DaVita Inc. v. Cynthia Rochelo
Claim Number: FA1706001738034
Complainant is DaVita Inc. (“Complainant”), represented by Sarah J Schneider of Sheridan Ross P.C., Colorado, USA. Respondent is Cynthia Rochelo (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <davitahealth.us>, registered with Google Inc.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 29, 2017; the Forum received payment on June 29, 2017.
On July 5, 2017, Google Inc. confirmed by e-mail to the Forum that the <davitahealth.us> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2017 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@davitahealth.us. Also on July 6, 2017, 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.
A timely Response was received and determined to be complete on July 17, 2017.
On July 18, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 offers a wide variety of services, all of which are generally related to health and medical services, and related management and educational services concerning the treatment of patients with renal disease. Complainant registered the DAVITA mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,576,733, registered June 4, 2002). Respondent’s <davitahealth.us> domain name is identical or confusingly similar to Complainant’s mark as it contains the entire DAVITA mark and merely appends the descriptive term “health” and the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the <davitahealth.us> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to further a complex phishing scheme in which it uses Complainant’s marks and employee names to fraudulently obtain personal information from individuals potentially seeking employment with Complainant. The complex scheme continues with Respondent requiring users to provide their passport, birth certificate, driver’s license, and proof of address, to a different email using the same disputed domain name. Additionally, Respondent attempting to pass itself off as Complainant via email further demonstrates its lack of rights or legitimate interests. Finally, Respondent fails to make an active use of the disputed domain name or otherwise present demonstrable evidence of preparations to build a website before the present dispute arose.
Respondent registered and uses the <davitahealth.us> domain name in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location. Further, Respondent uses the disputed domain name to further a complex phishing scheme to obtain personal information from users seeking employment with Complainant. Finally, by incorporating Complainant’s entire DAVITA mark and impersonating Complainant’s employees via email, Respondent must have had knowledge of Complainant’s mark.
B. Respondent
Respondent did not register the domain name, as someone else registered the domain name using Respondent’s information and without Respondent’s knowledge.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <davitahealth.us> domain name.
Since Respondent denies registering the domain name, no finding is made that Respondent actually registered the disputed domain name. Reference to Respondent’s actions here refer to the person who registered and uses the domain name.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant registered the DAVITA mark with the USPTO (e.g. Reg. No. 2,576,733, registered June 4, 2002). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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).”). Accordingly, the Panel finds that Complainant has established rights in the DAVITA mark.
Complainant next argues that Respondent’s <davitahealth.us> domain name is identical or confusingly similar to Complainant’s mark as it contains the entire DAVITA mark and merely appends the descriptive term “health,” along with the ccTLD “.us.”. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). The Panel finds that the <davitahealth.us> domain name is confusingly similar to the DAVITA mark under Policy ¶4(a)(i).
Complainant has proved this element.
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 contends that Respondent has no rights or legitimate interests in the <davitahealth.us> domain name. Relevant information includes the WHOIS registration information. 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). The WHOIS information identifies “Cynthia Rochelo” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the DAVITA mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <davitahealth.us> domain name under Policy ¶ 4(c)(ii).
Complainant also contends that the disputed domain name also redirects users to a website that lacks any content, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Failure to make active use of a confusingly similar domain name can evince a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant asserts that Respondent uses the disputed domain name in connection with an email phishing scheme. The Panel agrees that Respondent does not make an active use of the <davitahealth.us> domain name, evincing a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).
Complainant further argues that Respondent’s lack of rights and legitimate interests is evinced by Respondent passing off as Complainant in its attempts to phish for information from consumers via email. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Complainant provides an email chain allegedly between Respondent and an individual it engages in the phishing scheme. The evidence appears to show that Respondent requires users to give personal information to Respondent in hopes of employment. The Panel finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent registered and is using the <davitahealth.us> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant claims Respondent actually uses the names of two of Complainant’s employees to further an email phishing scam purporting to offer employment. This allegedly financially benefits Respondent by fraudulently obtaining users’ personal information. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent uses the disputed domain name to fraudulently send emails to Complainant’s customers in hopes of receiving personal or financial information. A phishing scheme through fraudulent email communications can evince bad faith under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”). Respondent appears to portray itself as Complainant in furtherance of a fake employment opportunity with Complainant in order to receive personal information from those prospective applicants. The Panel agrees that Respondent’s apparent phishing scheme does not amount to any good faith use of the <davitahealth.us> domain name.
Complainant contends that Respondent must have had actual knowledge of the mark as Respondent incorporated the entire DAVITA mark and impersonated Complainant’s employees via email. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <davitahealth.us> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 20, 2017
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