Affordable Care, Inc. v. Pham Dinh Nhut
Claim Number: FA1605001674280
Complainant is Affordable Care, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com>, registered with April Sea Information Technology Company Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 10, 2016; the Forum received payment on May 10, 2016. The Complaint was received in both Vietnamese and English.
On May 15, 2016, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names are registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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 May 24, 2016, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese language Written Notice of the Complaint, setting a deadline of June 13, 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@afffordabledentures.com, postmaster@affordabedentures.com, postmaster@affordabledentres.com, postmaster@affordabledenures.com, and postmaster@affordalbedentures.com. Also on May 24, 2016, the Vietnamese language 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 June 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
1. Complainant uses the AFFORDABLE DENTURES mark in connection with its business as a denture provider.
2. Complainant has registered the AFFORDABLE DENTURES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,707, registered Mar. 12, 2002), which demonstrates rights in the mark. See Compl., at Attached Ex. E. Respondent’s <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names are confusingly similar as they each contain all or almost all of the AFFORDABLE DENTURES mark, with the only other changes being the elimination of the space between words and the addition of the generic top-level domain (“gTLD”) “.com.” The disputed domain names are an example of typosquatting and are each designed to take advantage of typographical errors.
3. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names. Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the disputed domain names. Rather, the domain names redirect to websites containing hyperlinks that purport to redirect to the websites of Complainant’s competitors. See Compl., at Attached Ex. H. Further, 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 websites.
4. Respondent has a pattern of domain name misuse as evidenced by multiple prior UDRP decisions ordering the transfer of domain names back to the trademark owners. See Compl., at Attached Ex. N. Respondent’s registration and use of the <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the websites include competing hyperlinks. See Compl., at Attached Ex. H. Respondent has engaged in typosquatting, which provides further evidence of bad faith registration and use of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the Registration Agreement is written in Vietnamese,
thereby making the language of the proceedings in Vietnamese.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
FINDINGS
1. Complainant is a United States company engaged in the business of a provider of dentures.
2. Complainant has registered the AFFORDABLE DENTURES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,707, registered Mar. 12, 2002), thus establishing its trademark rights.
3. The <afffordabledentures.com> domain name was registered on September 1, 2007, the <affordabedentures.com> domain name was registered on April 25, 2007, the <affordabledentres.com> domain name was registered on January 28, 2008, the <affordabledenures.com> domain name was registered on June 27, 2007, and the <affordalbedentures.com> domain name was registered on May 27, 2007.
4. The disputed domain names redirect to websites containing hyperlinks that purport to redirect internet users to the websites of Complainant’s competitors.
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(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 (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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant uses the AFFORDABLE DENTURES mark in connection with its business as a denture provider. Complainant submits it has registered the AFFORDABLE DENTURES mark with the USPTO (e.g., Reg. No. 2,546,707, registered Mar. 12, 2002), which it contends demonstrates rights in the mark. See Compl., at Attached Ex. E. Panels have found registration with the USPTO to be sufficient to establish rights in a trademark, even where the respondent operates in a different country. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Therefore, the Panel finds that Complainant has demonstrated rights in the AFFORDABLE DENTURES mark under Policy ¶ 4(a)(i), even though Respondent reportedly resides in Vietnam.
The second issue that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AFFORDABLE DENTURES mark. Complainant argues that Respondent’s <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names are confusingly similar as they each contain all or almost all of the AFFORDABLE DENTURES mark, with the only other changes being the elimination of the space between words and the addition of the gTLD “.com.” Complainant contends that the disputed domain names constitute typosquatting, as each contains either the addition of an extra character, the removal of one character, an incorrect character, or two juxtaposed characters. Panels have found such alterations to marks to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837 (Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)). The Panel therefore finds that the disputed domain names are confusingly similar to the AFFORDABLE DENTURES mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AFFORDABLE
DENTURES mark and to use it in its domain names, making in each case only minor typographical alterations;
(b) Respondent registered the <afffordabledentures.com> domain name on September 1, 2007, the <affordabedentures.com> domain name on April 25, 2007, the <affordabledentres.com> domain name on January 28, 2008, the <affordabledenures.com> domain name on June 27, 2007, and the <affordalbedentures.com> domain name on May 27, 2007;
(c) The disputed domain names redirect to websites containing hyperlinks that purport to redirect internet users to the websites of Complainant’s competitors;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain names. The Panel notes that the WHOIS information lists “Pham Dinh Nhut” as registrant. Complainant also submits that it has not given Respondent permission to use its AFFORDABLE DENTURES mark. The Panel also notes that Respondent failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to conclude Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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);
(f) Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the disputed domain names. Rather, Complainant contends that the domain names redirect to websites containing hyperlinks that purport to redirect to the websites of Complainant’s competitors. See Compl., at Attached Ex. H. The links include titles such as “Affordable Dental Implant,” “Affordable Dentures,” and “Denture Dentists.” See id. Panels have found a respondent’s use of a complainant’s mark to operate a pay-per-click website containing links to competitors’ goods to constitute neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Therefore, the Panel finds that the disputed domain names constitute neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has a pattern of domain name misuse as evidenced by multiple prior UDRP decisions ordering the transfer of domain names back to the trademark owners. See Compl., at Attached Ex. N. The Panel agrees with Complainant and holds that a history of adverse UDRP decisions shows a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Fandango, LLC v. 21562719 Ont Ltd, FA1209001464081 (Forum Nov. 2, 2012) (“Respondent’s past conduct and UDRP history establishes a pattern of registered domain names in bad faith under Policy ¶ 4(b)(ii).”).
Secondly, Complainant contends that Respondent’s registration and use of the <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the websites include competing hyperlinks. See Compl., at Attached Ex. H. Panels have found a respondent’s diversion of Internet users to competitors via hyperlinks related to a Complainant’s legitimate business to constitute bad faith disruption under Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Therefore, the Panel finds that Respondent’s registration and use of the disputed domain names constitutes bad faith disruption under Policy ¶ 4(b)(iii).
Thirdly, Complainant argues that 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 websites. Complainant contends that Respondent registered the domain names to create a likelihood of confusion with Complainant and Complainant’s mark in order to profit from users looking for Complainant’s dental services. The Panel agrees with Complainant and holds that Internet user confusion that results in the redirection to Respondent’s websites with links to Complainant’s competitors constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Clark Equipment Company v. Namase Patel / Mumbai Domains, FA1406001566288 (Forum July 30, 2014) (“The Panel observes that the Respondent’s disputed domain name leads to a website that features links to products that directly compete with Complainant’s products. The Panel determines that Respondent is attempting to mislead consumers as to Complainant’s affiliation with the disputed domain name, and Respondent likely profits from the resulting confusion. Therefore, the Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Fourthly, Complainant further argues that Respondent has engaged in typosquatting, which provides further evidence of bad faith registration and use of the disputed domain names. The Panel agrees that Respondent’s registration of the <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names constitutes typosquatting because each domain name takes advantage of common typographical errors and finds that typosquatting constitutes bad faith registration and use of the disputed domain names. See Finish Line, Inc. and its subsidiary Spike’s Holdings, Inc. v. XU SHUAI WEI / XUSHUAIWEI, FA1409001577968 (Forum October 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names using the AFFORDABLE DENTURES mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <afffordabledentures.com>, <affordabedentures.com>, <affordabledentres.com>, <affordabledenures.com>, and <affordalbedentures.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 26, 2016
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