Inform Diagnostics, Inc. v. Steve Elliott / informdx
Claim Number: FA2107001956500
Complainant is Inform Diagnostics, Inc. (“Complainant”), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Steve Elliott / informdx (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inform-dx.net> (the “disputed domain name”), registered with Tucows Domains Inc. (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2021; the Forum received payment on July 23, 2021.
On July 25, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <inform-dx.net> disputed domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Tucows Domains 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 July 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 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@inform-dx.net. Also on July 26, 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 August 23, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a leading pathology laboratory providing reliable, high-quality diagnostic services in gastrointestinal pathology, dermatopathology, urologic pathology, hematopathology, breast pathology, neuropathy, and COVID-19 testing. Complainant has been offering its services since its inception in 1996 since January 2018. Complainant serves approximately 1,300 clients and over 2,500 physicians and handles over 1.3 million specimens annually.
Complainant owns INFORM DIAGNOSTICS, United States Trademark Registration No. 5671336; INFORMTXT, United States Trademark Registration No. 5517627; INFORM DIAGNOSTICS and Design, United States Registration Nos. 5818973 and 5825400. Complainant also owns INFORMDX, United States Trademark Application No. 90836131, for which Complainant asserts common law rights (the foregoing registered trademarks and application are collectively referred to herein as the “INFORMDX Mark").
Complainant contends that Respondent’s <inform-dx.net> disputed domain name is virtually identical and confusingly similar to Complainant’s INFORMDX Mark, that Respondent has no legitimate interests in the disputed domain name, and that Respondent registered and is using the <inform-dx.net> disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant in emails in furtherance of a phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds common law trademark rights in the INFORMDX Mark. The Panel additionally finds that the disputed domain name is confusingly similar to Complainant’s INFORMDX Mark. Further, Complainant has established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
First, the Panel agrees with Complainant and concludes that Complainant has common law rights in the INFORMDX Mark based on continuous use in commerce since 1996. Registration of a mark is not necessary under Policy ¶ 4(a)(i) if a complainant can establish common law rights in the mark. 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 mark, a complainant must show that the mark has developed secondary meaning. See Lokai Holdings, LLC v. Domain Admin / Whois Privacy Corp., 1763598 (Forum Jan. 22, 2018) (Complainant established common law rights with evidence of secondary meaning, including “annual sales of $50 million” and “advertisements of Complainant’s FIND YOUR BALANCE bracelets from Google searches, advertisements for Complainant’s goods found on social media, and a certification from Mark Izen, Complainant’s manager.”). Complainant provides evidence of secondary meaning such as the use of the INFORMDX Mark on its website and providing a mobile application called "InformDX”, through which users may easily access Complainant's high-quality diagnostic services and diagnostic information. Furthermore, the Panel notes that on Complainant’s trademark application the first use in commerce date of the INFORMDX mark is listed as January 8, 2018. In addition, "DX" is a well-known abbreviation for "diagnosis" or "diagnostic" pursuant to the definition of "DX" in the Merriam-Webster dictionary.
Second, the Panel finds that Respondent’s <inform-dx.net> disputed domain name is virtually identical and confusingly similar to Complainant’s INFORMDX Mark as it contains the INFORMDX Mark in its entirety, merely adding a hyphen and the “.net” generic Top-Level Domain “gTLD”. The addition of a gTLD and a hyphen to a mark fails to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s INFORM DX Mark per Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.”). Here, the Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INFORMDX Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, 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 uses the disputed domain name to impersonate Complainant in furtherance of an email phishing scheme. Use of a disputed domain name to pass off as a complainant in connection with phishing is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”).
Additionally, Complainant argues that 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 as the disputed domain name resolves to a page displaying third party links and Respondent uses the domain to pass off as Complainant in emails. Using a disputed domain name to host unrelated hyperlinks and to pass off as a complainant in emails does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)). Here, Complainant provides a screenshot showing that the disputed domain name resolves to a webpage which offers to help users grow their business and create websites. Complainant also provides copies of emails in which Respondent passes off as Complainant in furtherance of a phishing scheme. Therefore, the Panel concludes that Respondent is not using the disputed 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the <inform-dx.net> disputed domain name in bad faith.
First, Respondent uses the disputed domain name to impersonate Complainant in connection with an e-mail phishing scheme, which is emblematic of bad faith. Passing off as a complainant in furtherance of fraud may be evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). In support of the above, Complainant provides evidence that Respondent sent emails posing as Complainant and sought financial information from Complainant’s customers.
Second, the panel finds that Respondent registered the disputed domain name in bad faith because Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the INFORMDX Mark. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is sufficient to establish bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014); See also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Thus, it is evident that Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <inform-dx.net> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: September 1, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page