Benefitfocus.com, Inc. v. ICS inc.
Claim Number: FA1307001509857
Complainant is Benefitfocus.com, Inc. (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA. Respondent is ICS inc. (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benefitfoucs.com>, registered with Tucows, 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 July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 16, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <benefitfoucs.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 July 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2013 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@benefitfoucs.com. Also on July 24, 2013, 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 August 20, 2013, 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" 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
i. Complainant owns the BENEFITFOCUS mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,496,059, registered October 9, 2001).
ii. Complainant is the largest healthcare benefits software provider in the United States. Since its inception in 2000, Complainant has used the BENEFITFOCUS mark in connection with online human resource management services.
iii. Complainant has established significant fame and goodwill in the BENEFITFOCUS mark as demonstrated by numerous awards and unsolicited media recognition.
i. Policy ¶ 4(a)(i)
1. The <benefitfoucs.com> domain name is confusingly similar to Complainant’s BENEFITFOCUS mark as the domain name differs from the mark only by transposing the letters “u” and “c” and the addition of the generic top-level domain name (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent has not been commonly known by the disputed domain name. The WHOIS information identities the registrant as “ICS inc.” Complainant has not authorized or licensed Respondent to use the BENEFITFOCUS mark.
2. Respondent’s use of the disputed domain name does not consist of a bona fide offering of goods or services, and Respondent is not making a legitimate noncommercial or fair use of the domain name. Respondent offers no goods or services of its own on the resolving website. Instead, Respondent’s parked, click-through revenue website offers only sponsored links to a variety of third-party websites.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s blatant offer to sell the domain name at the resolving website reveals Respondent’s bad faith.
2. Respondent’s use of the confusingly similar domain name to profit from click-through revenue and sponsored advertisements is evidence of bad faith registration and use. Respondent is taking advantage of Internet users who search for and misspell Complainant’s mark in order to gain click-through revenue.
3. Respondent’s bad faith is further demonstrated by Respondent’s actual knowledge of Complainant’s rights in the mark at the time the domain name was registered.
4. Respondent’s typosquatting behavior is evidence of bad faith registration and use. Respondent is taking advantage of Internet users who search for and misspell Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complaqinant has rights in its BENEFITFOCUS mark.
2. Respondent’s <benefitfoucs.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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."
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.
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.”).
Complainant claims to own the BENEFITFOCUS mark through its trademark registrations with the USPTO (e.g., Reg. No. 2,496,059, registered October 9, 2001). See Complainant’s Exhibit B. The Panel notes that Respondent appears to reside in the Cayman Islands. Still, the Panel finds that Complainant’s USPTO registrations establish its rights in the BENEFITFOCUS mark pursuant to Policy ¶ 4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant argues that the <benefitfoucs.com> domain name is confusingly similar to Complainant’s BENEFITFOCUS mark as the domain name differs from the mark only by transposing the letters “u” and “c” and the addition of the gTLD “.com.” Previous panels have found domain names that consist of a basic misspelling of the complainant’s mark are not sufficiently distinguished from the mark for purposes of the Policy. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). Further, past panels have consistently determined that the addition of a gTLD is irrelevant to a Policy ¶ 4(c)(ii) analysis as top level domains are a required element of every domain name. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that the <benefitfoucs.com> domain name is confusingly similar to Complainant’s BENEFITFOCUS mark under Policy ¶ 4(c)(ii).
The Panel is reminded that 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 shifts to Respondent to show it does have 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 contends that Respondent has not been commonly known by the disputed domain name. Complainant asserts that the WHOIS information identities the registrant as “ICS inc.” See Complainant’s Exhibit A. Further, Complainant argues that it has not authorized or licensed Respondent to use the BENEFITFOCUS mark. The Panel finds that Respondent did not submit a Response, and therefore has not refuted Complainant’s contentions. The Panel finds that the evidence on record, including the WHOIS information, and Complainant’s contention that Respondent is not authorized to use Complainant’s mark, supports a finding that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name does not consist of a bona fide offering of goods or services, and Respondent is not making a legitimate noncommercial or fair use of the domain name. Complainant asserts that Respondent offers no goods or services of its own on the resolving website; instead, Respondent’s parked, click-through revenue website offers only sponsored links to a variety of third-party websites. The Panel notes that Complainant has included screenshots of the resolving website in Exhibit K. The resolving page includes links to <findtherightjob.com>, and <AMIClubwear.com> among other websites unrelated to Complainant. Complainant presumes that Respondent receives click-through revenue through the linked websites. In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003), the panel found the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy. The Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii), respectively.
Complainant argues that Respondent’s blatant offer to sell the domain name at the resolving website reveals Respondent’s bad faith. The Panel notes that Complainant included a screenshot of the resolving webpage, which states: “The domain benefitfoucs.com is for sale!” and lists two phone numbers and a link to purchase the domain. See Complainant’s Exhibit K. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel wrote, “Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).” The Panel finds that Respondent’s general offer to sell the disputed domain name is evidence that Respondent registered the disputed domain in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant argues that Respondent’s use of the confusingly similar domain name to profit from click-through revenue and sponsored advertisements is evidence of bad faith registration and use. Complainant asserts that Respondent is taking advantage of Internet users who search for and misspell Complainant’s mark in order to gain click-through revenue. The Panel notes that Complainant included a screenshot of the resolving website in Exhibit K, which displays links to <findtherightjob.com>, and <AMIClubwear.com> among other hyperlinks unrelated to Complainant. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent uses the confusingly similar domain name to attract Internet traffic and generate click-through revenue through hyperlinks unrelated to Complainant. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant also argues that Respondent’s bad faith is further demonstrated by Respondent’s actual knowledge of Complainant’s rights in the mark at the time the domain name was registered. Complainant argues that Respondent’s typosquatting, which takes advantage of common typographical errors of the BENEFITFOCUS mark, shows that Respondent knew of the mark and Complainant’s rights therein. Previous panels have found evidence of bad faith registration where the respondent had actual knowledge of complainant’s mark at the time the disputed domain was registered. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel infers that Respondent had actual knowledge of Complainant’s rights in the mark given Respondent’s apparent typosquatting behavior, and therefore, find evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).
Though not explicitly articulated in Complainant’s bad faith contentions, Complainant calls special attention to Respondent’s typosquatting behavior throughout its Complaint, and argues that Respondent is taking advantage of Internet users who search for and misspell Complainant’s mark. Panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of Respondent’s bad faith registration under Policy ¶ 4(a)(iii), as it appears Respondent registered the <benefitfoucs.com> domain name with the intention of diverting Internet users who inadvertently misspell Complainant’s mark away from their expected destination.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benefitfoucs.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 3, 2013
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