MedImpact Healthcare Systems, Inc. v. Neda Kiarash
Claim Number: FA2201001981368
Complainant is MedImpact Healthcare Systems, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon Rees Scully Mansukhani LLP, California, USA. Respondent is Neda Kiarash (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medimpacts.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.
Paddy Tam as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2022; the Forum received payment on January 21, 2022.
On January 24, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <medimpacts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 January 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2022 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@medimpacts.com. Also on January 28, 2022, 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.
A timely Response was received and determined to be complete on February 7, 2022.
On February 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paddy Tam 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers healthcare plans. Complainant has rights in the MEDIMPACT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,190,676 registered January 2, 2007. See Compl. Exhibit A. Respondent’s disputed domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the MEDIMPACT mark in its entirety and merely adds the letter “s” and adds the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the MEDIMPACT mark. 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 name resolves an inactive page.
Respondent registered and uses the disputed domain name in bad faith. Respondent used a privacy service. Further, the disputed domain name resolves to an inactive page.
B. Respondent
Respondent argues that respondent is known by the disputed domain name, as Respondent has a registered business under the name “Medimpacts.”
1. Complainant has been using the the MEDIMPACT mark since 1989;
2. Complainant has registered several MEDIMPACT Trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,190,676 registered January 2, 2007;
3. Respondent claims to be the owner of a company in Arizona;
4. Respondent claims to be a physical therapist;
5. The disputed domain name was registered on September 17, 2020;
6. The disputed domain name remains parked with the domain name registrar;
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.
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights under Policy ¶ 4(a)(i).
Complainant asserts rights in the MEDIMPACT mark based upon the registration with the USPTO (e.g., Reg. No. 3,190,676 registered January 2, 2007. 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 finds that the Complainant has rights in the MEDIMPACT mark under Policy 4(a)(i).
Complinant argues the disputed domain name is virtually identical and confusingly similar to Complainant’s MEDIMPACT mark as it contains the MEDIMPACT mark in its entirety, merely adds the letter “s” and adds the “.com” gTLD. The addition of the letter “s” and the addition of a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”). See also Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”). The Panel accepts that the disputed domain name is confusingly similar to Complainant's MEDIMPACT trademark.
For the foregoing reasons, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark in accordance with Policy ¶ 4(a)(i).
The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name per Policy ¶ 4(a)(ii). More specifically, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and the burden of prove then shifts to the 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”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the MEDIMPACT mark. 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 mark also indicates 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 the disputed domain name lists the registrant as “Neda Kiarash,” and there is no other evidence to suggest that Respondent was authorized to use the MEDIMPACT mark. Therefore, the Panel may find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further 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 instead resolves to a blank page. Where the Respondent inactively holds a domain name, the Panel finds the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”)
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name as it is commonly agreed that passive holding does not constitute a bona fide offering of goods and services or a legitimate non-commercial or fair use of the disputed domain names. The burden of proof has been shifted to the Respondent to prove that it has right or legitimate interests to the disputed domain name.
The Respondent rebuts that it got a company registered in Arizona on September 17, 2020 but has not provided any evidence to support within the response period. Even if the Respondent owns a business incorporating the term “Medimpacts”, the Panel is of the view that successfully registering a company or even a trademark does not automatically claims rights or legitimate interests to the term “Medimpacts”, see WIPO Overview ¶ 2.12.2 “The existence of a respondent trademark does not however automatically confer rights or legitimate interests on the respondent. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP or otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction)…”
Instead, Policy ¶ 4(c) listed some common circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to [respondent] of the dispute, [respondent’s] use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(ii) [respondent] (as an individual, business, or other organization) [has]
been commonly known by the domain name, even if you have acquired no trademark
or service mark rights; or
(iii) [respondent] [is] making a legitimate non-commercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.
In the present case, Respondent neither has any actual or demonstrable preparations to use the disputed domain name, nor has been commonly known by the disputed domain name, nor is making a legitimate non-commercial or fair use of the disputed domain name with concrete evidence.
For the foregoing reasons, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii) and Complainant has satisfied Policy ¶ 4(a)(ii).
The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith under Policy ¶ 4(a)(iii).
For the purposes of Policy ¶ 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [respondent] [has] registered or [respondent] [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) [respondent] [has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent] [has] engaged in a pattern of such conduct; or
(iii) [respondent] [has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent] [has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.
Complainant contends that the disputed domain name was registered in bad faith because Respondent uses a privacy shield. The use of a privacy to shield to conceal a respondent’s identity can be evidence of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith.
Complainant further argues Respondent’s inactive holding of the disputed domain name is evidence of bad faith registration and use. Inactive holding of a disputed domain name can demonstrate bad faith registration and use per Policy ¶ 4(a)(iii). See State Farm Mutual Automobile Insurance Company v. Dr. Keenan Cofield, FA 1799574 (Forum Sept. 10, 2018) (finding bad faith under Policy ¶ 4(a)(iii) where “the domain name initially resolved to a web page with a “website coming soon” message, and now resolves to an error page with no content.”).
Having considered the totality of the circumstances, the Panel is of the view that being a practitioner in the pharmaceutical industry, Respondent should have known of the existence of the Complainant’s MEDIMPACT trademark. It is not plausible to explain that it is a mere coincident for Respondent to create the disputed domain name in 2020 which is indeed the plural form of Complainant’s trademark which has been used for over 30 years. The passive holding of the disputed domain name further evinces the bad faith. Therefore, the Panel finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
For the foregoing reasons, the Panel finds the Complainant has satisfied 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 <medimpacts.com> domain name be TRANSFERRED from Respondent to Complainant.
Paddy Tam, Panelist
Dated: February 22, 2022
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