New York Quality Healthcare Corporation d/b/a Fidelis Care v. Fiodor Kostrovitsky
Claim Number: FA2005001897449
Complainant is New York Quality Healthcare Corporation d/b/a Fidelis Care (“Complainant”), represented by Peter S. Sloane of Leason Ellis LLP, New York, United States. Respondent is Fiodor Kostrovitsky (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fidelicare.com>, registered with INSTANTNAMES 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2020; the Forum received payment on May 22, 2020.
On June 3, 2020, INSTANTNAMES LLC confirmed by e-mail to the Forum that the <fidelicare.com> domain name is registered with INSTANTNAMES LLC and that Respondent is the current registrant of the name. INSTANTNAMES LLC has verified that Respondent is bound by the INSTANTNAMES 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 June 3, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 23, 2020 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@fidelicare.com. Also on June 3, 2020, 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 June 25, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
Complainant, New York Quality Healthcare Corporation d/b/a Fidelis Care, is a health insurance company. Complainant asserts rights in FIDELIS CARE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,633,561, registered on June 9, 2009). See Compl. Ex. B. Respondent’s <fidelicare.com> domain name is confusingly similar to Complainant’s mark, as it incorporates a misspelling of Complainant’s mark along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interest in the <fidelicare.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent’s use of the FIDELIS CARE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent does not make any active use of the domain name and instead attempts to sell the domain name.
Respondent registered and uses the <fidelicare.com> domain name in bad faith. Respondent attempts to sell the domain name. The domain name itself is an example of typosquatting, which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States health insurance company.
2. Complainant has established it trademark rights in FIDELIS CARE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,633,561, registered on June 9, 2009).
3. Complainant has also established that it acquired common law rights in the FIDELIS CARE mark through its continuous use of the mark in commerce and that it acquired those common law trademark rights from at least 1993.
4. Respondent registered the disputed domain name on September 7, 2008.
5. Respondent does not make any active use of the domain name and instead has attempted to sell the domain name.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has right in the FIDELIS CARE mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark 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).”). Here, Complainant provides evidence of its registration with the USPTO (e.g., Reg. No. 3,633,561, registered on June 9, 2009). See Compl. Ex. B. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also submits that it has also acquired common law rights in the marks FIDELIS and FIDELIS CARE through its continuous use of the marks in commerce since at least as early as 1993. The Panel has carefully examined the evidence on this issue and finds that Complainant has established that it acquired common law rights in the marks FIDELIS and FIDELIS CARE through its continuous use of the marks in commerce and that it acquired those common law trademark rights from at least 1993.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s FIDELIS CARE mark. Complainant argues that Respondent’s <fidelicare.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates a misspelling of Complainant’s mark and adds the “.com” gTLD. Removing a letter and adding a gTLD is not enough to save a domain name from a finding of confusing similarity under Policy ¶ 4(a)(i)). See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s FIDELIS CARE trademark and to use it in its domain name with a minor misspelling, which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on September 7, 2008;
(c) Respondent does not make any active use of the domain name and instead has attempted to sell it;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <fidelicare.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the FIDELIS CARE mark. Where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “Fiodor Kostrovitsky” and nothing in the record indicates that Respondent is licensed to use Complainant’s mark or is known by the disputed domain name. See Compl. Ex. C. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits Respondent fails to use the <fidelicare.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent makes no active use of the disputed domain name. Failure to make an active use of a domain name is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Dell Inc. v. link growth / Digital Marketing, FA 1785283 (Forum June 7, 2018) (“Respondent’s domain names currently display template websites lacking any substantive content. The Panel finds that Respondent has does not have rights or legitimate interests with respect of the domain name per Policy ¶¶ 4(c)(i) or (iii).”). Here, Complainant provides screenshots of the disputed domain name, which appears only to offer the domain name for sale. See Compl. Ex. D. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent’s attempt to sell the disputed domain name does not confer on Respondent rights or legitimate noncommercial or fair use. Offering a website for sale may be further evidence that Respondent lacks rights or legitimate interests. See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). As previously noted, Complainant provides screenshots of the disputed domain name, which appears only to offer the domain name for sale. See Compl. Ex. D. The Panel agrees with Complainant that this does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <fidelicare.com> domain name in bad faith because intent to sell the disputed domain name can be evidence of bad faith and use under Policy ¶ 4(b)(i). See Hard Rock Café International (USA), Inc. v. Gameday Tickets, FA1202001428106 (Forum Mar. 20, 2012) (finding that the respondent’s offer to sell the disputed domain name to the complainant is evidence that the respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(i), regardless of that fact that Complainant made the first offer). As previously noted, Complainant provides screenshots of the disputed domain name, which appears only to offer the domain name for sale. See Compl. Ex. D. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that the disputed domain name is an example of typosquatting. Typosquatting alone can be further evidence of bad faith registration. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Here, the <fidelicare.com> domain name is visually similar to Complainant’s mark, which signals that Respondent deliberately aims to take advantage of typographical errors or misspellings of the FIDELIS CARE mark. The Panel finds this is evidence of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the FIDELIS CARE mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fidelicare.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 26, 2020
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