DECISION

 

Availity, L.L.C. v. xu hai min

Claim Number: FA2501002135403

PARTIES

Complainant is Availity, L.L.C. ("Complainant"), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is xu hai min ("Respondent"), Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <availityprovider.com>, registered with Dynadot Inc.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 15, 2025; Forum received payment on January 15, 2025.

 

On January 16, 2025, Dynadot Inc confirmed by e-mail to Forum that the <availityprovider.com> domain name is registered with Dynadot Inc and that Respondent is the current registrant of the name. Dynadot Inc has verified that Respondent is bound by the Dynadot Inc 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, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 2025 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@availityprovider.com. Also on January 16, 2025, 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 6, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends in part as follows:

 

Complainant, Availity, L.L.C., uses its AVAILITY mark to identify its services in a variety of communications media, including on the www.availity.com website. Such services include provision of a blog with articles about healthcare, insurance and other topics under the AVAILITY mark. Complainant also provides a podcast about healthcare, insurance and other topics under the AVAILITY ON AIR mark.

 

Complainant asserts rights in the AVAILITY mark based upon registration with the United States Patent and Trademark Office ("USPTO").

 

The <availityprovider.com> domain name is confusingly similar to Complainant's mark because the at-issue domain name consists of Complainant's AVAILITY mark merely followed by the term "provider" and the ".com" top-level domain name.

 

Respondent does not have rights or legitimate interests in the <availityprovider.com> domain name. Complainant has maintained continuous use of the AVAILITY mark, including online use, for many years prior to Respondent's registration of <availityprovider.com>. Further, Complainant has never provided authorization of any kind, including through the grant of a license, which would permit Respondent to use the AVAILITY mark. Respondent is not commonly known by the at-issue 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. Instead, Respondent is using <availityprovider.com> to redirect the website's users to various sites that purport to encourage the user to install software or an extension to software. However, when the user clicks on certain links malware is downloaded onto the user's computer. This type of illegal use of a domain name is not a legitimate interest.

 

Respondent registered and uses the <availityprovider.com> domain name in bad faith. Respondent is using <availityprovider.com> to direct internet users to websites that are used for the purpose of installing malware on third party computers. Use of a domain name confusingly similar to a well-known trademark to trick users into installing malware onto their computers is bad faith registration. Additionally, Respondent had actual knowledge of Complainant's rights in the AVAILITY mark prior to Respondent's registration of <availityprovider.com>. Respondent also registered the at-issue domain name via a privacy service thereby creating a presumption of bad faith registration and use.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in the AVAILITY mark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the AVAILITY trademark.

 

Respondent uses the at-issue domain name to attempt to install, or actually, install, malware on third-party devices.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's USPTO registrations for its AVAILITY trademark are each sufficient to demonstrate Complainant's rights in a mark 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.").

 

Respondent's <availityprovider.com> domain name consists of Complainant's trademark followed by the descriptive term "provider" with all followed by the ".com" top-level domain name. Respondent adding another term and a top-level domain to Complainant's trademark in forming the <availityprovider.com> domain name does not act to distinguish such domain name from Complainant's trademark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018)("Where a relevant trademark is recognizable 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.") Therefore, the Panel concludes that Respondent's <availityprovider.com> domain name is confusingly similar to AVAILITY pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

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. 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).

 

The WHOIS information for the at-issue domain name identifies the domain name's registrant as "xu hai min" and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <availityprovider.com>. The Panel therefore concludes that Respondent is not commonly known by <availityprovider.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent's at-issue domain name is used to address websites that are intent on vectoring malware to the website visitor's computer. Doing so indicates 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 Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent's use of a disputed domain name to direct internet users to a website which attempts to download computer viruses "failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)")

 

Given the forgoing, Respondent lacks rights and lacks legitimate interests in respect of <availityprovider.com>.

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, the record shows that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) of the Policy.

 

Respondent's use of the confusingly similar at-issue domain name to address websites intent on installing malware on visiting computers shows Respondent's bad faith disruption of Complainant's business and Respondent's attempt to attract internet users seeking Complainant for its own benefit under Policy ¶¶ 4(b)(iii) and (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting internet users searching for the complainant to its own website and likely profiting); see also, eNom, Incorporated v. Muhammad Enoms General delivery / Enoms.com, FA 1621663 (Forum July 2, 2015) ("In addition, Respondent has used the disputed domain name to install malware on Internet users' devices. The Panel finds that this is bad faith under Policy ¶ 4(a)(iii).").

 

Moreover, Respondent had actual knowledge of Complainant's rights in the AVAILITY mark when it registered <availityprovider.com> as a domain name. Respondent's actual knowledge is evident from the notoriety of Complainant's mark and from Respondent's inclusion of the suggestive term "provider" in the at-issue domain name. Respondent's registration and use of the confusingly similar <availityprovider.com> domain name with knowledge of Complainant's rights in AVAILITY further shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <availityprovider.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: February 6, 2025