Avera eCare LLC v. Cyan Yo
Claim Number: FA2103001937991
Complainant is Avera eCare LLC (“Complainant”), represented by Madelon Lapidus of Holland & Hart LLP, Colorado, USA. Respondent is Cyan Yo (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avelecare.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2021; the Forum received payment on March 25, 2021.
On March 29, 2021, Dynadot, LLC confirmed by e-mail to the Forum that the <avelecare.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 March 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@avelecare.com. Also on March 30, 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 April 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a national leader in virtual healthcare and is responsible for well over 300 healthcare locations in the United States. Complainant built the first telehealth center in the world able to provide 24-hour access to board-certified specialists across multiple disciplines and multiple service lines. Complainant is proud to service a population of nearly 1 million people and to offer a wide range of specialists through its innovative telehealth services. Through its partners, and 19,000 employees, Complainant provides state-of-the-art, 24/7 telemedicine services to hospitals, long-term care facilities, schools and more across the United States. As part of its commitment to exemplary telehealth services and in furtherance of its expansion goals, in 2019 Complainant began taking steps to rebrand and repackage part of its AVERA ECARE telehealth services under the mark AVEL ECARE. Since 2020, Complainant has advertised many job openings under the AVEL ECARE mark, and that mark is prominently displayed on the badges of employees that interact with consumers and healthcare workers. On November 5, 2020, Complainant filed an application to register its AVEL ECARE in the United States; the application is pending. Further, on November 12, 2020 Complainant lodged Articles of Amendment with the South Dakota Secretary of State explicitly amending and restating the name of its Company from “Avera eCare, LLC” to “Avel eCare, LLC.” The Amendment was granted on November 17, 2020.
Complainant alleges that the dispute domain name was registered on December 14, 2020 and is confusingly similar to its AVEL ECARE mark as it includes the entire mark and merely adds the generic top-level domain (“gTLD”) “.com.”
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use the AVEL ECARE mark. Additionally, Respondent lacks rights and legitimate interests in the disputed domain name as Respondent offers the domain for sale at a price in excess of out-of-pocket costs. Furthermore, the fanciful nature of Complainant’s mark further indicates Respondent lacks rights or legitimate interests in the disputed domain name.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale at a price in excess of out-of-pocket costs. Respondent engages in a pattern of bad faith registration. Respondent’s registration and use of the disputed domain name also constitutes opportunistic bad faith, because the disputed domain name was registered shortly after Complainant filed its trademark application for AVEL ECARE. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the AVEL ECARE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant filed a trademark application for AVEL ECARE on November 5, 2020. The application is pending.
The disputed domain name was registered on November 9, 2020.
For the reasons set forth below, the Panel will not make any other findings of fact.
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 Panel notes that the disputed domain name is identical, in the sense of the Policy, to the name AVEL ECARE.
However, in order to make a decision on this element of the Policy, the Panel must first determine whether Complainant has trademark rights in that name. For convenience, it will also discuss the timing of the rights, since that is relevant for the third element of the Policy.
According to of 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”): “A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).” Since Complainant’s trademark application is pending, the Panel finds that Complainant has not established that it has registered trademark rights at this time.
The Panel notes, obiter dictum, that, If the registration is approved, then the Complainant would have rights dating back to the application date, that is, to November 5, 2020.
Section 1.3 of the cited WIPO Jurisprudential Overview 3.0 states:
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
…
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. …
Here, Complainant alleges that it has common law rights in the AVEL ECARE mark based on use of the mark in commerce: specifically, by using it in offers of employment, on the badges of its employees, and by restating its name with the South Dakota Secretary of State’s office.
Complainant alleges that the mark was used since 2020, but does not provide any evidence showing when specifically it was used, nor the amount of sales under the mark, nor the nature and extent of advertising using the mark, nor the degree of actual public recognition of the mark. The home page of Complainant’s website at <averaecare.org> does not display any obvious references to AVEL, whereas it does refer to AVERA. The employment offers provided by Complainant appear to be dated January 2021. Thus the Panel finds that Complainant has failed to satisfy its burden of proving that it acquired common law trademark rights, and it has failed to satisfy its burden of proving that the date on which such the rights may have been acquired predates the registration date of the disputed domain name. See Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, D2008-1036 (WIPO, Sept. 30, 2008); see also Thomas Pick aka Pick Inc. v. EUROPREMIUM LTD, Elaine Maria Gross, D2008-1010 (WIPO, Sept. 1, 2008).
Complainant refers to the change in its name. That change was requested on November 12, 2020 and registered by the South Dakota Secretary of State on November 17, 2020. In general, a name does not suffice to establish trademark rights. Further, the registration of the disputed domain name preceded those dates, which is relevant with respect to the third element of the Policy, see below.
For all the above reasons, the Panel finds that Complainant has failed to establish that it has trademark rights in the mark AVEL ECARE.
The Panel notes, obiter dictum, that, if Complainant does establish registered trademark rights, then that might be considered to be “legally relevant developments [that] have occurred since the original UDRP decision” and thus justify refilling a complaint. See 4.18 of the cited WIPO Jurisprudential Overview 3.0. See also Alpine Entertainment Group, Inc. v. Walter Alvarez, D2007-1082 (WIPO, Dec. 4¸2007) (“The new evidence is the evidence that the United States trademark REALSPANKINGS has now registered. Given that the prior case failed on the first element, the new evidence of trademark registration is likely to have an important influence on the result of the case, although it may not be decisive. The registration of the REALSPANKINGS trademark is not challenged by the Respondent. This new evidence was not in existence at the time of the earlier decision and was therefore unable to be considered by the prior panel in relation to its original finding under the threshold first element of the Policy. The Panel therefore finds that the refiled Complaint should be heard by the present Panel.”)
Rights or Legitimate Interests
Since Complainant has failed to establish the first element of the Policy, the Panel need not consider the second element. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
However, the Panel notes, obiter dictum, that Complainant’s allegations to the effect that Respondent lacks rights or legitimate interests in the disputed domain name appear to be well founded.
Since Complainant has failed to establish the first element of the Policy, the Panel need not consider the third element.
However, the Panel notes the following, obiter dictum.
The WHOIS information of record shows that the disputed domain name was registered on November 9, 2020, and not on December 14, 2020 as Complainant mistakenly alleges (it was the domain name <avelecare.org> that was registered on December 14, 2020).
The change in Complainant’s name took place after the registration of the disputed domain name.
The Panel recalls that, in order to find bad faith registration and use, trademark rights must, in general, predate the registration of the disputed domain name. As 3.8.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states: “where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
The UDRP case law does provide some exceptions, in particular when a complainant has “nascent (typically as yet unregistered) trademark rights” that precede the registration of the disputed domain name (see 3.8.2 of the cited WIPO Jurisprudential Overview 3.0). As noted above, the Panel finds that Complainant has failed to satisfy its burden of proving that it has trademark rights that predated the registration of the disputed domain name. Thus the Panel finds that the exceptions to the general rule that trademark rights must precede the registration of the disputed domain name do not apply to the instant case. See Groupe BMTC Inc. v. Domain Admin, Whois Privacy Corp. / Star Access, Inc., D2016-2610 (WIPO, Feb. 2, 2017).
However, the Panel notes, still obiter dictum, that, if Complainant’s registration of its mark is approved, then Complainant’s allegations to the effect that Respondent registered and is using the disputed domain name in bad faith would appear to be well founded.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. This decision is without prejudice to any future complaints.
Accordingly, it is Ordered that the <avelecare.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: April 26, 2021
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