New York Quality Healthcare Corporation d/b/a Fidelis Care v. Fidelis Care
Claim Number: FA1912001873750
Complainant is New York Quality Healthcare Corporation d/b/a Fidelis Care (“Complainant”), represented by Peter T Busch of Leason Ellis LLP, New York, USA. Respondent is Fidelis Care (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelis-care.org>, registered with Wild West Domains, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 5, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <fidelis-care.org> domain name (the Domain Name) is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 December 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 26, 2019 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@fidelis-care.org. Also on December 5, 2019, 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 December 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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
Complainant is a health insurance provider. It is a wholly-owned subsidiary of Centene Corporation, which has rights in the FIDELIS CARE mark through ownership of the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,633,561, registered June 9, 2009). Centene Corporation has authorized Complainant to bring and maintain this proceeding on its behalf. Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it fully incorporates the mark, merely adding a hyphen between the two words and the “.org” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not authorized Respondent to use its mark. Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use because it resolves to an inactive web site. Additionally, the Respondent has not been commonly known by the Domain Name because it co-opted Complainant’s name without Complainant’s permission.
Respondent registered and uses the Domain Name in bad faith. Respondent registered the Domain Name primarily to disrupt Complainant’s business and to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site. Also, Respondent is guilty of typosquatting and is not making an active use of the Domain Name. Finally, as Respondent is not affiliated with Complainant, Complainant has no control over the nature and quality of Respondent’s website; and the reputation of Complainant’s name and marks are likely to be diminished by Respondent’s use.
B. Respondent
Respondent did not submit a Response in this proceeding.
C. Complainant Additional Submission
On or about January 10, 2020, in response to a Request from the Panel to submit additional evidence relating to Complainant’s rights in the FIDELIS CARE mark, Complainant filed an Additional Submission demonstrating by competent documentary evidence and testimony that the mark is currently owned by Centene Corporation (Centene), that Complainant is a wholly-owned subsidiary of Centene and that Centene has authorized Complainant to bring and maintain this proceeding on its behalf.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the Domain Name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The FIDELIS CARE mark was registered to New York State Catholic Health Plan, Inc., d/b/a Fidelis Care New York with the USPTO (Reg, No, 3,633,561) on June 9, 2009 and was subsequently assigned to Centene (Exhibits B and E to Complainant’s Response to Panel Request for Additional Submission). Complainant is a wholly-owned subsidiary of Centene and Centene has authorized Complainant to bring and maintain this proceeding on its behalf (Declaration of Peter S. Sloane). Ownership of a USPTO registration of a mark is sufficient to establish rights in that mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant is a wholly-owned subsidiary of the mark owner and the mark owner has authorized Complainant to bring and maintain this proceeding on its behalf, Complainant has sufficient rights in that mark to meet the requirements of Policy ¶ 4(a)(i). See Philip Morris USA Inc. v. Lee Rabidue, FA1908001859317 (Forum Oct. 1, 2019) (“a subsidiary relationship can sufficiently confer trademark rights between a subsidiary and parent company.”).
Respondent’s Domain Name is identical or confusingly similar to Complainant’s mark as it fully incorporates the mark, merely substituting a hyphen for the space between the two words and adding the “.org” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Daniel Handler v. Masanori Toriimoto / PLAN-B Co.,Ltd, FA 1778986 (Forum May 7, 2018) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the FIDELIS CARE mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to the respondent of the dispute, the respondent’s use 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;
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not licensed, authorized, or otherwise permitted Respondent to use Complainant’s mark, (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because it resolves to an inactive web site, and (iii) Respondent is not commonly known by the Domain Name. These allegations are addressed as follows:
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Exhibit D is a screenshot of the web page resolving from the Domain Name. The only substantive content appearing is the message “This page can’t be reached.” The site is obviously inactive. Using a confusingly similar domain name which resolves to an inactive webpage is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial fair use within the meaning of Policy ¶ 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
The WHOIS report submitted as Complaint Exhibit C lists the registrant of the Domain Name as “Fidelis Care.” This name is identical to the Domain Name. This does not mean that Respondent has been commonly known by the Domain Name, however, because as discussed above Respondent is not authorized to use Complainant’s mark, and the evidence before the Panel gives no indication that Respondent used this name for any purpose other than to register the Domain Name. Registering a domain name in a name which is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent “has been commonly known by” it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) simply by registering it in a name similar or identical to the domain name at issue, Policy ¶ 4(c)(ii) would be essentially meaningless. See Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated.”), see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). On the evidence before the Panel, it is clear that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(i) circumstances indicating that the respondent have registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 the respondent’s web site or location or of a product of service on the respondent’s web site or location.
Complainant alleges that Respondent’s conduct fits within the circumstances articulated by Policy ¶ 4(b)(iii) because it disrupts its business. By using the Domain Name to attract Internet traffic to an inactive web site, Respondent is disrupting the business of Complainant. There is no evidence, however, that Respondent is competing with Complainant. A number of UDRP panels have found that using a confusingly similar domain name to disrupt the business of a complainant was bad faith for the purposes of Policy ¶ 4(b)(iii), even when the respondent was not a competitor. Others have essentially by-passed the competition factor, focusing instead on disruption, and have simply found bad faith under ¶ 4(b)(iii), without further discussion or analysis.[i]
Policy ¶ 4(b)(iii) reads as follows: “you [the respondent] have registered the domain name primarily for the purposes of disrupting the business of a competitor” (emphasis supplied). The concept of “competition” in the context of Policy ¶ 4(b)(iii) has been subject to various interpretations by UDRP panels. Some have interpreted that term broadly to mean someone who “acts in opposition to the complainant.” See Mission KwaSizabantu v. Benjamin Rost, Case No. 2000-0279 (WIPO June 7, 2000). Others have limited the term to parties who vie commercially with each other in the same industry, offering the same or similar goods or services. See Tribeca Film Center Inc. v. Lorenzo Brusasco-Mackenzie, Case No. 2000-1772 (WIPO April 10, 2000). This Panel favors the second view, concurring with the panel in Britannia Building Society v. Britannia Fraud Prevention, Case No. 2001-0505 (WIPO July 8, 2001) that to accept the interpretation first above described would “render so many parties ‘competitors’ as to dilute the Policy’s bad faith requirement beyond recognition.” Clearly, Respondent here is not vying with Complainant for customers or business in the healthcare industry. In the absence of actual commercial competition between Complainant and Respondent, Respondent’s conduct cannot logically fall within the circumstances stated in Policy ¶ 4(b)(iii). Respondent here cannot be considered a competitor for the purposes of Policy ¶ 4(b)(iii).
That said, using a confusingly similar domain name to attract Internet traffic to an inactive web site is still bad faith. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. See Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), see also Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith. Similar to the facts in the Love City Brewing decision cited in the footnote, Respondent’s web site here is inactive. An Internet user reaching it thinking it was Complainant’s site would naturally question whether Complainant is still a viable, ongoing concern or perhaps was experiencing problems with its Internet operations. Respondent’s conduct creates initial interest confusion. It seriously disrupts Complainant’s business and, in and of itself, qualifies as bad faith registration and use of the Domain Name. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Kellogg Company and Kellogg North America Company v. Froot Loops of The Carolinas, FA758812 (Forum Sept. 6, 2006) (finding “Respondent’s failure to develop a website in connection with the <frootloopsnc.com> domain name other th[a]n the prominent display of Complainant’s FROOT LOOPS mark [on a “coming soon” page] and the failure of Respondent to bring forth evidence of future use results in a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), see also Caravan Club v. Mrgsale, FA95314 (Forum Aug. 30, 2000) (finding that respondent made no use of the domain name, and that “[p]assive holding of a domain name permits an inference of registration and use in bad faith.”).
Respondent’s purpose in holding the Domain Name in inactive status is not known, but it is difficult to imagine a scenario in which it could actively use the name in such a way that would not implicate circumstances described in Policy ¶ 4(b). The Panel finds bad faith registration and use based upon the passive holding of the Domain Name.
Complainant also alleges that Respondent is attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its web site. The available evidence does not demonstrate whether or how Respondent might be realizing some form of commercial gain from its actions, such as might fit within the circumstances articulated by Policy ¶ 4(b)(iv). Accordingly, the Panel rejects Complainant’s argument based upon that paragraph.
By substituting a hyphen for the space between the two words in Complainant’s FIDELIS CARE mark, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of similar appearance in an email address or typing errors made by Internet users seeking the web sites of the owners of the mark. In light of the nonexclusive nature of Policy ¶ 4(b), typosquatting has, in and of itself, been held to be evidence of bad faith registration and use. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii)”), see Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Typosquatting necessarily implicates another factor that has also, by itself, been held to constitute bad faith. It is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Name in June 2019 (Complaint Exhibit C shows creation date). Complainant’s FIDELIS CARE mark has been used for more than twenty-five years and is well-known in the healthcare industry (Complaint Exhibit A). Its mark incorporates a Latin word. It is unique and would not ordinarily occur to a person considering how to register a domain name, but Respondent copied that mark verbatim into the Domain Name at issue here. Again, considering the nonexclusive, open ended nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of 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).
Finally, registration of a domain name which is confusingly similar to a particular trademark by a person with no connection to that trademark or its owner is evidence of bad faith. In this case, Respondent registered and is using the Domain Name, which incorporates the FIDELIS CARE mark essentially verbatim, but as discussed above has no connection with that mark or its owner, the Complainant. Given the non-exclusive nature of Policy ¶ 4(b), the registration and use of a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to register a well-known mark to which [it] has no connections or rights indicates that [it] was in bad faith when registering the domain name at issue.”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fidelis-care.org> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
January 13, 2020
[i] PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)), Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).).
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