New York Quality Healthcare Corporation d/b/a Fidelis Care v. Domain Protection, LLC / L Katz
Claim Number: FA1912001873749
Complainant is New York Quality Healthcare Corporation d/b/a Fidelis Care (“Complainant”), represented by Peter T Busch of Leason Ellis LLP, New York, USA. Respondent is Domain Protection, LLC / L Katz (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fideliscares.com>, registered with NameSilo, 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 December 4, 2019; the Forum received payment on December 4, 2019.
On December 4, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <fideliscares.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2019 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@fideliscares.com. Also on December 9, 2019, 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 January 2, 2020, 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 a health insurance provider. Complainant has rights in the FIDELIS CARE trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,633,561, registered June 9, 2009). Complainant also has common law rights in the FIDELIS CARE trademark through continuous use of the trademark in commerce since as early as 1993. Respondent’s <fideliscares.com> domain name is identical or confusingly similar to Complainant’s trademark as it misspells Complainant’s trademark by adding an extra “s” and adding the “.com” generic top-level domain to Complainant’s trademark.
Respondent lacks rights or legitimate interests in the <fideliscares.com> domain name. Complainant has not authorized Respondent to use the trademark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent registered the disputed domain name more than two decades after Respondent began using the trademark in commerce. Additionally, the disputed domain name resolves to a webpage which displays links to third-party websites offering competing healthcare services.
Respondent registered and uses the <fideliscares.com> domain name in bad faith. Respondent uses the disputed domain name to host parked advertisements. Respondent’s disputed domain name differs from Complainant’s trademark by only one character, indicating typosquatting. Respondent is not affiliated with Complainant and thus Complainant has no control over the nature and quality of Respondent’s website; the reputation of Complainant’s name and trademark are likely to be diminished by Respondent’s use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant (New York Quality Healthcare Corporation d/b/a Fidelis Care) is – directly and via its parent company - the owner of the following U.S. trademark registrations:
No. 3,633,561 FIDELIS CARE (word), registered June 9, 2009 for services in class 36;
No. 3,633,569 FIDELIS CARE (fig), registered June 9, 2009 for services in class 36; and
No. 3,775,057 FIDELIS (word), registered April 13, 2010 for services in class 36.
Respondent registered the <fideliscares.com> domain name on January 4, 2005
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”).
The Complainant asserts rights in the FIDELIS CARE trademark based on registration with the USPTO. Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). 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.”). Complainant provides copies of Complainant’s trademark registrations for the FIDELIS CARE mark (e.g. Reg. No. 3,633,561, registered June 9, 2009). Accordingly, the Panel finds that Complainant has established rights in the FIDELIS CARE trademark for the purposes of Policy ¶ 4(a)(i).
Complainant also asserts common law rights in the FIDELIS CARE trademark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the trademark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a trademark, a complainant generally must prove that the trademark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant argues it has acquired common law rights in the FIDELIS and FIDELIS CARE trademark/s through continuous use of the trademark/s in commerce since at least as early as 1993. Complaint provides screenshots of Complainant’s own website in support of this assertion. The Panel notes that the screenshots does not provide any evidence of common law trademark rights, as there is no information on the history or previous use of the trademark/s. On the other hand, the Panel notes that the Certificates of registrations provided by the Complainant clearly states the year 1993 as the first use in commerce for the trademark FIDELIS CARE (word). As established by the USPTO praxis, establishing “common law” rights in a trademark is based solely on use of the trademark in commerce, without registration. The Panel therefore has no reason to question Complainant’s statement, and finds that Complainant does hold common law rights in the FIDELIS CARE trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <fideliscares.com> domain name is identical or confusingly similar to Complainant’s trademark as it misspells the trademark by adding an extra “s” and adding the “.com” generic top-level domain to Complainant’s trademark. The addition of the letter “s” and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). Further, the Panel notes that - for pure technical reasons - there is only two ways to create a domain name based on a two word trademark: either write the two words with a hyphen in between, or – as in this specific case – combining the two words into one word: “fideliscare(s)”.
The Panel therefore finds that the <fideliscares.com> domain name is confusingly similar to the FIDELIS CARE 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent lacks rights or legitimate interests in the <fideliscares.com> domain name as Complainant has not authorized Respondent to use the trademark. A lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by 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 Panel notes that the WHOIS information for the disputed domain name lists the registrant as “Domain Protection, LLC / L Katz”, and there is no other evidence to suggest that Respondent was authorized to use the FIDELIS CARE trademark. Therefore, the Panel finds that Respondent is not commonly known by any the disputed domain names per ¶ 4(c)(ii).
Complainant asserts that Respondent fails to use the <fideliscares.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain name resolves to a webpage which displays links to third party websites offering competing healthcare services. Displaying competing hyperlinks to third parties may not be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a parked webpage containing hyperlinks to healthcare services. The Panel therefore finds that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Complainant argues Respondent registered and uses the <fideliscares.com> domain name in bad faith as Respondent uses the disputed domain name to host parked advertisements. The display of hyperlinks to competitors or a complainant can demonstrate bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (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 noted above, the Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays a parked webpage containing hyperlinks to healthcare services, as well as at least one link directly related to the Complainant’s trademark: “Fidelis Care.” The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues Respondent registered and uses the <fideliscares.com> domain name in bad faith as Respondent’s disputed domain name differs from Complainant’s trademark by only one character, an extra “s,” indicating typosquatting. A domain name which consists of a trademark containing a typographical error can indicate bad faith registration and use per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). The Panel agrees with the Complainant’s conclusion, and finds that Respondent registered and uses the disputed domain name in 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 <fideliscares.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: January 15, 2020
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