Laboratory Corporation of America Holdings v. Gabriella Garlo
Claim Number: FA2109001962151
Complainant is Laboratory Corporation of America Holdings (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Gabriella Garlo (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <labcorp.me> (the “disputed domain name”), registered with NameCheap, Inc..
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 September 1, 2021; the Forum received payment on September 1, 2021.
On September 2, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <labcorp.me> disputed domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 September 3, 2021, the Forum sent a deficiency letter to Complainant for failure to identify the Respondent and its contact information. On September 7, the Complainant submitted an Amended Complaint to the Forum with corrected documents identifying the Respondent.
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@labcorp.me. 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 September 29, 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 health care diagnostics company, providing comprehensive clinical laboratory services throughout the world. Complainant maintains trademark registrations in its LABCORP trademark with the United States Patent and Trademark Office (“USPTO”). For example, Complainant owns a trademark registration for LABCORP with the USPTO (e.g., Reg. No. 2,000,799, registered on Sept. 17, 1996) (hereinafter referred to as the “LABCORP Mark”). The LABCORP Mark is extensively used, promoted, and protected. Complainant owns and uses multiple domain names incorporating the LABCORP Mark, including <labcorp.com>.
The Complainant contends that the disputed domain name <labcorp.me> is identical or confusing similar to Complainant’s LABCORP Mark because it contains the LABCORP mark in its entirety and adds the “.me” country code top level domain (“ccTLD”). Complainant further contends that Respondent does not have any rights or legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith because, among other things, Respondent offers the disputed domain name for sale and the Respondent has a pattern of bad faith registrations.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant owns the LABCORP Mark in the United States, and has valid rights in that trademark, that the disputed domain name is confusingly similar to Complainant’s LABCORP Mark, that Respondent lacks rights or legitimate interests in respect 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”).
The Panel finds that Complainant has rights in the LABCORP Mark through its registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark. 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).”).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s LABCORP Mark as it contains the LABCORP Mark in its entirety and merely adds the “.me” ccTLD. The addition of a ccTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See e.g. CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”); Mason Companies, Inc. v. Monet c/o Shame Sad, FA 1004001319688 (Forum June 2, 2010) (finding addition of .me ccTLD did not affect confusing similarity of disputed domain).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
Here, because Respondent did not respond to the Complaint, it did not carry its burden to come forward with evidence of its rights or legitimate interest in the disputed domain name. However, given the facts of this case, the Panel is doubtful that the Respondent would have been able to provide availing arguments had it chosen to respond.
The Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed to Respondent any rights in the LABCORP Mark. Nothing in Respondent’s Whois information suggests as much. See e.g., AutoZone Parts, Inc. v. Bin G Glu / G Design, FA1812001822466 (Forum Jan. 27, 2019) (“WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name”); Snap Inc. v. Domain Admin / Whois Privacy Corp., FA1706001735300 (Forum July 14, 2017) (“WHOIS information can evidence a finding that a respondent is not commonly known by a disputed domain name.”).
Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Respondent uses the website to direct visitors to a parked website with a list of hyperlinks, some of which advertise Complainant and its competitors’ products. Using the disputed domain name in this manner is neither a bona fide offering of goods or services under ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii). See Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services…, or a legitimate noncommercial or fair use…”).
Evidence that the Respondent offers the disputed domain name for sale in excess of its out-of-pocket costs also leads the Panel to find that the Respondent lacks rights or legitimate interests in the disputed domain name. See Airbnb, Inc. v. xiechunfu, FA1802001770765 (Forum Mar. 7, 2018) (“Offering a confusingly similar domain name for sale to the public suggests a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name and thus, Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds that Respondent registered and uses the disputed domain name in bad faith because it offers the disputed domain name for sale. Evidence of an offer to sell a disputed domain name indicates bad faith registration and use under Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). Further, the Respondent offers the disputed domain name for a minimum of $500, an amount that is likely in excess of its out-of-pocket costs. This leads the Panel to conclude that the Respondent is leveraging the LABCORP Mark for its own profit in bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA150600162533 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”)
Next, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to its competing website by creating a likelihood of confusion with Complainant’s LABCORP Mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith has been found where a respondent uses a disputed domain name to redirect consumers to competing goods or services via third-party hyperlinks as a 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 block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”).
Finally, Complainant argues, and the Panel agrees, that Respondent uses the <labcorp.me> disputed domain name in bad faith because Respondent has demonstrated a pattern of abusive registration. Where Respondent has been subject to and ruled against in previous UDRP proceedings, as here, the Panel may make a finding of bad faith per Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Here, Complainant provided evidence of Respondent’s history with UDRP proceedings and Complainant has identified over 20 UDRP decisions against Respondent. Therefore, the Panel finds that the Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(ii).
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 <labcorp.me> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: October 12, 2021
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