Health Care Service Corporation v. Kanter Associates SA
Claim Number: FA1103001378474
Complainant is Health Care Service Corporation (“Complainant”), represented by Sean Garrison of Lewis and Roca LLP, Arizona, USA. Respondent is Kanter Associates SA (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwdentemax.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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2011; the National Arbitration Forum received payment on March 17, 2011.
On March 17, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <wwwdentemax.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 March 24, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2011 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@wwwdentemax.com. Also on March 24, 2011, 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 April 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <wwwdentemax.com> domain name is confusingly similar to Complainant’s DENTEMAX mark.
2. Respondent does not have any rights or legitimate interests in the <wwwdentemax.com> domain name.
3. Respondent registered and used the <wwwdentemax.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Health Care Service Corporation, owns trademark registrations for the DENTEMAX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,570,223 issued December 5, 1989). Complainant, through its subsidiaries, uses the DENTEMAX mark in connection with a leasable dental preferred provider organization network in the United States. Complainant has offered and marketed its dental network and related dental services and products under the DENTEMAX mark since 1985.
Respondent, Kanter Associates SA, registered the disputed domain name on November 10, 2004. The <wwwdentemax.com> domain name resolves to a pay-per-click website featuring links to dental plans, dental insurance services, and dental care.
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 asserts rights in its DENTEMAX mark based on its multiple trademark registrations with the USPTO (e.g., Reg. No. 1,570,223 issued December 5, 1989). The Panel finds that a USPTO registration is sufficient evidence of Complainant’s rights in its DENTEMAX mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel notes that it is irrelevant whether Complainant registered its DENTEMAX mark in the country where Respondent resides or operates, and that registration with any governmental trademark authority is sufficient for the purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant asserts that Respondent’s <wwwdentemax.com> domain name is confusingly similar to Complainant’s own DENTEMAX mark. The disputed domain name incorporates Complainant’s entire DENTEMAX mark with only the addition of the “www” prefix and the generic top-level domain “.com.” The Panel finds that neither of these additions creates distinction capable of overcoming a finding of confusing similarity. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds that Respondent’s <wwwdentemax.com> domain name is confusingly similar to Complainant’s DENTEMAX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶4(a)(ii), Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to submit evidence that it does have rights or legitimate interests in the disputed domain name. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). The Panel finds that, based on the arguments set forth in the Complaint, Complainant has established a prima facie case. Respondent has not submitted a Response to these proceedings and therefore the Panel may presume that Respondent does in fact lack rights and legitimate interests in the <wwwdentemax.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel will, however, examine the record in accordance with the Policy ¶ 4(c) factors to make a complete determination on this issue.
Complainant argues that Respondent is neither an authorized agent nor a licensee of any of Complainant’s subsidiaries and does not have authorization to use Complainant’s DENTEMAX mark or to register a domain name containing Complainant’s DENTEMAX mark. Complainant suggests that Respondent is not commonly known by the <wwwdentemax.com> domain name. The Panel, after examining the record in its entirety, cannot find any evidence that Respondent is commonly known by the disputed domain name. Moreover, the WHOIS information identifies the registrant of the domain name as “Kanter Associates SA,” which does not imply any connection between Respondent and the <wwwdentemax.com> domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent is operating the website resolving from the disputed domain name as a pay-per-click website and that such use is 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). Respondent’s resolving website contains various sponsored links for dental plans, dental insurance services, and dental care. Complainant notes that Respondent likely profits when an Internet user visits the website and clicks on one of the sponsored links, which promote Complainant’s competitors. Therefore, the Panel finds that Respondent, using the disputed domain name earn click-through fees from the displayed links to Complainant’s competitors, is not using the <wwwdentemax.com> domain name in connection with either 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). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
Complainant argues that the disputed domain name takes advantage of a typing error (eliminating the period between the “www” and the domain name) that Internet users commonly make. Thus, Complainant contends that Respondent has engaged in typosquatting. The Panel agrees and finds that the addition of the prefix “www” is demonstrative of typosquatting, which further proves that Respondent lacks rights and legitimate interests in the disputed domain name. See 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); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant argues that none of the sponsored links on Respondent’s resolving website redirects Internet users to one of Complainant’s own websites, but instead redirects users to third-party websites that compete with Complainant. Complainant further argues that the potential loss to Complainant is great as each customer searching for Complainant and then redirected to a competitor via Respondent’s website, is a potential customer lost to Complainant. The Panel agrees and finds that Respondent’s registration and use of the disputed domain name to redirect Internet users to websites in direct competition with Complainant’s dental products and services is evidence of bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also 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)).
Complainant suggests that the Panel may assume that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s DENTEMAX mark and the <wwwdentemax.com> domain name and resolving website. Based on Respondent’s registration and use of the disputed domain name to operate a website featuring nothing more than links to third-party businesses, the Panel finds that Complainant’s presumption that Respondent receives click-through fees is a valid one. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use 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).”); see also 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).
As established under the Panel’s Policy ¶ 4(a)(ii) analysis, Respondent has, through its registration and use of the disputed domain name, attempted to take advantage of a common typing error made by Internet users. The Panel finds that typosquatting itself constitutes bad faith under Policy ¶ 4(a)(iii). See Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name was registered to “ensnare those individuals who forget to type the period after the ‘www’ portion of [a] web-address,” which was evidence that the domain name was registered and used in bad faith); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwdentemax.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 14, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page