Availity, L.L.C. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2111001971892
Complainant is Availity, L.L.C. (“Complainant”), represented by Elizabeth G. Borland of Smith, Gambrell & Russell, LLP, Georgia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <havaility.com> and <availityt.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 3, 2021; the Forum received payment on November 3, 2021.
On November 4, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <havaility.com> and <availityt.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@havaility.com, postmaster@availityt.com. Also on November 5, 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 December 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant is an application service provider in the field of insurance. Complainant has rights in the AVAILITY trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,667,172 registered December 24, 2002). Respondent’s <havaility.com> and <availityt.com> domain names are virtually identical and confusingly similar to Complainant’s trademark because they incorporate the AVAILITY trademark in its entirety and merely add the letter “h” and the letter “t” respectively and add the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <havaility.com> and <availityt.com> domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent any rights in the AVAILITY trademark. 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 disputed domain names are used to download malicious software.
Respondent registered and uses the <havaility.com> and <availityt.com> domain names in bad faith. Respondent registered the disputed domain names in order to download malicious software. Additionally, Respondent engaged in typo-squatting. Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the AVAILITY trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 2,667,172 AVAILITY (word), registered on December 24, 2002 for services in Intl Class 42
- No. 3,671,801 AVAILITY (word), registered on August 26, 2009 for services in Intl Class 42
- No. 3,721,388 AVAILITY (word), registered on December 8, 2009 for services in Intl Class 35
- No. 3,721,396 AVAILITY (word), registered on December 8, 2009 for services in Intl Class 36
- No. 4,573,221 AVAILITY (fig), registered on July 22, 2014 for services in Intl Classes 35, 36 and 38, and
- No. 4,569,722 AVAILITY (fig), registered on July 15, 2014 for services in Intl Class 42
The disputed domain names <havaility.com> and <availityt.com> were registered on August 4, 2021.
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 Complainant asserts rights in the AVAILITY trademark based upon the registration with the USPTO (e.g., Reg. No. 2,667,172 registered December 24, 2002). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. 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).”). Since Complainant provides evidence of registration of the AVAILITY trademark with the USPTO, the Panel find that the Complainant has rights in the trademark under Policy 4(a)(i).
Complainant argues that Respondent’s <havaility.com> and <availityt.com> domain names are identical or confusingly similar to Complainant’s AVAILITY trademark as they contain the AVAILITY trademark in its entirety and merely adds the letter “h” and the letter “t” respectively and the “.com” gTLD. The addition of a letter and gTLD generally fails to sufficiently distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA trademark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’) Therefore, the Panel find that the disputed domain names are at least confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant contends that Respondent lacks rights or legitimate interests in the <havaility.com> and <availityt.com> domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the AVAILITY trademark. WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s trademark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for both disputed domain names lists the registrant as “Carolina Rodrigues,” and there is no other evidence to suggest that Respondent was authorized to use the AVAILITY trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent lacks rights or legitimate interests in the <havaility.com> and <availityt.com> domain names since Respondent uses the domain names to download malicious software. Where a respondent uses a domain name to download malicious software, Panels have found that respondent lacks rights or legitimate interests, a finding that has in fact been done in a number of previous cases with the same respondent as in the present case. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the <coechella.com> domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”) Based on the evidence provided by the Complainant, the Panel find that Respondent lacks rights or legitimate interests per Policy ¶ 4(c)(i) and 4(c)(iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel note that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant contends that Respondent registered the <havaility.com> and <availityt.com> domain names in bad faith since Respondent uses the domain names to download malicious software, an activity that has been found to be bad faith registrations in previous cases. See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the <asburymethodistvillage.com> domain name in bad faith under Policy ¶ 4(a)(iii)”). As previously noted, Complainant provides evidence of the disputed domain names being used to download malicious software. Therefore, the Panel find that Respondent lacks rights or legitimate interests per Policy ¶ 4(a)(iii).
Complainant also argues that Respondent engaged in typosquatting in bad faith. Typosquatting may act as independent evidence of bad faith under Policy ¶ 4(a)(iii). See Under Armour, Inc. v. JEFF RANDALL, FA1410001585022 (Forum Nov. 18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)). Complainant argues that Respondent’s addition of letter “h” and letter “t” in the AVAILITY mark constitutes typosquatting. The Panel agrees, and find bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the AVAILITY trademark at the time of registering the <havaility.com> and <availityt.com> domain names. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademarks prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). To support this assertion, Complainant points to its trademark registrations as well as its commercial presence and reputation. As such, the Panel find it likely that Respondent did have actual knowledge of Complainant’s right in the trademarks, and find bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <havaility.com> and <availityt.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: December 16, 2021
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