athenahealth, Inc. v. Domain Administrator / Whois Watchdog
Claim Number: FA1602001660888
Complainant is athenahealth, Inc. (“Complainant”), represented by Robert M. O’Connell, Jr. of Fish & Richardson P.C., Massachusetts, USA. Respondent is Domain Administrator / Whois Watchdog (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <athenanet.com>, registered with Rebel.com.
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.
Complainant submitted a Complaint to the Forum electronically on February 12, 2016; the Forum received payment on February 12, 2016.
On February 17, 2016, Rebel.com confirmed by e-mail to the Forum that the <athenanet.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 February 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 8, 2016 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@athenanet.com. Also on February 17, 2016, 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 March 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the ATHENANET mark for its strategic business consulting services and medical practice information system. Complainant registered the ATHENANET mark with the United States Patent and Trademark Office (“USTPO”) (Reg. No. 2,737,126, registered July 15, 2003), which demonstrates rights in the mark. Respondent’s <athenanet.com> domain name is identical to the ATHENANET mark as it incorporates the mark entirely and simply adds the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <athenanet.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <athenanet.com> domain name. Rather, the domain name resolves to a website which attempts to install a virus or malicious software (“malware”).
iii) Respondent registered and is using the <athenanet.com> domain name in bad faith. Respondent has demonstrated a pattern of adverse UDRP claims. In addition, Respondent used the domain name in connection with the distribution of malware. Further, Respondent had actual and constructive notice of the ATHENANET mark and Complainant’s rights therein.
B. Respondent
Respondent did not submit a response. The Panel notes that the <athenanet.com> domain name was registered on February 19, 2004.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s 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.
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(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 ATHENANET mark for its strategic business consulting services and medical practice information system. Complainant claims to have registered the ATHENANET mark with the USTPO (Reg. No. 2,737,126, registered July 15, 2003), arguing such a registration demonstrates rights in the mark. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Therefore, this Panel agrees that Complainant’s USPTO registration for the ATHENANET mark is sufficient to demonstrate that Policy ¶ 4(a)(i) rights exist.
Next, Complainant argues that Respondent’s <athenanet.com> domain name is identical to the ATHENANET mark as it incorporates the mark in its entirety and adding the “.com” gTLD. Panels have found such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, The Panel agrees that Respondent’s <athenanet.com> domain name is confusingly similar to the ATHENANET mark under Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the <athenanet.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information regarding the disputed domain name, identifying the registrant as “domain administrator” and the registrant’s organization as “Whois Watchdog.” In addition, Complainant argues that it never authorized or licensed Respondent to incorporate the ATHENANET mark into the domain name, or otherwise to use the mark in any other way. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the domain name. Rather, Complainant contends that the domain name resolves to a website that redirects Internet users to a webpage that attempts to download a virus that displays a phrase “WARNING! Your PC may not be protected!”. Panels have found such use by a respondent to evince neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Therefore, this Panel agrees that Respondent’s <athenanet.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
Complainant argues that Respondent registered and used the <athenanet.com> domain name in bad faith. To begin, Complainant asserts that Respondent has a number of adverse UDRP findings. Complainant claims Respondent is the registered owner of over 12,000 domain names, and cites to the following cases to support its argument: 24 Hour Fitness USA, Inc. v. Domain Administrator / Whois Watchdog, FA1501001601950; Roxin Rechtsanwälte LLP v. Whois Watchdog, WIPO Case No. D2012-1794; Ashley Furniture Industries, Inc. v. Whois Watchdog / Domain Administrator, FA1207001451473. Panels have seen history of adverse UDRP findings as indicative of evidence of bad faith in a current case. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Accordingly this panel finds that Respondent has demonstrated bad faith under Policy ¶ 4(b)(ii).
Further, Complainant contends that Respondent used the domain name in connection with the distribution of malware. The Panel recalls a webpage that redirects from <athenanet.com> and which attempts to download malicious software. Panels have seen such use as evidence of bad faith. See Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions Inc., D2013-0062 (WIPO April 1, 2013) (finding that the “distribution of malware through a deceptive domain name is in this Panel’s view to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and is being used in bad faith”). Therefore, the Panel sees that Respondent’s alleged use of malware is non-exclusive evidence of Respondent’s bad faith registration and use of the <athenanet.com> domain name pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant also contends that Respondent had actual or constructive notice of Complainant’s rights in the ATHENANET mark because Complainant’s rights in the mark predate the registration of the <athenanet.com> domain name. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.”). However, the Panel infers due to the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb Forum Aug. 16, 2007) (rejecting the respondent’s contention that the respondent had knowledge of complainant’s rights in the UNIVISON mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <athenanet.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 18, 2016
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