Health Republic Insurance Company v. Gustavo Winchester
Claim Number: FA1506001622089
Complainant is Health Republic Insurance Company (“Complainant”), represented by Steven E. Klein of Stoel Rives LLP, Oregon, USA. Respondent is Gustavo Winchester (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newyorkhealthrepublic.us>, registered with PSI-USA, Inc. dba Domain Robot.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2015; the Forum received payment on June 1, 2015.
On June 3, 2015, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <newyorkhealthrepublic.us> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2015 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@newyorkhealthrepublic.us. Also on June 5, 2015, 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 July 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶4(a)(i)
a. Complainant has rights in the HEALTH REPUBLIC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,534,785, registered on May 20, 2014).
b. Respondent’s <newyorkhealthrepublic.us> domain name is confusingly similar to Complainant’s HEALTH REPUBLIC mark because it is differentiated by only the removal of spaces between the words of the mark and the additions of the term “newyork” and the country code top-level domain (“ccTLD”) “.us.”
2. Policy ¶4(a)(ii)
a. Respondent is not commonly known by the disputed domain name as the WHOIS information lists “Gustavo Winchester” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s HEALTH REPUBLIC mark.
b. Respondent does not have rights in a mark that is identical to the <newyorkhealthrepublic.us> domain name.
c. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the resolving website to host links to competitors of Complainant and other third party advertisements.
3. Policy ¶4(a)(iii)
a. Respondent has demonstrated a pattern of bad faith registration through prior decided UDRP cases.
b. Respondent uses the disputed domain to disrupt Complainant’s business by hosting links to competitors of Complainant.
c. Respondent uses the resolving website to capitalize on the confusion of Internet users seeking Respondent’s services to profit commercially by hosting links to competitors of Complainant.
d. Respondent registered the <newyorkhealthrepublic.us> domain name with actual knowledge in Complainant’s rights in the HEALTH REPUBLIC mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 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.”).
Complainant uses the HEALTH REPUBLIC mark in conjunction with its health care services, primarily within the state of Oregon (although Complainant also has New York operations). Complainant has rights in the HEALTH REPUBLIC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,534,785, registered on May 20, 2014). Registration with the USPTO (or a similar governmental authority) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Complainant is not required to register in a respondent’s country of operation, so long as SOME rights can be established SOMEWHERE. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). At this stage, Complainant is not required to have superior rights to Respondent. Complainant has rights in the HEALTH REPUBLIC mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <newyorkhealthrepublic.us> domain name is confusingly similar to Complainant’s HEALTH REPUBLIC mark because it is differentiated by only the removal of spaces between the words of the mark and the additions of the term “NewYork” and the ccTLD “.us.” Originally, this Panel must admit to being skeptical of this claim because the phrase “NewYork” appeared before the HealthRepublic mark. Normally, this Panel would have expected the mark to be easily distinguishable from the domain name for this reason. However, Complainant uses the NewYork.HealthRepublic.us subdomain. There is a real and serious risk of confusion between the disputed domain name and the subdomain name (which reflects an unusual way Complainant uses its mark). The only thing that differentiates them is a single character…an easily overlooked period. Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The term “NewYork” is either a geographic term or a descriptive term because Complainant conducts business within the state of New York. Past panels have found that in creating a domain name, adding terms to a mark that describe the mark holder’s business operations or qualify the mark geographically are not enough to differentiate the mark and the domain name, although such descriptive terms are usually at the end of the domain name. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Under the circumstances of this case, confusion still exists even though the phrase “NewYork” is added to the front of the mark. Therefore, this Panel finds Respondent’s <newyorkhealthrepublic.us> domain name is confusingly similar to Complainant’s HEALTH REPUBLIC mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has 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 claims Respondent is not commonly known by the disputed domain name. The WHOIS information lists “Gustavo Winchester” as Registrant. Respondent has failed to provide further evidence to indicate being commonly known by the domain name. There is no obvious connection between Respondent’s name and the domain name. Respondent is not authorized to use Complainant’s mark. There is insufficient evidence sufficient to conclude Respondent is commonly known by the disputed domain name under Policy ¶4(c)(iii). 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). This Panel finds Respondent is not commonly known by the <newyorkhealthrepublic.us> domain name under Policy ¶4(c)(iii).
Complainant claims Respondent does not have rights in a mark that is identical to the <newyorkhealthrepublic.us> domain name. Respondent has not submitted any evidence to indicate having rights in any such mark. A lack of such evidence is sufficient to show a lack of rights in such a hypothetical mark. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name). This Panel finds Respondent does not have any such rights under Policy ¶4(c)(i).
Complainant claims Respondent does not use the resolving website to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the resolving website to host links to competitors of Complainant as well as other third-party advertisements on a parking page. Such a use suffices to show a lack of bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(ii) and ¶4(c)(iv). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent does not use the disputed domain name provide a bona fide offering of goods or services or legitimate noncommercial or fair use pursuant to Policy ¶4(c)(ii) and ¶4(c)(iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated a pattern of bad faith registrations. Respondent has a history of UDRP decisions decided against it. While some panels find such a history to evidence bad faith registration and use, this Panel does not. Each case must be judged on its merits. Complainant has not shown it cannot use its trademark in a domain name, a requirement under Policy ¶4(b)(ii). Therefore, this Panel must find Respondent has not violated Policy ¶4(b)(ii).
Complainant claims Respondent registered and uses the <newyorkhealthrepublic.us> domain name for the purpose of disrupting Complainant’s business operations. Respondent uses its resolving website to host links leading to services which compete with Complainant’s services. Using a disputed domain name to host links to a complainant’s competitors shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under 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).”). It seems obvious Respondent registered and uses the <newyorkhealthrepublic.us> domain name in bad faith under Policy ¶4(b)(iii).
Complainant claims Respondent uses its resolving website to take advantage of the initial confusion of Internet users for financial gain by using the <newyorkhealthrepublic.us> domain name to host links to competitors of Complainant. Once again, the facts support this conclusion. Respondent likely receives referral fees for hosting these links, even if they simply result in free web site hosting. Such a use is clearly commercial gain and Respondent has done nothing to refute this claim. Such actions constitute bad faith use and registration pursuant to Policy ¶4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Respondent registered and uses the <newyorkhealthrepublic.us> domain in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the HEALTH REPUBLIC mark. Given the close similarity of Complainant’s subdomain and Respondent’s disputed domain name, this seems obvious to the Panel. Complainant does business in New York. Respondent must have chosen the <newyorkhealthrepublic.us> domain with actual knowledge of Complainant’s rights. When respondents have actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). This Panel concurs. Respondent registered the <newyorkhealthrepublic.us> domain in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <newyorkhealthrepublic.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 7, 2015
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