national arbitration forum

 

DECISION

 

Benefitfocus.com, Inc. v Whois Agent / Whois Privacy Protection Service, Inc.

Claim Number: FA1404001555312

 

PARTIES

Complainant is Benefitfocus.com, Inc. (“Complainant”), represented by John C. McElwaine of Nelson Mullins Riley & Scarborough, LLP, South Carolina, USA.  Respondent is Whois Agent / Whois Privacy Protection Service, Inc. (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <benefitfocus.co>, registered with Name.com, Inc.

 

PANEL

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2014; the National Arbitration Forum received payment on April 22, 2014.

 

On April 25, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <benefitfocus.co> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name.  Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 April 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2014 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@benefitfocus.co.  Also on April 25, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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" 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

a)    Complainant is a leading benefits technology provider for consumers, employers, insurance carriers and brokers. Complainant has been in business since at least 2000.

b)    Complainant has rights in the BENEFITFOCUS mark, used in connection with benefits technology. Complainant owns registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,496,059 registered October 9, 2001).

c)    Respondent’s <benefitfocus.co> domain name is identical to Complainant’s BENEFITFOCUS mark. The disputed domain name incorporates Complainant’s mark in its entirety while only adding the country-code top-level domain (“ccTLD”) “.co.”

d)    Respondent does not have any rights or legitimate interests in the <benefitfocus.co> domain name.

a.    Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BENEFITFOCUS mark in any way. Respondent is hiding behind a privacy service, and Complainant believes Respondent’s actual identity is Syed Hussain.

b.    Respondent is using the <benefitfocus.co> domain name to host a web page containing click-through links to third-party websites. See Complainant’s Exhibit P.

e)    Respondent registered and is using the <benefitfocus.co> domain name in bad faith.

a.    Respondent offered to sell the disputed domain name to Complainant for $1,150 and $500. See Complainant’s Exhibit N.

b.    Respondent is a serial cybersquatter who has been involved in multiple past UDRP proceedings in which Respondent’s disputed domain names were ordered to be transferred. See Viceroy Hotels, LLC, Kor Cayman Ltd. V. Mr. Syed Hussain, Case No. D2009-0962 (WIPO Sept. 1, 2009; see also Compagnie Gervais Danone v. Domain Management, Syed Hussain, D2008-1239 (WIPO Sept. 22, 2008).

c.    Respondent is using the <benefitfocus.co> domain name to host click-through links to Complainant’s competitors. See Complainant’s Exhibit P.

d.    Respondent had knowledge of Complainant’s BENEFITFOCUS mark prior to registering the <benefitfocus.co> domain name because Respondent and Complainant were involved in a prior UDRP proceeding, which was dismissed due to settlement between the parties. See Complainant’s Exhibit M.

 

B. Respondent

a)    Respondent did not submit a response in this proceeding.

b)    The Panel notes that Respondent registered the <benefitfocus.co> domain name on December 21, 2013.

 

FINDINGS

Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainants protected mark.

 

Respondent has no rights to or legitimate interests in the disputed domain name.

  

Respondent registered and used the disputed domain name in bad faith.

 

DISCUSSION

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(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.”).

 

Identical and/or Confusingly Similar

Complainant contends it has rights in the BENEFITFOCUS mark, used in connection with benefits technology. Complainant states it owns registrations for the mark with the USPTO (e.g., Reg. No. 2,496,059 registered October 9, 2001). Therefore, the Panel finds that Complainant has rights in the BENEFITFOCUS mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <benefitfocus.co> domain name is identical to Complainant’s BENEFITFOCUS mark. The disputed domain name incorporates Complainant’s mark in its entirety while only adding the ccTLD “.co.” Past panels have determined that the addition of a ccTLD to trademark in a disputed domain name does not negate a finding of confusingly similarity. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (ccTLD) designation <.tv> does not serve to distinguish [the disputed domain] names from the complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent.”). Therefore, the Panel finds that Respondent’s <benefitfocus.co> domain name is identical to Complainant’s BENEFITFOCUS mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).

 

Complainant asserts that Respondent does not have any rights or legitimate interests in the <benefitfocus.co> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BENEFITFOCUS mark in any way. Respondent is hiding behind a privacy service, and Complainant believes Respondent’s actual identity is Syed Hussain. The Panel notes that the WHOIS record for the disputed domain name lists “ Whois Agent” as the domain name registrant and “Whois Privacy Protection Service, Inc.” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the BENEFITFOCUS mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <benefitfocus.co> domain name under Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent is using the <benefitfocus.co> domain name to host a web page containing click-through links to third-party websites. See Complainant’s Exhibit P. Past panels have found that using a disputed domain name to operate a pay-per-click page does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)). Therefore, the Panel finds that Respondent is not making 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) because Respondent is using the <benefitfocus.co> domain name to host a web page containing click-through links to third-party websites.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and is using the <benefitfocus.co> domain name in bad faith. Complainant states that Respondent offered to sell the disputed domain name to Complainant for $1,150 and $500. See Complainant’s Exhibit N. Past panels have found that making an offer to sell a disputed domain name to a complainant constitutes bad faith pursuant to Policy ¶ 4(b)(i). See Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where the respondent offered to sell the domain name for $900, specifically noting that it would cost the complainant more to enforce its rights legally than to succumb to the respondent's attempted extortion). Therefore, the Panel finds that Respondent registered and is using the <benefitfocus.co> domain name in bad faith because Respondent made a specific offer to sell the disputed domain to Complainant.

 

Complainant asserts that Respondent is a serial cybersquatter who has been involved in multiple past UDRP proceedings in which Respondent’s disputed domain names were ordered to be transferred. See Viceroy Hotels, LLC, Kor Cayman Ltd. V. Mr. Syed Hussain, Case No. D2009-0962 (WIPO Sept. 1, 2009; see also Compagnie Gervais Danone v. Domain Management, Syed Hussain, D2008-1239 (WIPO Sept. 22, 2008). Past panels have found that such conduct as that alleged by Complainant demonstrates bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) 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). Therefore, the Panel finds that Respondent violated Policy ¶ 4(b)(ii) because Respondent has been involved in past adverse UDRP proceedings resulting in the transfer of Respondent’s disputed domain names.

 

Complainant claims Respondent is using the <benefitfocus.co> domain name to host click-through links to Complainant’s competitors. See  Complainant’s Exhibit P. Past panels have found that using a disputed domain name to promote third-party links to Complainant’s competitors demonstrates bad faith via attraction for commercial gain under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Therefore, the Panel finds that Respondent registered and is using the <benefitfocus.co> domain name under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to display links to Complainant’s competitors.

 

Complainant argues that Respondent had knowledge of Complainant’s BENEFITFOCUS mark prior to registering the <benefitfocus.co> domain name because Respondent and Complainant were involved in a prior UDRP proceeding, which was dismissed due to settlement between the parties. See Complainant’s Exhibit M. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name in light of the Complainant’s undisputed contention that Respondent and Complainant were involved in a prior UDRP proceeding, and thus the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <benefitfocus.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated:  May 25, 2014

 

 

 

 

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