DECISION

 

Wellmark, Inc. v. Nguyễn Văn Lư

Claim Number: FA2407002107899

 

PARTIES

Complainant is Wellmark, Inc. ("Complainant"), represented by Armin Ghiam of HUNTON ANDREWS KURTH LLP, New York, USA. Respondent is Nguyễn Văn Lư ("Respondent"), Việt Nam.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <welllmark.com>, registered with April Sea Information Technology Company Limited.

 

PANEL

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.

 

Alan L. Limbury, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on July 24, 2024. Forum received payment on July 24, 2024.

 

On July 29, 2024, April Sea Information Technology Company Limited confirmed by e-mail to Forum that the <welllmark.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited registration agreement, which is in Vietnamese, 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 July 30, 2024, Forum served the Complaint and all Annexes, including a Vietnamese and English Written Notice of the Complaint, setting a deadline of August 19, 2024 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@welllmark.com. Also on July 30, 2024, the Vietnamese and English 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 in Vietnamese and English.

 

On August 20, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

As noted, the April Sea Information Technology Company Limited registration agreement is in Vietnamese. Pursuant to Rule 11(a), the language of the proceeding in relation to the <welllmark.com> domain name shall be Vietnamese unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.

 

Complainant requests that the proceeding be conducted in English, noting that the <welllmark.com> domain name is in English and resolves to English language websites. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.

 

Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Vietnamese and English language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

PARTIES' CONTENTIONS

A. Complainant

Established in 1939, Complainant, Wellmark, Inc., offers a comprehensive array of health insurance products and services designed to meet the diverse needs of individuals, families, and businesses under the WELLMARK mark, in which it has rights through registration with the United States Patent and Trademark Office ("USPTO"). Respondent's <welllmark.com> domain name is confusingly similar to Complainant's famous WELLMARK mark.

 

Respondent has no rights or legitimate interests in the <welllmark.com>  domain name because Complainant has not licensed or authorized Respondent to use its mark, Respondent is not commonly known by the domain name, and Respondent is not using it in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use purpose. Instead, it resolves to a blank page or a rotating series of apparently unrelated websites.

 

Respondent registered the typosquatted <welllmark.com> domain name in bad faith with actual knowledge of Complainant's rights in the WELLMARK mark and uses it in bad faith because it is being redirected to a blank page or a rotating series of apparently unrelated websites, some of which attempt to download malware, for Respondent's commercial gain.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has established all the elements entitling it to relief.

 

DISCUSSION

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 the domain name should be cancelled or transferred:

 

(i)                      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii)                      Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)                      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 as 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').

 

Identical and/or Confusingly Similar

Complainant has shown that it has rights in the WELLMARK mark through registration with the USPTO (Reg. No. 2,213,721, registered on December 29, 1998).

 

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.

 

The Panel finds Respondent's <welllmark.com> domain name to be confusingly similar to Complainant's mark, only differing by having three letters "l" instead of two, which does nothing to distinguish the domain name from the mark, and the inconsequential ".com" generic top-level domain ("gTLD"), which may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

 

Complainant has established this element.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.

 

(i)         before any notice to Respondent of the dispute, the use by Respondent 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; or

 

(ii)         Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or

 

(iii)         Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

 

The <welllmark.com> domain name was registered on February 23, 2006, many years after Complainant has shown that its WELLMARK mark had become famous. It resolves to a rotating series of blank pages and  unrelated websites offering goods for sale, and others which have been identified as attempting to download malware. 

 

These circumstances, together with Complainant's assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <welllmark.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.

 

The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.

 

Complainant has established this element.

 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:

(iv)        by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on its website or location.

The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant's famous WELLMARK mark when Respondent registered the typosquatted  <welllmark.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's websites, by creating a likelihood of confusion with Complainant's mark as to the source of Respondent's websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).

 

Further, enabling the domain name to induce Internet users to access websites which download malware constitutes bad faith.

 

Complainant has established this element.

 

DECISION

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 <welllmark.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Alan L. Limbury, Panelist

Dated: August 21, 2024