Associates of Otolaryngology, LLC v. R. Lundgren
Claim Number: FA1710001754063
Complainant is Associates of Otolaryngology, LLC (“Complainant”), represented by William J. Robers of Sparks Willson Borges Brandt & Johnson, P.C., Colorado, USA. Respondent is R. Lundgren (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <associatesofotolaryngology.com>, registered with GoDaddy.com, LLC.
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 October 16, 2017; the Forum received payment on October 16, 2017.
On Oct 17, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <associatesofotolaryngology.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 October 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@associatesofotolaryngology.com. Also on October 18, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2017, 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 uses the ASSOCIATES OF OTOLARYNGOLOGY mark for medical and health services. Complainant registered the mark with the state of Colorado (“CO”) (Reg. No. 20171544267, registered July 20, 2017), which demonstrates its rights in the mark. Respondent’s <associatesofotolaryngology.com> is identical to Complainant’s mark because it incorporates the entire mark, omits the spacing within the mark, and adds a “.com” generic top-level-domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <associatesofotolaryngology.com> domain name. There is no evidence in the WHOIS information to suggest that Respondent is known by the <associatesofotolaryngology.com> domain name. Complainant has not authorized Respondent to use the mark. Respondent attempts to pass off as Complainant. Respondent fails to make an active use of the disputed domain name.
iii) Respondent registered and continues to use <associatesofotolaryngology.com> in bad faith. Respondent’s registration and use of the offending domain name disrupts Complainant’s business by diverting internet traffic from Complainant’s website to Respondent’s fake website. Further, Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered <associatesofotolaryngology.com> on May 29, 2017.
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.
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.”).
Complainant claims to have registered its ASSOCIATES OF OTOLARYNGOLOGY mark with the state of CO as early as 2017 (Reg. No. 20171544267, registered July 20, 2017). Registration of a mark with a state authority sufficiently establishes the required rights in a mark for purposes of Policy ¶ 4(a)(i). See Ridgegate Investments, Inc. v. Cody McCarthy / Keller Williams Real Estate LLC, FA 1727947 (Forum May 26, 2017) (“The Panel also finds that the registration of a mark with a State authority is sufficient to establish rights in the mark.”). Therefore, the Panel concludes that Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <associatesofotolaryngology.com> is identical to Complainant’s mark because it incorporates the entire ASSOCIATES OF OTOLARYNGOLOGY mark, omits the spacing within the mark, and appends the “.com” gTLD, all of which are insufficient changes in a Policy ¶ 4(a)(i) analysis. See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”). See also Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Accordingly, the Panel finds that the additions made to Complainant’s mark in the disputed domain name do not serve to differentiate the two for the purposes of 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 contends Respondent is not commonly known by the <associatesofotolaryngology.com> domain name. Further, Complainant has never authorized Respondent to use the ASSOCIATES OF OTOLARYNGOLOGY mark. In lieu of a Response, WHOIS information can substantiate an assertion that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record lists Respondent as “R. Lundgren,” which does not serve to show that Respondent has been commonly known by the disputed domain name. The Panel thus finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain name in connection with any bona fide offering of goods or services, or for a legitimate noncommercial or fair use, as Respondent attempts to pass off as Complainant through the use of misleading and incorrect information regarding Complainant’s business. See Amend. Compl. Annex 3. Passing off as a complainant to benefit from the ensuing confusion does not evince a bona fide offering of goods or services, or a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) & (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Further, Complainant asserts that Respondent updated the resolving website of the <associatesofotolaryngology.com> domain name to a blank page. See Amend. Compl. Annex 6. Failure to make demonstrable preparations to use a disputed domain name demonstrates a lack of rights and legitimate interests as per Policy ¶¶ 4(c)(i) & (iii). See also Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) (“Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.”). Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 names.
Complainant argues that the disputed domain name attracts internet users to Respondent’s website for commercial gain, creating a likelihood of confusion that Respondent is affiliated with Complainant. Moreover, Complainant argues that Respondent uses <associatesofotolaryngology.com> in an attempt to pass itself off as Complainant. Further, Respondent’s registration and use of the offending domain name disrupts Complainant’s business by diverting internet traffic from Complainant’s website to Respondent’s fake website. 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); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Complainant asserts Respondent’s use of a domain name that appropriates Complainant’s mark to provide Internet users fraudulent information about Complainant’s business, such as an expired address, constitutes bad faith registration and use. The Panel agrees with Complainant and determines that Respondent registered and is using <associatesofotolaryngology.com> in bad faith pursuant to Policy ¶¶ 4(b)(iv) and 4(a)(iii).
Complainant lastly claims that Respondent had actual notice or constructive knowledge of Complainant’s ASSOCIATES OF OTOLARYNGOLOGY mark. However, the Panel may disregard arguments of bad faith based on constructive knowledge as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). This Panel also declines to find bad faith as a result of constructive knowledge. However, the Panel presumes due to the notoriety of Complainant's mark and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). 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). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the ASSOCIATES OF OTOLARYNGOLOGY mark based upon Respondent’s use of the full mark in registering the domain name, and Respondent’s use of the infringing domain name to pass off as Complainant. 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <associatesofotolaryngology.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 22, 2017
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