athenahealth, Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1601001657605
Complainant is athenahealth, Inc. (“Complainant”), represented by Robert M. O’Connell, Jr. of Fish & Richardson P.C., Massachusetts, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <athenahealthlogin.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2016; the Forum received payment on January 21, 2016.
On January 26, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <athenahealthlogin.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 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@athenahealthlogin.com. Also on February 2, 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 February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the ATHENAHEALTH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,737,212, registered July 15, 2003). Respondent’s <athenahealthlogin.com> domain name is confusingly similar to the ATHENAHEALTH mark because it contains the entire mark, along with the generic term “login” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the <athenahealthlogin.com> domain name. Respondent is not authorized to use the ATHENAHEALTH mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is a parked page containing pay-per-click links to competitors of Complainant.
iii) Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions decided against it. Respondent registered the <athenahealthlogin.com> domain name in bad faith because it was on notice of Complainant’s rights in the ATHENAHEALTH mark at the time it registered the domain. Respondent’s use of blatantly false contact information is evincing of bad faith registration.
B. Respondent
Respondent has failed to submit a formal Response in this proceeding. The Panel notes that the <athenahealthlogin.com> domain name was created on July 22, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Preliminary Issue: Language of Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Finnish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Finnish language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel weighs the relative time and expense in enforcing the Finnish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant argues that Respondent’s domain name URL and resolving webpage is in English. Complainant contends that Respondent must therefore understand English. Complainant maintains that it would require substantial cost and time to translate the documents from English to Finnish. Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that Respondent is conversant and proficient in the English language. After considering the circumstance of the present case and in the absence of Respondent's objection to Complainant's request, the Panel decides that the proceeding should be in English.
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 (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 claims it has rights in the ATHENAHEALTH mark through its registration with the USPTO (Reg. No. 2,737,212, registered on July 15, 2003). Accordingly, the Panel finds that Complainant has rights in the ATHENAHEALTH mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
Complainant argues that Respondent’s <athenahealthlogin.com> domain name is confusingly similar to the ATHENAHEALTH mark because it contains the entire mark, while adding the generic term “login” and the gTLD “.com.” Complainant urges that these alterations are not enough to distinguish the mark and domain name under Policy ¶ 4(a)(i). As such, the Panel finds that the <athenahealthlogin.com> domain name is confusingly similar to the ATHENAHEALTH mark. See Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
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 (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 contends that Respondent is not commonly known by the <athenahealthlogin.com> domain name, as the available WHOIS information lists “Hulmiho Ukolen / Poste restante” as Registrant and because Respondent is not authorized to use the ATHENAHEALTH mark. The Panel notes that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. As the Panel agrees with Complainant, it finds that Respondent is not commonly known by the <athenahealthlogin.com> domain name under 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 urges that Respondent fails to use the <athenahealthlogin.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is a parked page containing pay-per-click links to competitors of Complainant. Complainant has provided screenshots to demonstrate this use, showing links such as “Health,” “Health Plan,” and “Affordable Health Insurance.” As the Panel finds this evidence sufficient to show that Respondent is using the domain to host competitive pay-per-click links, it finds that Respondent fails to use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant claims that Respondent has demonstrated a pattern of bad faith registration and use of domain names through prior UDRP decisions decided against it. Complainant cites the following cases to demonstrate this pattern: Gulf DTH LDC v. WhoIs Privacy_Protection / Hulmiho Ukolen, Autodesk, Inc. v. Domain Admin / Hulmiho Ukolen, Poste restante; Kellogg North America Company v. Hulmiho Ukolen / Poste restante; and Apple Inc. v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois Protection. As the Panel finds these cases sufficient to demonstrate a history of bad faith registration and use of domain names, it finds that Respondent registered and uses the <athenahealthlogin.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant urges that Respondent registered the <athenahealthlogin.com> domain name in bad faith because it was on constructive notice of Complainant’s rights in the ATHENAHEALTH mark at the time it registered the domain. Complainant contends that because the domain was registered in 2015, Complainant’s longstanding use of the mark provided notice to Respondent. The Panel infers from the fact of Complainant’s longstanding use of the mark that Respondent had actual notice, and not merely constructive notice, of Complainant’s rights, and thus it finds that Respondent registered the <athenahealthlogin.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); but 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).
Finally, Complainant alleges that Respondent’s having provided blatantly false WHOIS information is evidence of bad faith. The Panel’s attention is pointed to the provided WHOIS information, which states the Registrant City as “Finland,” the Registrant Street as “Helsinki main post office,” and the Registrant Phone as “1.234567890” amongst other obvious false entries. Prior panels have found bad faith in instances where the registrant of a domain name provided false information to the registrar. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). Thus this Panel finds bad faith under the Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <athenahealthlogin.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 7, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page