HCAFranchise Corporation v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2001001880876
Complainant is HCAFranchise Corporation (“Complainant”), represented by Daniel H. Bliss of HOWARD & HOWARD ATTORNEYS PLLC, United States. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), represented by Minnie Cox, Maryland, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homecareassistanceannapolis.com>, registered with Internet Domain Service BS Corp.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2020 The Forum received payment that day.
On January 29, 2020, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <homecareassistanceannapolis.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 February 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2020 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@homecareassistanceannapolis.com. Also on February 3, 2020, 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 February 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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
Through corporate-owned and franchisee-owned franchises, Complainant provides home health care and non-medical personal support services.
Complainant has rights in the trademarks HOME CARE ASSISTANCE and HOME CARE ASSISTANCE 1-866-4-LiveIn. The domain name
<homecareassistanceannapolis.com> is confusingly similar to those marks and Respondent has no rights or legitimate interests in respect of the domain name, which was registered and is being used in bad faith.
As to legitimacy, Complainant has used the domain name <homecareassistance.com> since 2002 in has been mentioned in numerous publications (Complaint Annex F) which show that Complainant has been known by the mark HOME CARE ASSISTANCE for some years before Respondent registered the domain name in April 2018. Respondent is not commonly known by the domain name and is not licensed or authorized to use Complainant’s marks. The domain name resolves to a website offering home care services in competition with Complainant.
As to bad faith, Respondent’s use of the domain name to resolve to a website offering home care services in competition with Complainant is disruptive to Complainant and attracts Internet users for presumed commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has shown that it is the proprietor of United States federally registered marks No. 5,629,630 HOME CARE ASSISTANCE, registered on December 11, 2018 and No. 3,304,464 HOME CARE ASSISTANCE 1-866-4-LiveIn, registered on October 2, 2007. Complainant also claims common law rights in the HOME CARE ASSISTANCE mark dating from April, 2006.
Although the HOME CARE ASSISTANCE mark was registered after Respondent registered the domain name in April, 2018, for the purposes of determining this element it is sufficient that Complainant show that it has rights as at the date of the filing of the Complaint. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 1.1.3: “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed”.
Apart from the inconsequential generic Top Level Domain “.com”, which may be disregarded, the domain name <homecareassistanceannapolis.com> comprises the whole of Complainant’s HOME CARE ASSISTANCE mark and the dominant part of Complainant’s HOME CARE ASSISTANCE 1-866-4-LiveIn mark, in each case together with the geographic name “Annapolis”, which does not sufficiently distinguish the domain name from either of those marks. This is especially so because, as shown in Complaint Annex F, by 2015 Complainant’s franchised business was known by the name HOME CARE ASSISTANCE followed by a geographic name, such as Cincinnati, Dayton, Waterloo, Grand Rapids, Nebraska, Northern Arizona and Denver.
Accordingly, the Panel finds the domain name to be confusingly similar to each of Complainant’s marks.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark 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.
The Panel finds that Complainant’s HOME CARE ASSISTANCE mark, albeit registered after Respondent registered the domain name in April 2018, was by then widely known within the industry as distinctive of Complainant. Further, Complainant’s HOME CARE ASSISTANCE 1-866-4-LiveIn mark, of which the dominant part is the words HOME CARE ASSISTANCE, was registered on October 2, 2007, many years before Respondent registered the domain name. It is therefore highly likely that, prior to registering the domain name and using it for a competing website, Respondent was aware of Complainant and its marks and was aware of the practice whereby Complainant’s franchises were known by the mark HOME CARE ASSISTANCE followed by their geographic location.
These circumstances, coupled with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
(iv) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(v) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
Having concluded that it is highly likely that, prior to registering the domain name and using it for a competing website, Respondent was aware of Complainant and its marks and was aware of the practice whereby Complainant’s franchises were known by the mark HOME CARE ASSISTANCE followed by their geographic location, the Panel finds the circumstances set out in Policy ¶¶ 4(b)(iii) and (iv) to be established and that, accordingly, Respondent registered and is using the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Complainant has established this element.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <homecareassistanceannapolis.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 5, 2020
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