, 2011); see also Victoria’s Secret Stores Brand Mgmt. v. Zhang, FA1341699 (Nat. Arb. Forum Oct. 4, 2010); see also Intesa Sanpoalo S.p.A. v. Moniker Privacy Servs. / Zhang, D2012-0132 (WIPO March 19, 2012). The Panel finds that the three adverse UDRP decisions demonstrate Respondent’s pattern of bad faith registration and use under Policy ¶ 4(a)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).

 

Complainant also urges that Respondent’s disruptive use establishes its bad faith registration and use. Complainant alleges that using a confusingly similar domain name to feature a directory of hyperlinks to Complainant’s competitors constitutes disruption. The panel in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), concluded that, by using the disputed domain name to host a website with links leading to third-party competitors of the complainant, the respondent is engaged in bad faith registration and use. The Panel finds that Respondent’s use of the <nyamerigroup.com> and <amerigroupga.com> domain names is disruptive and therefore evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii).

 

Complainant asserts that Respondent also uses the confusingly similar domain names to attract Complainant’s customers and to make money through the referral fees paid by the advertisers in competition with Complainant’s business. The Panel finds that Respondent’s attempt to benefit commercially by confusing and attracting Internet traffic to its website demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).

 

Respondent makes no contentions relative to Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii). 

 

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 <nyamerigroup.com> and <amerigroupga.com> domain names be TRANSFERRED from Respondent  to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: October 9, 2012.  

 

 

 

 

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