WEX Inc. v. Domain Administrator
Claim Number: FA2110001971293
Complainant is WEX Inc. (“Complainant”), represented by Jonathan M. Gelchinsky of Pierce Atwood LLP, Maine, USA. Respondent is Domain Administrator (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wexheath.com>, registered with Sav.com, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 29, 2021; the Forum received payment on October 29, 2021.
On November 1, 2021, Sav.com, LLC confirmed by e-mail to the Forum that the <wexheath.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 November 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 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@wexheath.com. Also on November 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.
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, Wex Inc., provides financial technology solutions across various industry sectors, including fleet solutions, travel and corporate solutions, and health and employee benefit solutions. Complainant has rights in the WEX mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,218,706, registered Jan. 19, 1999). Respondent’s <wexheath.com> domain name is confusingly similar to Complainant’s WEX mark as it merely adds the term “heath,” a misspelling of “health,” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <wexheath.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the WEX mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to host pay-per-click hyperlinks to competing goods and services.
Respondent registered and uses the <wexheath.com> domain name in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain by using the domain to host pay-per-click hyperlinks to competing goods and services. Additionally, Respondent engages in typosquatting. Finally, Respondent had constructive and actual knowledge of Complainant’s rights in the WEX mark based on the registration of the mark, the name used for the disputed domain, and Respondent’s use of the disputed domain name to divert users to Complainant’s competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <wexheath.com> 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”).
Complainant asserts rights in the WEX mark based on registration with the USPTO (e.g., Reg. No. 2,218,706, registered Jan. 19, 1999). Registration of a mark with the USPTO is a valid showing of rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the WEX mark with the USPTO, the Panel may find that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <wexheath.com> domain name is confusingly similar to Complainant’s WEX mark as it merely adds the term “heath,” a misspelling of “health,” and the “.com” gTLD to Complainant’s mark. The addition of a misspelled term and a gTLD to a mark is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Complainant notes that the disputed domain name is particularly confusing as it is a misspelled version of Complainant’s own <wexhealth.com> domain name. The Panel finds that the disputed domain name is confusingly similar to the WEX mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 a prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <wexheath.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not licensed or authorized Respondent to use the WEX mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS information lists “Domain Administrator” as the registrant and Complainant asserts it has not authorized Respondent to use the WEX mark in any way. The Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to host pay-per-click hyperlinks to competing goods and services. Use of a disputed domain name to host competing pay-per-click hyperlinks 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 CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Complainant provides screenshots showing the disputed domain name resolves to a website featuring hyperlinks to competing healthcare benefits related products and services. The Panel finds that Respondent is not using the 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) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <wexheath.com> domain name in bad faith because Respondent uses the domain to host pay-per-click hyperlinks to competing goods and services. Using a disputed domain name to host monetized hyperlinks to a complainant’s competitors is evidence of bad faith 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 Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant provides screenshots showing the disputed domain name features hyperlinks to various competing products and services. This is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues Respondent’s bad faith is evidenced by typosquatting. Under Policy ¶ 4(a)(iii), typosquatting is itself evidence of bad faith. 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.”); see also Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Complainant contends the <wexheath.com> domain name is a typosquatted version of Complainant’s legitimate <wexhealth.com> website as it merely misspells the term “health” as “heath.” This Panel finds that this is evidence of find bad faith.
Complainant argues that Respondent had constructive and actual knowledge of Complainant’s rights in the WEX mark based on the registration of the mark, the name used for the disputed domain, and Respondent’s use of the disputed domain name to divert users to Complainant’s competitors. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the use the respondent makes of the domain name. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith); see also Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”). The Panel finds, from the fame of the mark and use made of the domain name, that Respondent had actual knowledge of Complainant’s rights in the WEX mark and registered and uses the domain name in bad faith.
Complainant has proved this element.
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 <wexheath.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
December 9, 2021
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