athenahealth, Inc. v. August Zabbo
Claim Number: FA1608001690072
Complainant is athenahealth, Inc. (“Complainant”), represented by Robert M. O’Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is August Zabbo (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <athenahealthinc.com> and <athenabilling.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 Forum electronically on August 19, 2016; the Forum received payment on August 19, 2016.
On August 22, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <athenahealthinc.com> and <athenabilling.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 August 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@athenahealthinc.com, and postmaster@athenabilling.com. Also on August 22, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant registered its ATHENAHEALTH.COM mark and several other ATHENA-formative marks with the United States Patent and Trademark Office (“USPTO”) (e.g., ATHENAHEALTH.COM, Reg. No. 2,737,212, registered July 15, 2003) long before Respondent registered the disputed domain names. See Compl., at Attached Ex. 4. The USPTO registrations confer rights in the marks to Complainant, to which it contends that Respondent’s domain names are confusingly similar. Respondent’s <athenahealthinc.com> domain name merely adds the generic term “inc” within the fully-included ATHENAHEALTH.COM mark. Respondent’s <athenabilling.com> domain name, simply adds the term
“billing” which is descriptive of Complainant’s business, and a generic top-level domain (“gTLD”), to the dominant “ATHENA” portion of
Complainant’s family of registered marks.
2. Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use any variation of its ATHENAHEALTH.COM marks, and Respondent is not commonly known by either of the disputed domain names. Respondent has not used either domain name to make a bona fide offering of goods and services, or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Respondent’s domain names resolve to parked pages with pay-per-click links that direct Internet users to Complainant’s competitors. See Compl., at Attached Ex. 8 (both sites demontrating “This Web page is parked for FREE, courtesy of GoDaddy.com” [hyperlink omitted]).
3. Respondent has registered and is using the disputed domain names in bad faith. Both of Respondent’s domain names infringe on Complainant’s marks, which is evidence of a pattern of bad faith registration under Policy ¶ 4(b)(ii). Respondent also had actual notice of Complainant’s rights in the ATHENAHEALTH.COM family of marks under Policy ¶ 4(a)(iii) when it registered the two domain names in May, 2016.
B. Respondent
1. Respondent has not submitted a formal Response to this Complaint.
1. Respondent’s <athenahealthinc.com>, <athenabilling.com> domain names are confusingly similar to Complainant’s ATHENAHEALTH.COM mark.
2. Respondent does not have any rights or legitimate interests in the <athenahealthinc.com>, <athenabilling.com> domain names.
3. Respondent registered or used the <athenahealthinc.com>, <athenabilling.com> domain names 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 formal 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.”).
Complainant asserts it has rights in the ATHENAHEALTH.COM mark and a family of ATHENA-formative marks based on registration with the USPTO (e.g., ATHENAHEALTH.COM, Reg. No. 2,737,212, registered July 15, 2003). See Compl., at Attached Ex. 4. Panels have held that registration of a mark with the USPTO confers rights in the mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). As such, the Panel finds Complainant to have rights in the ATHENAHEALTH.COM mark.
Complainant contends that Respondent’s <athenahealthinc.com> domain name is confusingly similar to its ATHENAHEALTH.COM mark. Complainant argues the addition of the generic term “inc,” within its fully incorporated ATHENAHEALTH.COM mark does nothing to distinguish the domain name from Complainant’s mark. Previous panels have found that a domain name that adds
“inc” to a complainant’s mark can be confusingly similar. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Accordingly, the Panel determines that <athenahealthinc.com> is confusingly similar to the ATHENAHEALTH.COM mark.
Complainant additionally asserts that Respondent’s <athenabilling.com> domain name is confusingly similar to its collection of “ATHENA-formative marks.” Complainant states that its registered marks feature the dominant “athena” portion, followed by one of its services such as “CLINICALS,” “COLLECTOR,” or “COMMUNICATOR.” See Compl., at Attached Ex. 4. Thus, Complainant argues that Respondent’s <athenabilling.com> domain name is confusingly similar because it merely adopts the descriptive term “billing” and the “.com” gTLD to the ATHENA portion of its marks. Panels have found that adding a term that is descriptive of complainant’s business and a gTLD can make a domain name confusingly similar to a complainant’s mark, specifically when that term is
“billing.” See Microsoft Corp. v. PURNA BANIYA / GAURAV / Harkesh / Manoj / Sheker, FA1597557 (Forum Feb. 18, 2015) (finding inter alia “billingmicrosoft. com,” “hotmailbillingsupport.com,” “microsoftofficebilling.com,” and “xboxbilling.com” to be confusingly similar to complainant’s MICROSOFT, HOTMAIL, and XBOX marks); Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Accordingly, the Panel decides that Respondent’s domain names are confusingly similar to Complainant’s marks under 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 (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.”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant contends that it has not licensed or granted permission for Respondent to use any variation of its ATHENAHEALTH.COM family of marks. Complainant also asserts that Respondent is not commonly known by any of the disputed domain names under Policy ¶ 4(c)(ii). The Panel notes the WHOIS information for both of
Respondent’s domain names lists “August Zabbo” as the registrant. See Compl., at Attached Ex. 2. When there is a lack of contradicting evidence in the record, the Panel infers Respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant next argues that neither of the disputed domain names can be construed as making a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and (iii). Complainant argues that Respondent is not making an active use of either domain name, and that the domain names currently resolve to parked pages with pay-per-click advertisements. Complainant submitted screen shots of the resolving websites at the disputed domain names to show that some links directly compete with its medical billing business. See Compl., at Attached Ex. 10. Panels have held that hosting pay-per-click links (whether related to complainant’s business or not) on a disputed domain name does not create rights or legitimate interests. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Accordingly, the Panel finds that Respondent is not making a bona fide offering of goods and services or a legitimate noncommercial or fair use of either disputed domain name.
Complainant alleges that Respondent has engaged in a pattern of bad faith registration of domain names under Policy ¶ 4(b)(ii). Panels have found that a respondent’s registration of multiple domain names that infringe on complainant’s marks can evidence a pattern of bad faith. See YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). As such, the Panel decides that Respondent’s act of registering the <athenahealthinc.com> and <athenabilling.com> domain names is sufficient evidence to prove a pattern of bad faith registration under Policy ¶ 4(b)(ii).
In addition, Complainant alleges that Respondent had actual notice of Complainant’s rights in the ATHENA family of marks when it registered the disputed domain names. Complainant asserts it has been using this family of marks since 2000, and that Respondent was on notice of its website and offerings. See Compl., at Attached Ex. 3. While the UDRP does not recognize constructive notice alone as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), prior panels have inferred actual notice when the resolving website of a disputed domain name contains links related to complainant’s field of business. See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation). Therefore, the Panel chooses to hold Respondent in bad faith due to its actual knowledge of Complainant’s rights in the ATHENA marks.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <athenahealthinc.com> and <athenabilling.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 4, 2016
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