Norvax, LLC d/b/a GoHealth, a Delaware limited liability company v. Visesh Infotecnics Ltd. D/B/A Signdomains.Com
Claim Number: FA1607001683439
Complainant is Norvax, LLC d/b/a GoHealth, a Delaware limited liability company (“Complainant”), represented by Alexis Crawford Douglas of K&L Gates LLP, Illinois, United States. Respondent is Visesh Infotecnics Ltd. D/B/A Signdomains.Com (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <go-health.com>, registered with Visesh Infotecnics Ltd. D/B/A Signdomains.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2016; the Forum received payment on July 12, 2016.
Visesh Infotecnics Ltd. D/B/A Signdomains.com confirmed by e-mail to the Forum that the <go-health.com> domain name is registered with Visesh Infotecnics Ltd. D/B/A Signdomains.com and that Respondent is the current registrant of the name. Visesh Infotecnics Ltd. D/B/A Signdomains.com has verified that Respondent is bound by the Visesh Infotecnics Ltd. D/B/A Signdomains.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 July 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@go-health.com. Also on July 18, 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 August 12, 2016 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 uses the GOHEALTH mark in connection with its business of providing consumers with the information they need to locate, compare, and enroll in health insurance plans. Complainant has registered the GOHEALTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,467,042, registered July 15, 2008), which establishes rights in the mark. See Compl., at Attached Annex 6. Respondent’s <go-health.com> domain name is confusingly similar to the GOHEALTH mark as it merely adds a hyphen between the terms “GO” and “HEALTH” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the disputed domain name. See Compl., at Attached Annex 2. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, through the <go-health.com> domain name. Rather, the domain name resolves to an active website featuring links to third-party websites for health insurance and health care, the same services offered by Complainant. See Comp., at Attached Annex 8.
Respondent registered and is using the domain in bad faith. First, Respondent has engaged in a pattern of bad faith, which is made clear by Respondent’s prior adverse UDRP rulings. Second, Respondent’s use of the domain serves as a disruption of Complainant’s legitimate business purposes. Third, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Finally, it is clear that Respondent registered the domain with knowledge of the GOHEALTH mark due to the virtual identity between the domain and the mark, and Complainant’s long-standing rights in its GOHEALTH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of providing consumers with information on health insurance plans.
2. Complainant has registered the GOHEALTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,467,042, registered July 15, 2008), establishing its rights in the mark.
3. Respondent registered the <go-health.com> domain name on October 20, 2012.
4. Respondent has caused the domain name to resolve to an active website featuring links to third-party websites for health insurance and health care, offering competing services to those offered by Complainant.
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 (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 uses the GOHEALTH mark in connection with its business of providing consumers with the information they need to locate, compare, and enroll in health insurance plans. Complainant has registered the GOHEALTH mark with the USPTO (e.g., Reg. No. 3,467,042, registered July 15, 2008), which Complainant argues establishes its rights in the mark. See Compl., at Attached Annex 6. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or operates (here Russia).”). Therefore, the Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the GOHEALTH mark.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GOHEALTH mark Complainant argues that Respondent’s <go-health.com> domain name is confusingly similar to the GOHEALTH mark as it merely adds a hyphen between the terms “GO” and “HEALTH” and the gTLD “.com.” Panels have held that neither the addition of a hyphen, nor the affixation of the “.com” gTLD, serves to distinguish adequately a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (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). For these reasons, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s GOHEALTH mark 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 (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 (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 GOHEALTH
mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on October 20, 2012;
(c) Respondent has caused the domain name to resolve to an active website featuring links to third-party websites for health insurance and health care, which offer competing services to those offered by Complainant;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the domain name as Respondent is not commonly known by the disputed domain name. The Panel notes Complainant’s Attached Annex 2, the WHOIS information regarding the disputed domain name, listing “Visesh Infotecnics Ltd. D/B/A Signdomains.Com” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel holds 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 (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;
(f) Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name. Rather, Complainant contends that the domain name resolves to a website displaying links to third-party websites for health insurance and health care, the same services offered by Complainant. See Comp., at Attached Annex 8. Panels have held that a respondent lacks rights and legitimate interests in a domain name where it uses the domain name to host hyperlinks to products and/or services that are directly competitive with a complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent’s use of its domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, under Policy ¶¶ 4(c)(i) and (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 been the subject of prior adverse UDRP rulings, thereby demonstrating a pattern of bad faith. In support of its argument, Complainant cites two cases: Steve Madden, Ltd. v. MPS TECHNOSOFT D/B/A/ SIGNDOMAINS.COM, FA1303001489154 (Forum Apr. 22, 2013), and Allstate Insurance Company v. Protection Domain/ITWEB Domain Protection, FA505001621872 (Forum July 24, 2015). Panels have consistently held that a respondent’s prior adverse UDRP rulings are sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (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).”). As the Panel agrees with Complainant’s argument, it finds that Respondent registered and is using the domain name in bad faith per Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent’s use of the domain name to host competing hyperlinks is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). Panels have decided that a respondent demonstrates bad faith registration and use per Policy ¶ 4(b)(iii) where it uses a domain name to display links to products and/or services that are in direct competition with a complainant’s business, as has been shown on the evidence in the present case. See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Thirdly, Complainant submits that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Specifically, Complainant argues that Respondent’s use of the domain name to host competing hyperlinks is evidence of bad faith under Policy ¶ 4(b)(iv). Panels have determined that a respondent demonstrates bad faith where it uses a domain name to host competing hyperlinks. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). For this reason, the Panel finds that Respondent’s use of the domain name constitutes bad faith registration and use per Policy ¶ 4(b)(iv).
Fourthly, Complainant asserts that it is clear that Respondent registered the domain name with knowledge of the GOHEALTH mark due to the virtual identity between the domain name and the mark, and Complainant’s long-standing rights in its GOHEALTH mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant’s mark, Respondent registered the domain with actual knowledge of Complainant’s GOHEALTH mark. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Yahoo! Inc. v. Butler, FA 744444 (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 <go-health.com> domain name using the GOHEALTH 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 <go-health.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 17, 2016
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