Dr. Leonard's Healthcare Corp. v. Privacy Ltd. Disclosed Agent for YOLAPT
Claim Number: FA1357140
Complainant is Dr. Leondard's Healthcare Corp. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Privacy Ltd. Disclosed Agent for YOLAPT (“Respondent”), Isle of Man.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwdrleonards.com>, registered with Fabulous.com Pty Ltd.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2010; the National Arbitration Forum received payment on November 8, 2010.
On November 8, 2010, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <wwwdrleonards.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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 November 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2010 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@wwwdrleonards.com. Also on November 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 6, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <wwwdrleonards.com> domain name is confusingly similar to Complainant’s DR. LEONARD’S mark.
2. Respondent does not have any rights or legitimate interests in the <wwwdrleonards.com> domain name.
3. Respondent registered and used the <wwwdrleonards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dr. Leonard's Healthcare Corp., is a direct-mail catalogue and online retailer specializing in the retail of a wide variety of health products marketed towards senior citizens. Complainant operates its business under the DR. LEONARD’S mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,818,850 issued February 1, 1994).
Respondent registered the disputed domain name on November 9, 2010. The disputed domain name resolves to a website featuring links to Complainant’s competitors in the sale of health related good and services, in addition to links that are unrelated to Complainant’s mail order and online retail business.
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 has provided evidence of its registration of the DR. LEONARD’S mark with the USPTO (e.g., Reg. No. 1,818,850 issued February 1, 1994). Complainant has established rights in the mark and has satisfied the requirements of Policy ¶ 4(a)(i). Previous panels have found that registration of a mark with a federal trademark authority establishes rights in the mark, regardless of whether Respondent lives in the country of registration. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). The Panel concludes that Complainant has established rights in its DR. LEONARD’S mark, pursuant to Policy ¶ 4(a)(i), based on its registration of the mark with the USPTO.
Complainant alleges that Respondent’s <wwwdrleonards.com> disputed domain name is confusingly similar to Complainant’s DR. LEONARD’S mark. Respondent’s domain name attempts to take advantage of a typing error by removing the period after the “www” in the disputed domain name. Respondent has incorporated Complainant’s mark in its entirety. Respondent has removed the period after the first term of Complainant’s mark, the “apostrophe”, and the space between Complainant’s terms, which are all necessary modifications of Complainant’s mark in order to create a domain name. These modifications of a registered mark do not result in a unique domain name. Additionally, Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from Complainant’s DR. LEONARD’S mark. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel concludes that Respondent’s <wwwdrleonards.com> disputed domain name is confusingly similar to Complainant’s DR. LEONARD’S mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant, under Policy ¶ 4(a)(ii), has the burden to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie showing in support of its allegations, the burden then shifts to Respondent to show it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). The Panel finds that Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the <wwwdrleonards.com> domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will consider the evidence to determine whether Respondent has any rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <wwwdrleonards.com> domain name and that Respondent is not authorized to use the DR. LEONARD’S mark. There is no evidence in the record that Respondent is commonly known by the disputed domain name. Additionally, the information in the WHOIS database does not indicate that Respondent is commonly known by the disputed domain name. Based on the foregoing, the Panel finds that Respondent is not commonly known by the <wwwdrleonards.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The Panel finds that Respondent uses the disputed domain name to redirect Internet users to Respondent’s own website, which consists of links to the websites of Complainant’s competitors in the mail order retail business. The Panel presumes that Respondent receives click-through fees in return for redirecting Internet traffic to third-party websites. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).
Complainant asserts that Respondent has engaged in typosquatting. Typosquatting occurs when a domain name is registered that attempts to take advantage of common typing errors by directing traffic away from the intended website. Based on Respondent’s registration of the confusingly similar domain name, the Panel finds that Respondent has engaged in typosquatting, which is direct evidence of a lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent is using the disputed domain name and resolving website to post links to various third-party websites, the majority of which compete with Complainant in the mail order and online retail business. Complainant alleges that its business is negatively impacted by Respondent’s inclusion of hyperlinks to Complainant’s competitors. Internet users interested in Complainant’s products may purchase similar mail order products from Complainant’s competitors due to Respondent’s use of the confusingly similar disputed domain name. The Panel determines that such use disrupts Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent used the disputed domain name, which is confusingly similar to Complainant’s DR. LEONARD’S mark, to divert Internet users through hyperlinks to Respondent’s website. Because of this redirection, Internet users are confused as to Complainant’s affiliation and sponsorship of the disputed domain name’s resolving website and posted hyperlinks. The Panel presumes that Respondent benefits from this confusion through the receipt of click-through fees. Therefore, the Panel concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Respondent’s typosquatted variation of Complainant’s domain name creates a likelihood of confusion for Internet users seeking Complainant’s website. Additionally, the <wwwdrleonards.com> domain name features sponsored links to third-party websites, which the Panel infers financially benefits Respondent. The Panel finds this as further evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also 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.’”).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwdrleonards.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 10, 2010
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