MedImpact Healthcare Systems, Inc. v. Meng Dan Qian
Claim Number: FA2303002034736
Complainant is MedImpact Healthcare Systems, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon Rees Scully Mansukhani LLP, California, USA. Respondent is Meng Dan Qian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medimpacdirect.com> (“Domain Name”), registered with Chengdu West Dimension Digital Technology Co., Ltd..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on March 7, 2023; the Complaint was submitted in both Chinese and English. Forum received payment on March 7, 2023.
On March 7, 2023, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <medimpacdirect.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 March 8, 2023, Forum served the Chinese language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 28, 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@medimpacdirect.com. Also on March 8, 2023, the Chinese and English language 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 March 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
The language of the registration agreements for the Domain Name is Chinese. The Complaint has been filed in English and Chinese and Complainant requests that pursuant to UDRP Rule 11(a) the language of the proceeding be English.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, MedImpact Healthcare Systems, Inc., is a healthcare plan provider. Complainant has rights in the MEDIMPACT and MEDIMPACT DIRECT marks through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., MEDIMPACT Reg. No. 3,190,676, which was registered on January 2, 2007; MEDIMPACT DIRECT Reg. No. 4,906,957, which was registered on March 1, 2016). Respondent’s <medimpacdirect.com> domain name is confusingly similar to the MEDIMPACT DIRECT mark as it incorporates the mark in its entirety, only removing the letter “t” and adding the “.com” generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the <medimpacdirect.com> domain name since Respondent is not associated with Complainant and is not commonly known as the Domain Name. Respondent also does not use the Domain Name for any bona fide offering of goods or services or legitimate noncommercial or fair use as the website the Domain Name resolves to (“Respondent’s Website”) hosts third-party, competing pay-per-click hyperlinks.
Respondent registered and uses the Domain Name in bad faith. Respondent attracts internet users for commercial gain to the Respondent’s Website, which contains pay-per-click links for which the Respondent likely receives revenue. Respondent is a serial cybersquatter and is typosquatting. Finally, given the content of the Respondent’s Website, Respondent had actual knowledge of Complainant’s rights in the MEDIMPACT and MEDIMPACT DIRECT marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MEDIMPACT DIRECT mark. The Domain Name is confusingly similar to Complainant’s MEDIMPACT DIRECT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the 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 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 has rights in the MEDIMPACT DIRECT mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 4,906,957, which was registered on March 1, 2016). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <medimpacdirect.com> domain name is confusingly similar to Complainant’s MEDIMPACT DIRECT mark because it merely removes the letter “t” from the wholly incorporated mark and adds the “.com” gTLD. The removal of a letter (to create a minor misspelling) and addition of a gTLD to a wholly incorporated mark is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See 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”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the MEDIMPACT DIRECT mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Meng Dan Qian” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to the Respondent’s Website, which appeared to be used to obtain click-through revenue by containing advertising links to third-party websites some of which may be directly competitive to Complainant’s health care insurance business. Use of a domain name to host pay-per-click links unrelated to any descriptive meaning of the domain name is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business); see also Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, December 30, 2022, Respondent had actual knowledge of Complainant’s MEDIMPACT DIRECT mark. There is no obvious explanation, and none has been provided by Respondent, for a party to register a domain name that consists of a misspelling of the registered MEDIMPACT DIRECT mark and redirect it to a pay-per-click website advertising services unrelated to any descriptive meaning of the Domain Name and in direct competition with the health care insurance services offered by Complainant absent any awareness of Complainant and its MEDIMPACT DIRECT mark (and intention to capitalize on Complainant’s reputation in its MEDIMPACT DIRECT mark). In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith in order to resolve to a website that provides a series of pay-per-click links for which Respondent would be expected to receive revenue. Use of a confusingly similar domain name to redirect Internet users to a website containing advertisements and links to third party websites for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”).
The Panel finds Complainant has satisfied 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 <medimpacdirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: April 3, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page