Henry Schein, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2108001961707
Complainant is Henry Schein, Inc. (“Complainant”), represented by Emily Stein of Cowan, Liebowitz & Latman, P.C., New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hnryschein.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 30, 2021; the Forum received payment on August 30, 2021.
On August 31, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hnryschein.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 September 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2021, 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@hnryschein.com. Also on September 7, 2021, 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 September 28, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 solutions company for healthcare professionals, providing a multitude of dental and medical services. Complainant has rights in the HENRY SCHEIN mark with multiple trademark organizations around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Registration No. 1,612,595, registered on September 11, 1990). Respondent’s <hnryschein.com> domain name is identical or confusingly similar to Complainant’s HENRY SCHEIN mark, as it incorporates substantially all of Complainant’s mark, only omitting the letter “e” and adding the “.com” generic top-level domain (gTLD).
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the HENRY SCHEIN mark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the disputed domain name resolves to a “parked” website with hyperlinks to Complainant’s competitors, potentially for the commercial gain of Respondent. Additionally, Respondent engages in typosquatting by removing the “e” in the disputed domain name, in attempts at confusing users and disrupting Complainant’s business.
Respondent registered and uses the <hnryschein.com> domain name in bad faith. Respondent uses the domain to disrupt Complainant’s business and presents users with links to third-party competitors, presumably for Respondent’s own commercial gain. Similarly, the disputed domain name resolves to a parked website. Respondent also had actual and/or constructive notice of Complainant’s rights in the HENRY SCHEIN mark, evidenced by Respondent’s use of Complainant’s name, the presentation of competing hyperlinks, and the notoriety of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Henry Schein, Inc. (“Complainant”), of Melville, NY, USA. Complainant is the owner of domestic and international registrations for the mark HENRY SCHEIN, which it has continuously used since at least as early as 1963 in connection with its provision of a multitude of professional health-care goods and services.
Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent” ) of Panama City, Panama. Respondent’s Registrar’s address is not provided. The Panel notes that the <hnryschein.com> domain name was registered on or about July 14, 2021.
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 asserts rights in the HENRY SCHEIN mark through its registration of the mark with many trademark offices around the world, including the USPTO (e.g., Registration No. 1,612,595, registered on September 11, 1990). Registration of a mark with multiple trademarks around the world is sufficient to establish rights in a mark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”); see also Bittrex, Inc. v. Domain Privacy Services, FA 1786849 (Forum June 15, 2018) (finding Complainant has trademark rights in the BITTREX mark through registration of the mark with the EUIPO and the USPTO.). The Panel here finds Complainant has demonstrated rights in the HENRY SCHEIN mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues Respondent’s <hnryschein.com> domain name is identical or confusingly similar to Complainant’s HENRY SCHEIN mark, as it incorporates the mark in its entirety, only removing the letter “e” and adding the “.com” gTLD. The mere removal of a letter and addition of a gTLD is not sufficient to differentiate the disputed domain name and mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). The Panel here finds the disputed domain name is confusingly similar to the HENRY SCHEIN mark in accordance with Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also 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”). The Panel here finds Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights and legitimate interests in the <hnryschein.com> domain name because Respondent is not authorized to use the HENRY SCHEIN mark, nor is Respondent commonly known by the disputed domain name. To determine whether a Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii), WHOIS information may be used. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interest in the dispute domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. 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). Here, the WHOIS information indicates Respondent is known as “Carolina Rodrigues / Fundacion Comercio Electronico”, and there is no information or evidence that suggests Complainant authorized Respondent to use the HENRY SCHEIN mark in any way. The Panel here finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii) because the disputed domain name resolves to a parked website that offers competing hyperlinks to Complainant’s business. Past panels have agreed that using a disputed domain name to display links to competing third parties does not constitute a bona fide offering of goods and services. See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, the Panel notes that Complainant provided screenshots of the resolving website and competing hyperlinks. The Panel here finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods and services or legitimate noncommercial or fair use.
Additionally, Complainant states Respondent is not offering bona fide goods and services or legitimate noncommercial or fair use since the disputed domain name is confusingly similar to Complainant’s mark, attempting to divert users to Respondent’s website and disrupt Complainant’s business. Diverting users from a complainant’s website for the respondent’s commercial gain does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Here the Panel again notes the screenshot provided to identify the confusing similarity between the domain name and the HENRY SCHEIN. The Panel here finds Respondent’s use of the resolving website to disrupt Complainant’s business is not a bona fide offering of goods and services or legitimate noncommercial or fair use.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant first argues Respondent registered and uses the <hnryschein.com> domain name in bad faith because the disputed domain name confuses users and disrupts Complainant’s business by offering competing hyperlinks. Using a disputed domain name to redirect users to the respondent’s website, which then offers competing services and disrupts the complainant’s business, may evidence bad faith under Policy ¶ 4(b)(iii). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Here, the Panel recalls the resolving website, which provides a variety of hyperlinks to third parties that compete with Complainant’s business. The Panel here finds Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also contends that Respondent had actual notice of Complainant’s rights in the HENRY SCHEIN mark, as evidenced by Respondent’s use of the mark, the offering of competing services in the resolving website, and the fame of the HENRY SCHEIN mark. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 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”). Here, Respondent incorporates the mark in its entirety, only eliminating one letter, and redirects consumers to a website that displays competing hyperlinks. The Panel here finds Respondent had actual notice of Complainant’s rights in the mark and acted in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant details that Respondent engaged in typosquatting by eliminating the “e” in the disputed domain name, which may evidence bad faith. Typosquatting on its own has been found to constitute bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”); see also Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). In this case, Respondent eliminates the “e” from the disputed domain name. The Panel here finds that Respondent’s typosquatting supports a finding of bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <hnryschein.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 12, 2021
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