Commonwealth Health Insurance Connector Authority v. Gil Merdinger
Claim Number: FA1603001663850
Complainant is Commonwealth Health Insurance Connector Authority (“Complainant”), represented by Christine M. Baker of Mintz Levin Cohn Ferris Glovsky & Popeo, P.C., New York, USA. Respondent is Gil Merdinger (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <healthconnector.co>, registered with Godaddy.Com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2016; the Forum received payment on March 3, 2016.
On March 3, 2016, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <healthconnector.co> 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 March 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2016 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@healthconnector.co. Also on March 8, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant is the owner of the common law service marks HEALTH CONNECTOR, MASSACHUSETTS HEALTH CONNECTOR, MASS HEALTH CONNECTOR and MA HEALTH CONNECTOR and the federally registered service marks MASSACHUSETTS HEALTH CONNECTOR & DESIGN® and MASSACHUSETTS HEALTH CONNECTOR the right place for the right plan & DESIGN® for the provision and administration of health insurance plans and other insurance products, namely, dental health insurance. Complainant filed applications to register the latter marks with the U.S. Patent and Trademark Office on January 6 and January 13, 2013 almost (2.5) two and a half years before the Respondent registered the domain name <healthconnector.co>. The Complainant’s service marks are collectively referred to herein as the “HEALTH CONNECTOR marks.”
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
i. In 2006, the Commonwealth of Massachusetts passed a landmark health care reform law with the goal of providing affordable, high-quality health insurance to nearly all of its residents. This law established the Complainant, an independent public authority that is promoted and primarily known by consumers as the “Health Connector,” “Mass Health Connector” and “Massachusetts Health Connector” and helps Massachusetts residents find free, subsidized and full-price private health insurance plans and avoid tax penalties for not having health insurance.
ii. Since its inception in 2006, the Complainant has acted to assist hundreds of thousands of individuals in acquiring health care coverage and has played an integral role in health care reform and has become a national leader in healthcare access and affordability. The Complainant has been designated by the Massachusetts legislature as the state’s health insurance exchange under the Affordable Care Act (ACA). As such, the Complainant is the only channel for individuals to obtain federal tax credits available under the ACA to offset the cost of health insurance. Additionally, the Complainant offers state-funded subsidies to further offset the cost of health insurance and, again, those subsidies are only available to individuals who purchase insurance through the Complainant. Information regarding the Complainant’s services is provided to consumers primarily through its website located at <mahealthconnector.org> and via its domain name <betterhealthconnector.com>, which links to the Complainant’s website. At the website, consumers can find and compare their health insurance options in multiple ways, including by benefit tier (showing detailed comparisons of benefits), monthly costs, and annual deductibles and apply for health care insurance coverage. Importantly, the Complainant only offers health plans from the state's leading insurers that have been awarded the Complainant’s "Seal of Approval" and meet both state and national coverage standards. The <mahealthconnector.org> and <betterhealthconnector.com> domain names were registered on February 22, 2007 and June 18, 2013.
iii. Complainant has continuously used the mark HEALTH CONNECTOR in connection with its provision of health insurance related services since at least as early as May 2007, which is approximately (8) eight years prior to Respondent’s registration of the Domain Name.
iv. Complainant is also the owner of the federally registered service marks MASSACHUSETTS HEALTH CONNECTOR & DESIGN® and MASSACHUSETTS HEALTH CONNECTOR the right place for the right plan & DESIGN® for the provision and administration of health insurance plans and other insurance products, namely, dental health insurance. Complainant filed applications to register the latter marks with the U.S. Patent and Trademark Office on January 6 and January 13, 2013, almost (2.5) two and a half years before the Respondent registered the domain name <healthconnector.co>.
v. Complainant has devoted significant resources to advertising and promoting its services in the United States under its HEALTH CONNECTOR marks.
vi. In addition to its own advertising and promotional efforts, Complainant and its services have been the subject of numerous articles in the media, including national print, radio and television. Complainant also is the recipient of an award from the Harvard Kennedy School of Government for Innovations in American Government in 2009.
vii. As a result of Complainant’s extensive promotional efforts and the wide acceptance of its services promoted in connection with its HEALTH CONNECTOR marks, its HEALTH CONNECTOR marks have become widely recognized source identifiers among consumers. Today at least 250,000 residents in Massachusetts have obtained health insurance coverage through the Complainant’s HEALTH CONNECTOR program and the Commonwealth of Massachusetts has the highest rate of health insurance coverage in the nation.
viii. Complainant has not authorized Respondent to use its HEALTH CONNECTOR mark or any variation thereof in the Domain Name.
ix. Respondent registered the Domain Name <healthconnector.co> on June 9, 2015, which is (8) eight years after Complainant adopted the HEALTH CONNECTOR mark, (2) two plus years after Complainant filed applications to register the marks MASSACHUSETTS HEALTH CONNECTOR & DESIGN and MASSACHUSETTS HEALTH CONNECTOR the right place for the right plan & DESIGN, and approximately (5) five months after Complainant obtained its federal service mark registrations.
x. Respondent’s Domain Name wholly incorporates the Complainant’s mark HEALTH CONNECTOR and the dominant elements of the Complainant’s federally registered marks MASSACHUSETTS HEALTH CONNECTOR & DESIGN® and MASSACHUSETTS HEALTH CONNECTOR the right place for the right plan & DESIGN®.
xi. The website associated with <healthconnector.co>, which was suspended by GoDaddy after Complainant filed a trademark infringement complaint with GoDaddy on February 12, 2016, purports to offer health insurance quotes. If an Internet user enters his/her zip code into the quote search function, he/she is re-directed to a website associated with the domain name <gohealthinsurance.com>. This commercial website provides quotes for health insurance plans offered by Harvard Pilgrim Health Care and fallonhealth, which are health insurance plans offered by the Complainant. However, persons who purchase those plans would not be eligible for the generous federal and state subsidies that offset the cost of health insurance, even if they were low income individuals and would otherwise qualify, because they are not purchasing plans through the Complainant. In fact, consumers who purchase those health insurance plans on an unsubsidized basis will pay several times more than if they purchase a health insurance plan via the Complainant’s HEALTH CONNECTOR program.
xii. On October 29, 2015, Complainant sent Healthconnector.co, who was identified as the owner of the website associated with the domain name <healthconnector.co.> on the website and is now known as the Respondent, a letter via e-mail and Certified U.S. Mail advising the Respondent that it is violating Complainant’s rights by using the subject Domain Name and its HEALTH CONNECTOR marks and requesting that it transfer the Domain Name and cease use of the Complainant’s HEALTH CONNECTOR marks. Healthconnector.co / Respondent failed to respond to the communication.
xiii. After receiving no response from the Respondent, the Complainant filed a trademark infringement complaint with GoDaddy on February 12, 2016 alleging that the Respondent was violating its service mark rights with supporting evidence. On February 19, 2016, GoDaddy suspended the site in accordance with its Trademark Infringement Policy.
[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
i. UDRP panels have held that a complainant’s unregistered trademark / service mark rights to a trade name are sufficient to satisfy the requirements of 4(a)(1) of the Policy. G. Bellentani 1821 S.p.A. v. Stanley Filoramo, WIPO Case No: D2003-0783 (WIPO June 30, 2004). Complainant commenced use of the mark HEALTH CONNECTOR in connection with the provision and administration of health insurance plans and dental plans and has referred to itself as the HEALTH CONNECTOR since at least as early as May 2007. Complainant acquired rights in the mark HEALTH CONNECTOR (8) eight years prior to Respondent’s registration of the Domain Name at issue, which was registered on June 9, 2015.
ii. Further, UDRP panels have found that a Complainant’s use of a term in connection with its products can give rise to unregistered trademark rights. Uitgerverij Crux v. W. Frederic Isler, WIPO D2003-0783 (WIPO October 30, 2000) (holding that the complainant demonstrated trademark rights in a word based on evidence establishing that complainant had been using the mark in association with its business years prior to the respondent’s registration of the domain name at issue); Endeavors Technology, Inc. v. Dick In Jar, WIPO D2001-0770 (WIPO July 29, 2001) (holding that complainant’s use of a term as a trade name in connection with its goods on its website was sufficient evidence that complainant had tied its trade name with its products in advertising and promotion and, as a result, was sufficient evidence of complainant’s rights in the trade name as a trademark). In the present instance, Complainant has used HEALTH CONNECTOR as a trade name in connection with its business of providing and administrating health insurance plans and dental plans for the past (8) eight years. Complainant uses HEALTH CONNECTOR as its trade name on its website, located at <mahealthconnector.org>, and in promotional literature and advertisements. As a result of Complainant’s widespread use of HEALTH CONNECTOR as a trade name, consumers have come to know and recognize the Complainant as the HEALTH CONNECTOR and call the Complainant the HEALTH CONNECTOR. Attached hereto are articles that refer to the Complainant by its trade name the HEALTH CONNECTOR as well as copies of the Complainant’s US Registrations, Nos. 4,668,308 and 4,672,556, which incorporate the Complainant’s trade name. This evidence establishes that Complainant has common law service mark rights in the trade name HEALTH CONNECTOR.
iii. Prior administrative panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a Domain Name is identical or confusingly similar to a complainant’s registered or unregistered trademark. Philip Morris USA Inc. v. Doug Nedwin/SRSPlus Private Registration, WIPO Case No. D2014-0339 (WIPO May 1, 2014) (holding that the disputed domain name <Phillip-morris.com> is confusingly similar to Complainant’s unregistered trademark PHILIP MORRIS). Although Respondent’s domain name consists of the gTLD .co, the .co is not a distinguishing feature and, therefore, the Respondent’s Domain Name is identical and confusingly similar to the Complainant’s common law service mark HEALTH CONNECTOR.
iv. Further, there is a likelihood of confusion between the Domain Name and the Complainant’s federally registered service marks because they share the wording HEALTH CONNECTOR. HEALTH CONNECTOR appears in bold and is the largest and most prominent text in the Complainant’s registered marks, which makes it the dominant portion of the Complainant’s marks; Respondent’s Domain Name consists solely of the wording HEALTH CONNECTOR. La Quinta Worldwide, L.L.C. v. PrivacyProtect.org / Pantages, Inc. (WIPO Case No. D2011-1530 Nov. 7, 2011) (use of dominant portion of Quinta and Inn in quintainns.com caused likely confusion because they were dominant portions of Complainant's LA QUINTA INN AND SUITES! trademark). Although the Complainant’s registered marks include other elements, like the geographic term Massachusetts, these additional elements do not create dissimilarity between the Complainant’s marks and the Respondent’s Domain Name. The geographic term "MASSACHUSETTS" is in very small text in the registered marks and is merely a geographically descriptive term entitled to little weight in measuring differences between the marks and the Domain Name. Accenture Global Services Limited v. Shivani Sharma (WIPO Case No. D2015-0657 Jun. 17, 2015) (use of geographically descriptive term "does nothing" to distinguish two marks). However, even if the term MASSACHUSETTS is considered a distinctive element in the Complainant’s registered marks, the Respondent’s use of MASS HEALTH CONNECTOR and MASSACHUSETTS HEALTH CONNECTOR on the webpages associated with the Domain Name will create additional consumer confusion. Likewise, the presence of a very small secondary slogan ("the right place for the right plan") and a square design element in the Complainant’s registered marks do not detract from the overall similarity between the marks and the Domain Name considering the overwhelmingly dominant HEALTH CONNECTOR portions. Banca Carige S.p.A. v. MustNeed.com, Lee Yi (WIPO Case No. D2004-0445 August 9, 2004) (finding the descriptive portion and "graphic element of the mark have no distinguishing capacity"); CBS Broadcasting Inc.
v. Worldwide Webs, Inc. (WIPO Case No. D2000-0834) (design elements cannot be embodied in domain names, and design elements are not usually given the same weight as word elements of mark, thus lack of registered mark's design element in challenged domain name did not undermine likelihood of confusion by consumers). Complainant often uses HEALTH CONNECTOR as its mark without additional elements, and as such, consumers who encounter the Complainant’s mark and the Domain Name will mistakenly believe that they designate a common source. Thus, the Domain Name is overwhelmingly similar to the Complainant’s registered marks and is likely to be confused with them such that UDRP Rule 3(b)(ix)(1) applies to the Complainant’s registered marks as well.
v. Complainant has established prima facie evidence of the validity and inherent distinctiveness of its HEALTH CONNECTOR service mark. The Domain Name is confusingly similar to Complainant’s common law mark HEALTH CONNECTOR and its federally registered MASSACHUSETTS HEALTH CONNECTOR & DESIGN® and MASSACHUSETTS HEALTH CONNECTOR the right place for the right plan & DESIGN® service marks.
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
i. Paragraph 4(c) of the Policy sets forth circumstances that, if present, may be cited by Respondent to demonstrate that it has a legitimate right or interest in the disputed domain name(s). Those criteria are that: (i) before any notice of the dispute, Respondent’s use of the domain name was in connection with a bona fide offering of goods or services, or (ii) Respondent has been commonly known by the domain name, even if it had not acquired any trademark or service marks rights, or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. None of these three exceptions are met.
ii. First, Respondent has always known of Complainant and the dispute over its preexisting marks, and thus does not qualify for Paragraph 4(c)(i). The homepage of the Domain Name <healhconnector.co> expressly tells consumers it is “the Massachusetts online marketplace for health insurance.” Yet, at all relevant times, the page content included the smallest of text at the very bottom of the page (outside of the prominent text box used for all other important items on the page) stating: “This website is privately owned and neither affiliated with, nor endorsed by any government agency. If you are looking for the State’s official website please visit https://betterhealthconnector.com.” While claiming to be the one and only official marketplace for Massachusetts, the website buries a pretextual disclaimer to the contrary. The language and disclaimer on the Respondent’s websites demonstrates a calculated decision of how to handle an obvious dispute, in contrast to an accidental stumbling upon another’s trademark. Hence, Respondent cannot claim that its use of the Domain Name was prior to notice of a dispute with Complainant.
iii. Moreover, Paragraph 4(c)(i) is not satisfied for the additional reason that Respondent’s use of the Domain Name is not a bona fide use. By using the Domain Name comprised of Complainant’s exact HEALTH CONNECTOR mark (and then plastering the homepage and other webpages with “Mass Health Connector” and “Massachusetts Health Connector”), Respondent is attempting to lure consumers looking for Complainant’s website to its website, which purports to provide access to an online marketplace for health insurance. BSI S.A. v. Tucows Inc. (WIPO D2009-0275 May 6, 2009) (Use of Complainant's slogan throughout website confirmed lack of legitimate bona fide use.) The website links consumers to <gohealthinsurance.com>, where health insurance quotes are provided to the consumer from the very same companies offered by Complainant. However, an individual who purchases insurance through the Respondent’s website will be deprived of the generous federal and state subsidies that would be available if he/she purchased insurance through Complainant, which the Massachusetts Legislature designated under the Affordable Care Act as the only entity eligible to provide such subsidies to Massachusetts consumers for the purchase of health insurance. The Domain Name is thus a click-through website directing consumers to websites competing with Complainant, a use repeatedly recognized as not being bona fide. USAlliance Federal Credit Union v. Satoshi Shimoshita, Case No. D2015-1391 (WIPO Nov. 9, 2015) (“Respondent is not using the disputed domain name in a bona fide manner. The use of a confusingly similar trademark in association with a click-through site which provides links to third parties which are competitors of the Complainant is not evidence of a bona fide offering of services or goods under the Policy.” Domain name transferred); Pet Plan Ltd. V. Marc Castonguay, Case no. D2014-2116 (WIPO Dec. 22, 2015) (same; domain name transferred); cf. WhatsApp Inc. v. Francisco Costa, Case No. D2015-1708 (WIPO Dec. 9, 2015) (“Moreover, Respondent so far has neither made use of the disputed domain name for a bona fide offering of products or services nor for a legitimate noncommercial or fair use. On the contrary, Respondent apparently redirected the disputed domain name to a website offering goods and services that compete with those of Complainant.”); Community Bible Study v. Ryan G Foo, Case No. D2015-1706 (WIPO Nov. 24, 2015).
iv. Second, Paragraph 4(c)(ii) cannot be satisfied for much the same reason. Respondent is not commonly known by the HEALTH CONNECTOR service mark. Even assuming arguendo that Respondent is known by the name “Health Connector,” this name is confusingly similar to the Complainant’s well-known HEALTH CONNECTOR and MASSACHUSETS HEALTH CONNECTOR marks when used in connection with health insurance-related services, as discussed above, and its adoption came long after Complainant’s adoption of its marks. The adoption of the confusingly similar “HEALTH CONNECTOR” name was done with complete knowledge of Complainant and its rights, and with intent to trade off Complainant’s goodwill. Thus, Respondent cannot establish legitimate rights or interests in the Domain Name. See Yahoo! Inc. v. Yahoo-Asian Company Limited, Case No. D2001-0051 (WIPO Feb. 28, 2001) (“[I]t is beyond credulity that the respondent’s corporate name was chosen in the absence of knowledge of the complainant’s famous trademark. … Under these circumstances, in the context of the Policy, the establishment of the respondent was a sham and paragraph 4(c)(ii) of the Policy cannot apply.”).
v. Respondent’s use of a privacy service proves that Respondent is attempting and wishes to hide its activities from scrutiny. In The Saul Zaentz Company d/b/a Tolken Enterprises v. Eurobox Ltd./“The Saul Zaentz Company,” Case No. D2008-0156 (WIPO May 20, 2008), the Panelist determined that, based on the circumstances, Respondent’s use of a proxy service created a negative inference about its objectives. In the present case, Respondent has used a privacy service to shield his identity in registering the Domain Name comprised of Complainant’s HEALTH CONNECTOR mark (and is confusingly similar to Complainant’s federally registered MASSACHUSETTS HEALTH CONNECTOR marks). These circumstances create a negative inference about Respondent’s efforts to hide its identity. This is yet one more reason for rejecting any claim that the Respondent’s use is for the bona fide offering of goods or services.
vi. Third, Respondent cannot meet Paragraph 4(c)(iii), because Respondent is not making a legitimate noncommercial use of the Domain Name. The website that corresponds to the Domain Name purports to offer health insurance quotes to Internet users by simply clicking on links that click-through to a competitor’s site. Whether receiving revenue from the redirect sites on a click-through basis, or whether operated by the redirect sites directly in order to obtain such redirected consumers, this is plainly commercial use of the Domain Name. Fareportal Inv. V. Ryan G Foo., Case No. D2015-1958 (WIPO Dec. 21, 2015). Respondent is not making a legitimate noncommercial use of the Domain Name, but instead is misleading and diverting consumers for commercial purposes and for its financial benefit.
vii. Based on the foregoing, Respondent has no legitimate rights or interests in the Domain Name.
[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
i. Panels find bad faith where Respondent is using a well-known trademark and there is no legitimate use of the mark in the domain. See General Electric Company v. CPIC NET and Hussain Syed, Case No. D2001-0087 (WIPO May 2, 2001); Microsoft Corporation Montrose Corporation, Case No. D2000-1568 (WIPO Jan. 25, 2001). Respondent registered the Domain Name, which is virtually identical to the Complainant’s well- known HEALTH CONNECTOR mark, (9) nine years after the Commonwealth of Massachusetts created the Complainant as a result of its landmark healthcare reform law, (8) eight years after the Complainant commenced use of its HEALTH CONNECTOR mark, and more than (2) two years after the Complainant filed applications to register its MASSACHUSETTS HEALTH CONNECTOR marks. Since the Respondent registered the Domain Name years after the Complainant adopted and became commonly known as the HEALTH CONNECTOR, the Respondent acted in bad faith and is not making legitimate use of the mark in the Domain Name.
ii. Based on the Complainant’s use of its HEALTH CONNECTOR mark years before the Respondent registered the Domain Name, there can be no question that Respondent knew about Complainant’s service mark rights before registering its domain name. Yahoo! Inc. Yahoo-Asian Company Limited, Case No. D2001-0051 (WIPO Feb. 28, 2001). See also Nike, Inc. v. B.B. de Boer, Case No. D2000-1397 (WIPO Dec. 21, 2000) (“[S]ince Complainant’s trademark is well known throughout the world, it is very unlikely, if not nearly impossible, that, when Respondent registered the Domain Name, it was not aware that it was infringing on Complainant’s trademark rights. The Panel therefore concludes that the Respondent has registered the Domain Name in bad faith.”).
iii. As noted above, Respondent expressly identifies Complainant’s website in the disclaimer that appeared on its website prior to its suspension by GoDaddy, which shows Respondent’s knowledge of the Complainant. Lloyd’s v. Lloyds Am. Indemnity Corp., D2006-1327 (WIPO Dec. 21, 2006) (“The Respondent’s disclaimer, which in the present case was placed at the bottom of the website in small font, confirms that the Respondent was fully aware of the complainant’s widely-known trademarks and reputation.”). The use of “Massachusetts Health Connector” and “Mass Health Connector” throughout the website confirms that Respondent intentionally intended to trade off of every aspect of the goodwill associated with Complainant’s marks. The use of the obscure disclaimer does nothing to obviate Respondent’s bad faith. Lego Juris A/S v. Wesley Pals, Case No. D2014-0336 (WIPO Apr. 18, 2014) (“As the Complainant mentioned in the Complaint the website connected to the disputed domain name contains a disclaimer on the bottom of the starting page. However, the consensus view in accordance to paragraph 3.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (‘WIPO Overview 2.0’), the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. In this case there are no other factors of good faith.”).
iv. A large number of the typical factors demonstrating bad faith are also present in this case:
a. Use of the name commonly associated with Complainant: HEALTHCONNECTOR.co is a domain name consisting entirely of the common law HEALTH CONNECTOR mark by which Complainant is known, as explained above. The use of HEALTH CONNECTOR in the domain name is also confusingly similar to the Complainant’s federally registered MASSACHUSETTS HEALTH CONNECTOR marks, lacking only the geographic descriptor MASSACHUSETTS. However, despite the omission of this geographic term in the Domain Name, the Respondent uses the Complainant’s marks MASS HEALTH CONNECTOR and MASACHUSETTS HEALTH CONNECTOR prominently on its webpages. Thus, Respondent has sought to exploit the valuable goodwill that the Complainant has developed in its MASSACHUSETTS HEALTH CONNECTOR marks over the years.
b. False contact information: The October 29, 2015 cease and desist letter sent to the contact information on file with the privacy protect service received no response. Attempts by investigative services to contact known phone numbers were also unsuccessful. This indicates that the contact information provided when applying for registration of the Domain Name was false or has not been accurately maintained.
c. Lack of bona fide use: As addressed in Section C above, Respondent’s use of the Domain Name is not bona fide.
d. Intentional attempt to attract Internet users by likelihood of confusion: The Respondent’s webpages amply confirm that the Domain Name seeks to intentionally attract consumers by creating a likelihood of confusion with Complainant. The Domain Name does not include any matter that would distinguish it from the Complainant’s HEALTH CONNECTOR mark, and because of this, consumers will mistakenly believe that they are visiting the Complainant’s website, when in fact that is not the case. Kirkbi AG v. Micore Enterprises, Inc., Case No. D2002-0327 (WIP Jun. 20, 2002) (“where a domain name is identical to the mark of another, it is per se legally offensive;” domain name transferred). But the associated webpages tack onto this likely confusion, with content that confirms that the confusion is intentional. First, the homepage leads by representing itself as “the Massachusetts online marketplace for health insurance.” “The” is singular. The Massachusetts legislature established Complainant as “the,” as in the one and only, centralized location for health insurance information for Massachusetts. Next, to further confuse consumers, the webpage is titled “MASS HEALTH CONNECTOR,” which any consumer would recognize as an abbreviation of MASSACHUSETTS HEALTH CONNECTOR. Indeed, the full MASSACHUSETTS HEALTH CONNECTOR mark is used prominently elsewhere on the webpage. Finally, at the bottom of the page outside of the main text box and in near-microscopic text, is a disclaimer; while a disclaimer is not enough to overcome bad faith, a microscopic disclaimer used as a plain sham acts to confirm bad faith. Avon Products, Inc. v. Simon Lee, Case No. D2010-0668 (WIPO Jun. 10, 2010) (“The disclaimer is a sham.”); The Chip Merchant, Inc. v. Blue Star Electronics, Case No. D2000-0474 (WIPO Aug. 21, 2000) (“The Panel notes that it finds the Respondent’s disclaimer to be ineffective and disingenuous in light of its size, content, and placement on its web site.”); Playboy Ent. Int’l v. Cantrell Inc., Case No. D2006-0823 (WIPO Sept. 8, 2006) (small disclaimer confirmed actual knowledge of Complainant’s use of mark, and therefore bad faith was demonstrated by such use with “obvious knowledge of the Complainant’s prior rights;” small disclaimer did nothing so as to be noticed by Internet users or rectify likely confusion). In sum, at every turn, the webpages linked to the Domain Name ensure that consumers will have the highest likelihood of confusion. Thus, the Domain Name and the content on the associated webpages, demonstrate that the likelihood of confusion created by Respondent is intentional.
e. Traditional revenue generation: The format of the website associated with the Domain Name <gohealthinsurance.com> – as a click-through revenue model –, is one of the traditional models for bad faith use of a domain name. See, e.g. Gebrüder Dorfner GmbH & Co. Kaolin- und Kristallquarzsand-Werke KG v. Michael Robert, Case No. D2009-0446 (WIPO June 2, 2009).
v. Based on the foregoing, Respondent registered the Domain Name in bad faith. Complainant has thus met all three criteria for requiring the transfer of the Domain Name in accordance with the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Forum has received emails from Brent Levison and Gilboa Merdinger. Neither email constitutes a formal answer. In the first email, which was received on March 23, 2016, Gilboa Merdinger said, “I wanted to reach out to you as I got a response today from the attorney of the company who owns the godaddy account that contains the disputed domain name. He says they can’t do the transfer as the domain is frozen by godaddy.” The name of the sender of this email is similar to the name of the registrant listed in the WHOIS record, “Gil Merdinger,” and it is likely that this email was sent by Respondent, although the email address is slightly different than the one listed in the WHOIS record.
On March 24, 2016 the Forum received a second email. This email was from an individual named Brent Levison, but the sender of the original email, Gilboa Merdinger was copied on the correspondence. This email was more likely a consent to transfer, even though it did not come from the Respondent. The email said, “Please be advised that the subject dispute will require the previous owner and operator of the website who is copied on this email to handle the dispute and all of its proceedings, correspondence and documentation etc. Please also note that once the current owner of the url is given guidance and the domain is unlocked from the godaddy account a transfer the domain will occur as directed accordingly. Please note that the current account owner has never conducted any business or conducted any marketing in connection with the subject disputed domain and intends to cooperate with your findings and requests.”
These emails are not a clear and unambiguous consent to transfer the domain name. A party does not have to agree to accept this Panel’s findings once a Proceeding begins. The UDRP gives effect to a Panel’s findings because the party agrees to the UDRP once the party registers a domain name. A subsequent undertaking to accept a Panel’s findings means nothing and unlocking the domain name will only introduce a risk of possible cyberflight.
Additionally, the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Nat. Arb. Forum July 17, 2008), the panel stated that:
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
Therefore, this Panel will analyze the case under the elements of the UDRP.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 uses the MASSACHUSETTS HEALTH CONNECTOR mark in connection with its business providing and administrating health insurance plans. Complainant registered the MASSACHUSETTS HEALTH CONNECTOR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,668,308, registered January 6, 2015). Registration of a mark with a governmental authority, such as the USPTO, adequately demonstrates rights to a mark under a UDRP Policy ¶ 4(a)(i) analysis. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Complainant has demonstrated rights in the MASSACHUSETTS HEALTH CONNECTOR mark under Policy ¶ 4(a)(i).
Complainant claims Respondent’s <healthconnector.co> domain name is confusingly similar to Complainant’s MASSACHUSETTS HEALTH CONNECTOR mark because it incorporates all of the mark except the geographic term “Massachusetts” and adds the ccTLD “.co” and eliminates the space between the two words. Such alterations are insufficient to prevent a finding of confusing similarity under Policy ¶ 4(a)(i). Adding a geographical term does not adequately distinguish a domain name from a mark under Policy ¶ 4(a)(i) analysis. Every domain name is required to have a TLD, whether it is a gTLD or a ccTLD. The TLD must be ignored under a Policy ¶ 4(a)(i) analysis. To do otherwise would be to eviscerate the UDRP. Domain name syntax does not allow spaces, which means they must be disregarded under a Policy ¶ 4(a)(i) analysis. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also 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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Respondent’s <healthconnector.co> domain name is confusingly similar to Complainant’s MASSACHUSETTS HEALTH CONNECTOR mark under Policy ¶4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent has no rights or legitimate interests in the <healthconnector.co> domain name. Respondent is not commonly known by the disputed domain name. The original WHOIS information was a privacy service. The current WHOIS information regarding the disputed domain name lists “Gil Merdinger” registrant of record. Complainant has not given Respondent permission to use its MASSACHUSETTS HEALTH CONNECTOR mark. Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims Respondent is neither making (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use through the <healthconnector.co> domain name. The domain name resolves to a website that purports to be “the Massachusetts online marketplace for health insurance” in an attempt to redirect Complainant’s users to Respondent’s website. The website contains a very small disclaimer and link to Complainant’s site at the bottom of the page, but the disclaimer does not lessen user confusion. All this disclaimer does is show Respondent is aware of Complainant’s rights and tries to mask the fact Respondent is trying to pass itself off as Complainant. Respondent includes hyperlinks to health insurance websites that provide users with health insurance quotes from the same companies offered by Complainant, but without the federal and state subsidies users would be granted if they purchased the insurance through Complainant’s website. A respondent’s use of a complainant’s mark to operate a pay-per-click website containing links to the websites of Complainant’s competitors not to constitute either a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant). Nor is directly competing with Complainant (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use of the <healthconnector.co> domain name. Respondent’s <healthconnector.co> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent registered the disputed domain name using a privacy service. This means Respondent has done nothing to publicly associate itself with the disputed domain name. Respondent clearly cannot get any rights through such actions.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Respondent registered the domain name to create a likelihood of confusion with Complainant and Complainant’s mark to profit from users looking for Complainant’s site who are prompted to follow links to buy insurance from competing marketplaces from Respondent’s site. Internet user confusion that results in the redirection to Respondent’s site with links to competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See 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).
Complainant claims Respondent must have had actual notice of Complainant's rights in the MASSACHUSETTS HEALTH CONNECTOR mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. Respondent’s actual knowledge of Complainant’s rights in the mark is clear because of Respondent’s use of a disclaimer citing Complainant’s rights. see 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).
Respondent registered the disputed domain name using a privacy service. This raises a rebuttable presumption of bad faith in the commercial context. Complainant has done nothing to rebut that presumption. For that reason alone, this Panel is willing to find bad faith registration and use of the disputed domain name.
The Panel finds Policy ¶ 4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <healthconnector.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 5, 2016
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