Healogics, Inc. v. George Washere
Claim Number: FA2301002027334
Complainant is Healogics, Inc. (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, USA. Respondent is George Washere (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <healogicsinc.com>, registered with eNom, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to Forum electronically on January 12, 2023; Forum received payment on January 12, 2023.
On January 12, 2023, eNom, LLC confirmed by e-mail to Forum that the <healogicsinc.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 January 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2023 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@healogicsinc.com. Also on January 16, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 provides a variety of medical services, including research, software, and education materials. Complainant has rights in the HEALOGICS trademark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,993,625, which was registered on July 5, 2016). Respondent’s <healogicsinc.com> domain name is confusingly similar to the HEALOGICS trademark because it uses the entire trademark and merely adds the generic term “inc” and “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <healogicsinc.com> domain name since Respondent is not licensed or authorized to use Complainant’s HEALOGICS trademark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent appears to be using the disputed domain name to download malware on users’ computers.
Respondent registered and uses the <healogicsinc.com> domain name in bad faith by seeking to install malware on users’ computers. In addition, Respondent registered the disputed domain name with a privacy service and actual knowledge of Complainant’s rights in the HEALOGICS trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 4,993,625 HEALOGICS (word), registered July 5, 2016 for goods in Intl Class 9;
No. 4,478,652 HEALOGICS (word), registered February 4, 2014 for services in Intl Class 42;
No. 4,475,733 HEALOGICS (word), registered January 28, 2014 for goods in Intl Class 16;
No. 5,041,287 HEALOGICS (word), registered September 13, 2016 for services in Intl Class 44; and
No. 5,022,709 HEALOGICS (word), registered August 16, 2016 for services in Intl Class 41.
The disputed domain name <healogicsinc.com> was registered on December 26, 2022.
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 claims rights in the HEALOGICS trademark through multiple trademark registrations with the USPTO (e.g., Reg. No. 4,993,625, which was registered on July 5, 2016). Registration of a trademark with the USPTO is a valid showing of rights in a trademark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the HEALOGICS trademark with the USPTO, the Panel find that Complainant has demonstrated rights in the HEALOGICS trademark per Policy ¶ 4(a)(i).
Complainant argues that the <healogicsinc.com> domain name is confusingly similar to the HEALOGICS trademark since it includes the entire trademark, merely adding the generic term “inc” and “.com” gTLD. When a disputed domain name wholly incorporates a trademark, additional terms have been found insufficient to defeat a finding of confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”).
Given that Respondent simply adds i) the generic term “inc”, that is the abbreviation for “incorporated” and written at the end of “healogics” in fact is identical to the Complainant’s full corporate name, and ii) further the technically necessary gTLD .com, not only makes the disputed domain name confusingly similar to the Complainant’s trademark, but indeed further indicates that the domain name <healogicsinc.com> directly refers to the Complainant. The Panel therefore find it clear that <healogicsinc.com> is confusingly similar to Complainant’s HEALOGICS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also 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).
Complainant argues that Respondent has no rights or legitimate interests in the <healogicsinc.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has never licensed rights to or authorized Respondent to use the HEALOGICS trademark. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. 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 interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a trademark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for <healogicsinc.com> lists the registrant as “George Washere.” Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the HEALOGICS trademark. Therefore, the Panel find that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain name per Policy ¶ 4(c)(ii).
Complainant also argues that Respondent is using the <healogicsinc.com> domain name to trick users into installing malware onto their computers. A respondent’s use of a disputed domain name for such illegal activities as making users download malicious software has clearly been found not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name resolving to a page requiring users to go through a “security check” and install a “Url Safety extension” or download a “private browser” to continue to the site. Based on the facts and evidence provided by the Complainant, the Panel determines that <healogicsinc.com> is being used to install malicious software onto users’ devices, and find that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant does not make any specific Policy ¶ 4(b) arguments. However, the Panel decides to look beyond the examples set forth and at the totality of the circumstances when analyzing bad faith registration and use. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel therefore consider Complainant’s following arguments that Respondent registered and uses the <healogicsinc.com> domain name in bad faith:
First, Complainant argues that Respondent’s use of the disputed domain name to install malware evinces bad faith. Previous Panels have consistently agreed, holding that use of a disputed domain name to trick users into downloading malicious software shows a respondent’s bad faith. See, e.g., Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA 1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As noted, Respondent invites users to install a “Url Safety extension” or download a “private browser.” The Panel therefore agrees that Respondent is attempting to install malware onto users’ computers, and find bad faith under Policy ¶ 4(a)(iii).
Next, Complainant notes that the <healogicsinc.com> domain name was registered with a privacy service. A respondent’s attempt to conceal their identity through registering a disputed domain name with a privacy service may support a finding of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). The Panel agrees with Complainant’s conclusion, and find that Respondent’s use of a privacy service is a further support for finding bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the HEALOGICS trademark when registering <healogicsinc.com>. Actual knowledge is adequate to show bad faith according to Policy ¶ 4(a)(iii). 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 Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (“Because of the fanciful nature of the ZYBAN mark, the Panel can infer that Respondent knew of Complainant's rights in the mark at registration.”). Complainant points to the nature of the HEALOGICS trademark, and the unlikelihood that one could come up with <healogicsinc.com> absent actual knowledge of the trademark. As noted above, the disputed domain name is in fact not only similar to the Complainant’s trademark, it is identical to the Complainant’s company name, all clearly indicating that Respondent had actual knowledge of Complainant’s rights. The Panel therefore also find bad faith registration and use 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 <healogicsinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 18, 2023
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