Emdeon Business Services, LLC v. HR EmdeonCareers
Claim Number: FA1507001629459
Complainant is Emdeon Business Services, LLC (“Complainant”), represented by Martha B. Allard of Bass, Berry & Sims PLC, Tennessee, USA. Respondent is HR EmdeonCareers (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <emdeoncareer.org>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 17, 2015; the Forum received payment on July 17, 2015.
On July 20, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <emdeoncareer.org> 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 July 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@emdeoncareer.org. Also on July 22, 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 August 18, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
Complainant has registered the EMDEON trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,538,679, registered November 25, 2008). See Compl., at Attached Ex. A. The mark is used on or in connection with business services, namely, facilitating the exchange of needed information for financial compensation among physicians, patients, and health plans by means of private computer networks and global computer information networks. The <emdeoncareer.org> domain name is confusingly similar to the EMDEON trademark because the domain name contains the entire mark and adds the generic term “career” along with the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Respondent has not provided any type of bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent has created a phishing scheme aimed at acquiring the personal information of unsuspecting Internet users.
Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Respondent is attempting to commercially profit from a likelihood of confusion by trying to pass itself off as Complainant. Respondent has also created a phishing scheme aimed at acquiring the personal information of unsuspecting Internet users. Finally, Respondent also had actual knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of business services, namely facilitating the exchange of needed information for financial compensation among physicians, patients, and health plans by means of private computer networks and global computer information networks.
2. Complainant has registered the EMDEON trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,538,679, registered November 25, 2008).
3. Respondent registered the disputed domain name on June 14, 2015.
4. Respondent has used the domain name to create a phishing scheme aimed at acquiring the personal information of unsuspecting Internet users.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has registered the EMDEON trademark with the USPTO (e.g., Reg. No. 3,538,679, registered November 25, 2008). See Compl., at Attached Ex. A. The mark is used on or in connection with business services, namely, facilitating the exchange of needed information for financial compensation among physicians, patients, and health plans by means of private computer networks and global computer information networks. Prior UDRP panels have decided that registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EMDEON mark .Complainant argues that the <emdeoncareer.org> domain name is confusingly similar to the EMDEON trademark. Complainant notes that the domain name contains the entire mark and adds the generic term “career” along with the gTLD “.org.” As a general rule, the addition of gTLDs such as “.org” can never distinguish a domain name from the trademark at issue. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). In addition, prior panels have established a confusing similarity where the domain name at issue contains the entire trademark and merely adds a generic term. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark). In the present case, an objective bystander would naturally assume that the domain name related to career opportunities at complainant. Thus, the Panel finds that Complainant has satisfied its burden under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EMDEON mark and to
use it in its domain name;
(b) Respondent registered the disputed domain name on June 14, 2015;
(c) Respondent has used the domain name to create a phishing scheme aimed at acquiring the personal information of unsuspecting Internet users;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e)Complainant asserts that Respondent is not commonly known by the <emdeoncareer.org> domain name, nor is Respondent in possession of licensing rights that would allow it to use the EMDEON mark in domain names. The Panel notes that “HR EmdeonCareers” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(f) Complainant argues that Respondent’s use of the <emdeoncareer.org> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. However, the Panel notes that while Complainant offers no arguments or evidence in support of these assertions under its Policy ¶ 4(a)(ii) section, Complainant does argue under its bad faith section that Respondent is engaged in a phishing scheme. Complainant notes that Respondent is sending emails to Internet users and advising them that they have been selected for a job interview with Complainant. See Compl., at Attached Ex. B-C. Complainant further adds that Respondent is sending these Internet users job briefing documents. See Compl., at Attached Ex. D. Prior panels have declined to grant respondents rights under Policy ¶¶ 4(c)(i) and (iii) where the domain name is used in connection with a phishing scheme. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, as the Panel accepts Complainant’s argument, it decides not to recognise Respondent rights under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant claims that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion. Complainant argues that Respondent is attempting to pass itself off as Complainant by sending emails to Internet users and advising them that they have been selected for a job interview with Complainant. See Compl., at Attached Ex. B-C. Complainant notes that Respondent also sends these Internet users job briefing documents that use Complainant’s mark. See Compl., at Attached Ex. D. Complainant further argues that Respondent must be profiting from this scheme in some manner. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the Respondent has created a likelihood of confusion for commercial gain. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Panels have also found individual instances of attempts to pass oneself off as the complainant as bad faith under Policy ¶ 4(a)(iii). See Smiths Group plc v. Snooks, FA 1372112 (Nat. Arb. Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). As the Panel finds that a likelihood of confusion for commercial gain exists and that Respondent is trying to pass itself off as Complainant, it finds that Respondent has acted in bad faith under the Policy.
Secondly, Complainant also argues that Respondent’s actions should be considered a phishing scheme, which in and of itself is indicative of bad faith according to Policy ¶ 4(a)(iii). Complainant again notes that Respondent is sending emails to Internet users and advising them that they have been selected for a job interview with Complainant. See Compl., at Attached Ex. B-C. Complainant adds that Respondent has created this scheme to induce Internet users to disclose personal information. Prior panels have found such actions to consist of a bad faith phishing scheme. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). As the Panel accepts Complainant’s argument, it finds bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant alleges that Respondent must have had actual notice of Complainant's rights in the EMDEON mark prior to registration of the domain name because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. As the Panel find that Respondent did have such actual knowledge, it concludes that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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); 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).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <emdeoncareer.org> domain name using the EMDEON mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <emdeoncareer.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 14, 2015
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