Benefitfocus.com, Inc. v. Online Management
Claim Number: FA1307001509872
Complainant is Benefitfocus.com, Inc. (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA. Respondent is Online Management (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <benefifocus.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch 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 17, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <benefifocus.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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@benefifocus.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 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Respondent has never been commonly known by the domain name.
ii. Respondent’s parked, click-through revenue website at the domain name offers only sponsored links to a variety of third-party websites, including competitors of Complainant.
i. Respondent is blatantly offering the domain name for sale at the parked website to which the domain name resolves.
ii. Respondent’s use of the confusingly similar domain name to divert Internet users to websites of Complainant’s competitors disrupts the business of Complainant.
iii. Respondent’s use of the confusingly similar domain name in order to take advantage of Internet users who misspell Complainant’s mark and ultimately profit from click-through revenue and sponsored advertisements is evidence of Respondent’s bad faith registration and use of the domain name.
iv. The domain name is a common misspelling of Complainant’s BENEFITFOCUS mark, which is evidence that Respondent has knowledge of Complainant’s BENEFITFOCUS mark at the time Respondent registered the domain name.
1. Respondent’s <benefifocus.com> domain name is confusingly similar to Complainant’s BENEFITFOCUS mark.
2. Respondent does not have any rights or legitimate interests in the <benefifocus.com> domain name.
3. Respondent registered or used the <benefifocus.com> 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 argues that it provides Internet-based software solutions that were designed to streamline corporate benefits administration. Complainant asserts that it is the owner of trademark registrations with the USPTO for the BENEFITFOCUS mark (e.g., Reg. No. 2,496,059, registered October 9, 2001). See Exhibit B. The Panel notes that Respondent appears to reside within the Cayman Islands. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides and operates, so long as it can demonstrate rights in its mark in some jurisdiction. See 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). Accordingly, the Panel concludes that Complainant has demonstrated rights in the BENEFITFOCUS mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant asserts that the domain name registered by Respondent, <benefifocus.com>, is confusingly similar to Complainant’s BENEFITFOCUS mark. Complainant argues that the domain name differs from Complainant’s BENEFITFOCUS mark only by the omission of the letter “t” and the addition of the gTLD “.com.” The Panel holds that Respondent’s omission of a letter in a mark does not negate the Panel from finding confusing similarity under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel determines that Respondent’s inclusion of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <benefifocus.com> domain name is confusingly similar to Complainant’s BENEFITFOCUS mark pursuant to Policy ¶ 4(a)(i).
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 claims that Respondent has never been commonly known by the domain name. Complainant asserts that the WHOIS database information identifies the registrant of the <benefifocus.com> domain name as “Online Management,” and there is absolutely no evidence that Respondent is commonly known by BENEFITFOCUS or “Benefifocus.” See Exhibit A. Therefore, based upon the information provided in the WHOIS record, the Panel determines that Respondent is not commonly known by the <benefifocus.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s parked, click-through revenue website at the domain name offers only sponsored links to a variety of third-party websites, including competitors of Complainant. The Panel notes that Respondent’s website at the <benefifocus.com> domain name provides competing links titled “BLUECROSS BLUESHIELD SC,” “STATE FARM OFFICIAL SITE,” and “Health Cover.” See Exhibit K. Complainant contends that Respondent’s use of the disputed domain name is limited only to deriving click-through revenue from the website by diverting Internet users searching for Complainant to Respondent’s click-through site and deriving revenue by re-directing Internet users searching for Complainant to third-party commercial websites. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel determined “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither 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).” Consequently, the Panel holds that Respondent, through its use of the <benefifocus.com> domain name to provide competing hyperlinks, is not using the domain name in connection of a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant contends that Respondent is blatantly offering the <benefifocus.com> domain name for sale at the parked website to which the domain name resolves. The Panel observes that Respondent’s disputed domain name states, “The domain benefifocus.com is for sale! To purchase, call at +1-339-222-5147 or 866-836-6791 or click here to BUY NOW!” See Exhibit K. Prior panels have held that a respondent’s general offer to sell the domain name demonstrates bad faith use and registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“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).”). Thus, the Panel determines that Respondent has registered and is using the <benefifocus.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant claims that Respondent’s use of the <benefifocus.com> domain name to divert Internet users to websites of Complainant’s competitors disrupts the business of Complainant. The Panel notes that Respondent’s disputed domain name resolves to a webpage hosting competing links titled “BLUECROSS BLUESHIELD SC,” “STATE FARM OFFICIAL SITE,” and “Health Cover.” See Exhibit K. The Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s legitimate business, and concludes that Respondent has registered and is using the <benefifocus.com> domain name in bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant argues that Respondent’s use of the <benefifocus.com> domain name in order to take advantage of Internet users who misspell Complainant’s mark and ultimately profit from click-through revenue and sponsored advertisements is evidence of Respondent’s bad faith registration and use of the domain name. The Panel observes that Respondent is using the disputed domain name to provide competing hyperlinks in order to attract Internet users to its own website for commercial gain. See Exhibit K. Prior panels have held that a respondent’s use of the disputed domain name to provide competing hyperlinks demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See 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).”). Thus, the Panel finds that Respondent has registered and is using the <benefifocus.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that the <benefifocus.com> domain name is a common misspelling of Complainant’s BENEFITFOCUS mark, which is evidence that Respondent has knowledge of Complainant’s BENEFITFOCUS mark at the time Respondent registered the domain name. The Panel finds that Respondent’s misspelling of Complainant’s mark in a domain name evidences that Respondent knew of Complainant’s BENEFITFOCUS mark, and the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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 "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <benefifocus.com> domain name be TRANSFERRED FROM Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 4, 2013
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