Laboratory Corporation of America Holdings v. Hope Lee
Claim Number: FA2109001962152
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Hope Lee (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drugdevelopmentlabcorp.com>, registered with Dynadot, 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 the Forum electronically on September 1, 2021; the Forum received payment on September 1, 2021.
On September 3, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <drugdevelopmentlabcorp.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@drugdevelopmentlabcorp.com. Also on September 8, 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 October 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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
The Complainant is the world’s leading health care diagnostics company. Complainant has rights in the LABCORP trademark based on registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,000,799, registered Sep. 17, 1996). Respondent’s <drugdevelopmentlabcorp.com> domain name is confusingly similar to Complainant’s trademark since it incorporates Complainant’s trademark in its entirety, adding the descriptive and/or generic terms “drug development” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <drugdevelopmentlabcorp.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LABCORP trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent directs visitors to a parked website with linked advertisements, some of which promote products and services of competitors of Complainant.
Respondent registered and uses the <drugdevelopmentlabcorp.com> domain name in bad faith. Respondent has a pattern of bad faith registration and use of infringing domain names as demonstrated by three prior UDRP decisions against Respondent and Respondent’s ownership of 43 other domain names. Additionally, Respondent uses the disputed domain name to attract Internet users to a parked page and derive a financial benefit therefrom. Furthermore, Respondent inactively holds the domain as it resolves to a parked page. Lastly, Respondent’s bad faith is also evidenced by Respondent’s use of typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,000,799 LABCORP (word), registered on September 17, 1996 for services in Intl Classes 35 and 42
- No. 2,249,939 LABCORP (fig), registered on June 1, 1999 for services in Intl Classes 35 and 42
- No. 4,053,848 LABCORP BEACON (word), registered November 8, 2011 for services in Intl Class 35
- No. 4,053,850 LABCORP BEACON (word), registered November 8, 2011 for services in Intl Class 42
- No. 4,053,851 LABCORP BEACON (word), registered November 8, 2011 for services in Intl Class 44
- No. 4,116,076 LABCORP MEDWATCH (word), registered March 20, 2012 for services in Intl Class 44
- No. 4,195,514 LABCORP TOUCH (word), registered August 21, 2012 for services in Intl Class 44
- No. 6,205,839 LABCORP (word), registered November 24, 2020 for services in Intl Class 44
- No. 6,451,559 LABCORP (word), registered August 17, 2021 for goods in Int Class 10
The disputed domain name <drugdevelopmentlabcorp.com> was registered on June 23, 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 claims rights in the LABCORP trademark through its registration with the USPTO (e.g., Reg. No. 2,000,799, registered Sept. 17, 1996). Registration of a trademark with a national trademark agency is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <drugdevelopmentlabcorp.com> domain name is confusingly similar to Complainant’s LABCORP trademark because it incorporates Complainant’s trademark in its entirety, adding the descriptive and/or generic terms “drug development” and the gTLD “.com.” Previous panels have found that adding descriptive and/or generic terms and the gTLD “.com” to the complainant’s mark does not negate confusing similarity. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (Holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).). In this case, the added descriptive term “drug development” obviously refers to Complainant’s goods and services, and if considered at all – rather makes to confusing similarity even more clear and obvious. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark 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 does not have rights or legitimate interests in the <drugdevelopmentlabcorp.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LABCORP trademark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a trademark is further evidence that a respondent is not commonly known by the trademark. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). Here, the WHOIS information identifies “Hope Lee” as the registrant of the domain name. Additionally, there is nothing in the record to refute Complainant’s assertion that it never authorized Respondent to use the LABCORP trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent directs visitors to a parked website with linked advertisements, some of which promote products and services of competitors of Complainant. Use of a domain name to host competing hyperlinks does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). see also McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). In the present case, the Complainant provides a screenshot of Respondent’s homepage, which features hyperlinks advertising for “Labcorp,” “Lab Test Locations Nearby,” “Testing,” “Pharmaceutical Company,” “Mental Health Assessment Tool” etc. Thus, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant argues that Respondent registered and uses the <drugdevelopmentlabcorp.com> domain name in bad faith because Respondent has a pattern of bad faith registration and use of infringing domain names as demonstrated by three prior UDRP decisions against Respondent and Respondent’s ownership of 43 other domain names. Three past UDRP actions and additional ownership of numerous other possible infringing domain names can indeed be evidence of bad faith under Policy ¶ 4(b)(ii). See Maurice Sporting Goods, Inc. v. Xiaodong Peng, FA1506001625928 (Forum Aug. 1, 2015) (finding that the respondent had engaged in bad faith pursuant to Policy ¶ 4(b)(ii) where the respondent had been unsuccessful in three previous UDRP cases); see also N.H. Sweepstakes Comm’n v. We Web Well, Inc., FA 197499 (Forum Nov. 3, 2003) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)).
As noted above, the Complainant has identified three prior UDRP decisions against the Respondent. Therefore, the panel finds bad faith per Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the <drugdevelopmentlabcorp.com> domain name in bad faith because Respondent use the disputed domain name to attract Internet users to a parked page and derive a financial benefit therefrom. Hosting hyperlinks to a complainant’s competitors for a financial benefit is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). As said, the Complainant provides a screenshot of the Respondent’s website, which is a parked page that hosts hyperlinked advertisements related to Complainant business. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant contends that Respondent’s failure to resolve the disputed domain name to an active website indicate bad faith. Under Policy ¶ 4(a)(iii), a respondent’s inactive holding of a disputed domain name by failing to resolve to an active website may indicate bad faith. See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The panel notes that there is a difference between “nonuse” and “inactive use” when identifying “inactive holding”. With inactive use, there is a site or message connected to the disputed domain name, with a message to the online audience. This can be a message that the domain name is not in use, that a web site is coming up soon, or a single link to another web site. In this case, the Panel rather sees the use as active, based on the fact that the disputed domain name actively resolves to a web site with links to several competitive companies. Therefore, inactive or not, the use of the disputed domain name is clearly made in bad faith per Policy ¶ 4(a)(iii).
Lastly, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Per Policy ¶ 4(a)(iii), typosquatting is when a respondent capitalizes on users’ misspelling, such as forgetting to add a period (“.”) in order to create a likelihood of confusion, which is itself evidence of bad faith. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”). Complainant contends that Respondent take advantage of users who mistype the URL of Complainant’s <drugdevelopment.labcorp.com> website by leaving out the “.” between “drugdevelopment” and “labcorp” in creating the disputed domain name <drugdevelopmentlabcorp.com>, which amounts to typosquatting. The Panel agrees with Complainant and finds bad faith per 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 <drugdevelopmentlabcorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: October 14, 2021
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