Eflexgroup v. Forsyte Corporation
Claim Number: FA0802001154172
Complainant is Eflexgroup (“Complainant”), represented by Jason
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <eflexhsa.com>, registered with Domains2Be.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 3, 2008.
On February 29, 2008, Domains2Be.com confirmed by e-mail to the National Arbitration Forum that the <eflexhsa.com> domain name is registered with Domains2Be.com and that Respondent is the current registrant of the name. Domains2Be.com has verified that Respondent is bound by the Domains2Be.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 13, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 2, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@eflexhsa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <eflexhsa.com> domain name is confusingly similar to Complainant’s EFLEX mark.
2. Respondent does not have any rights or legitimate interests in the <eflexhsa.com> domain name.
3. Respondent registered and used the <eflexhsa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Eflexgroup, is in the health insurance business. As part of their business, they offer health savings accounts (“HSA”) to consumers. Complainant registered its EFLEX mark with the United States Patent and Trademark Office (“USPTO”) on January 31, 2006 (Reg. No. 3,053,511).
Respondent registered its <eflexhsa.com> domain name on April 1, 2007. Respondent’s disputed domain name resolves to a website which displays links to healthcare insurance goods and services which compete with Complainant’s business. Respondent receives compensation in the form of click-through fees for displaying these links on its disputed 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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant registered its EFLEX mark with the USPTO on
January 31, 2006. The Panel finds Complainant’s
evidence of this registration is sufficient to establish rights in its EFLEX
mark pursuant to Policy ¶ 4(a)(i). See
Respondent’s <eflexhsa.com> domain name features Complainant’s EFLEX mark with the addition of the letters “hsa,” which stand for “health savings account,” a service Complainant offers as part of its health insurance business. The addition of a descriptive acronym to Complainant’s mark does not detract from the dominant feature of the disputed domain name which is EFLEX. Also, the addition of the generic top-level domain (“gTLD”) “.com,” is not relevant in evaluating whether the disputed domain name is confusingly similar to the mark because gTLDs are a required component of every domain name. Therefore, the Panel finds Respondent’s <eflexhsa.com> domain name is confusingly similar to Complainant’s EFLEX mark pursuant to Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or
legitimate interests in the disputed domain name. Once Complainant presents a prima facie case supporting these
allegations, the burden shifts to Respondent to establish it does have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The Panel finds Complainant
has presented a sufficient prima facie
case to support its allegations.
Respondent failed to submit a response in these proceedings. Therefore, the Panel may assume Respondent
does not have rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). However,
the Panel will inspect the record and determine whether Respondent has rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (holding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide “concrete evidence that it has rights to or
legitimate interests in the domain name at issue”); see also Desotec N.V. v.
Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that the complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent’s disputed domain name resolves to a website which displays links to competing third-party websites which also offer health insurance goods and services, including health savings accounts. The Panel finds Respondent’s diversionary use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Additionally, Respondent does not appear to be commonly
known by the <eflexhsa.com>
domain name. The WHOIS information lists
Respondent as “Forsyte Corporation.” In
addition, the record indicates Complainant never authorized Respondent to use
its EFLEX mark. Therefore, the Panel
finds Respondent is not commonly known by the <eflexhsa.com> domain name and thus does not have rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup,
Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name resolves to a website which displays links to the third-party websites of Complainant’s competitors. The Panel finds such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent presumably receives compensation in the form of
click-through fees for displaying links to Complainant’s competitors on its
confusingly similar disputed domain name.
The Panel finds Respondent is attempting to profit from the goodwill
Complainant has acquired in its EFLEX mark, which is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eflexhsa.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 17, 2008
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