JDC Healthcare Management, Inc., d/b/a Jefferson Dental Clinics v. Online Admin / DotBadger Domains
Claim Number: FA1609001694712
Complainant is JDC Healthcare Management, Inc., d/b/a Jefferson Dental Clinics (“Complainant”), represented by Karen J. Bernstein of Bernstein IP, New York, United States. Respondent is Online Admin / DotBadger Domains (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jeffersondentalclinic.com>, registered with Rebel 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 21, 2016; the Forum received payment on September 21, 2016.
On September 26, 2016, Rebel Ltd confirmed by e-mail to the Forum that the <jeffersondentalclinic.com> domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel 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 September 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@jeffersondentalclinic.com. Also on September 27, 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 October 26, 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.
Since at least as early as 1986, Complainant has used its JEFFERSON DENTAL CLINICS mark to identify its dental services and to distinguish its services in its forty-nine dental clinics throughout the Dallas/Fort Worth area from those offered by its competitors. Complainant has registered the JEFFERSON DENTAL CLINICS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,158,462, registered Oct. 17, 2006), which demonstrates Complainant’s rights in its mark. See Compl., at Attached Annex 2. The <jeffersondentalclinic.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely eliminates the spaces between the words of the mark and removes the letter “s.”
Respondent has no rights or legitimate interests in the domain name. Respondent has never been known by or operated a business under the JEFFERSON DENTAL CLINIC, and Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain name resolves to a website displaying links to Complainant and its competitors. See Compl., at Attached Annex 11.
Respondent registered and is using the domain name in bad faith. First, Respondent has offered the domain name for sale. See Compl., at Attached Annex 13. Second, Respondent has demonstrated a pattern of bad faith by registering and using identical or almost identical domain names of brand names; panels have ordered transfer of domain names to complainants that were registered and used by Respondent. Third, Respondent’s use of the domain name to host competing hyperlinks constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). Fourth, Respondent used a privacy service when it registered the domain name. Fifth, Respondent has failed to respond to Complainant’s cease and desist letters. See Compl., at Attached Annexes 18 and 21. Finally, because of Complainant’s registered trademark for and longstanding use of its mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is prominent in its field of providing dental services through forty-nine dental clinics in the Dallas/Fort Worth area.
2. Complainant has registered the JEFFERSON DENTAL CLINICS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,158,462, registered Oct. 17, 2006).
3. Respondent registered the disputed domain name on October 1, 2010.
4. The domain name resolves to a website displaying links to Complainant and its competitors.
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. Since at least as early as 1986, Complainant has used its JEFFERSON DENTAL CLINICS mark to identify its dental services and to distinguish its services in its forty-nine dental clinics throughout the Dallas/Fort Worth area from those offered by its competitors. Complainant has registered the JEFFERSON DENTAL CLINICS mark with the USPTO (e.g., Reg. No. 3,158,462, registered Oct. 17, 2006), which Complainant argues demonstrates its rights in the mark. See Compl., at Attached Annex 2. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
The second issue that arises is whether the disputed <jeffersondentalclinic.com> domain name is identical or confusingly similar to Complainant’s JEFFERSON DENTAL CLINICS mark. Complainant argues that the <jeffersondentalclinic.com> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely eliminates the spaces between the words of the mark and removes the letter “s.” The Panel also notes that the domain name includes the “.com” generic top-level domain (“gTLD”). Panels have decided that these changes do not serve to distinguish a respondent’s domain name adequately from a complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). As such, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s 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 JEFFERSON DENTAL CLINICS mark and to use it in its domain name which suggests that the domain name is referring to Complainant and its services;
(b) Respondent registered the disputed domain name on October 1, 2010;
(c) The domain name resolves to a website displaying links to Complainant and its competitors;
(d) Complainant submits that Respondent engaged in the aforementioned activities without the permission or authority of Complainant and has adduced evidence to that effect which the Panel accepts. Complainant claims that Respondent has no rights or legitimate interests in the domain name. In that regard, Complainant submits that Respondent has never been known by or operated a business under the JEFFERSON DENTAL CLINIC, and Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks. The Panel notes that the WHOIS information merely lists “Online Admin” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. The Panel also notes Attached Annex 21 for additional WHOIS information. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name);
(e) Complainant contends that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant maintains that Respondent’s domain name resolves to a website displaying links to Complainant and its competitors and the Panel so finds. See Compl., at Attached Annex 11. Panels have held that a respondent’s use of a domain to display links that are competitive with a complainant’s business does not constitute 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 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 is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(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 contends that Respondent has offered the domain name for sale. See Compl., at Attached Annex 13. The Panel notes that, as reflected in Complainant’s Attached Annex 13, the following statement is included on Respondent’s resolving website: “This domain may be for sale. Click her for more info.” Panels have determined that a respondent’s general offer to sell a domain name can be evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”). As the Panel determines that Respondent has listed the domain name for sale, it finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(i).
Secondly, Complainant maintains that Respondent has demonstrated a pattern of bad faith by registering and using identical or almost identical domain names of brand names; Complainant also submits that panels have ordered the transfer of domain names to complainants that were registered and used by Respondent. Complainant cites the following cases in support of its contention: Compagnie Générale des Etablissements Michelin v. Online Admin, DotBadger Domains, D2016-0426 (WIPO Apr. 20, 2016); United Arrows Limited v. DotBadger Domains, D2016-0114 (WIPO Mar. 6, 2016); Allstate Insurance Company v. Online Admin/DotBadger Domains, FA1505001621864 (Forum July 15, 2015); Eastern Air Lines Group, Inc. v. Online Admin/DotBadger Domains, FA1411001591893 (Forum Jan. 8, 2015); Helena Christensen v. DotBadger Domains, Online Admin, Case No. D2013-1706 (WIPO Nov. 26, 2013). Panels have held that a respondent demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii) where there are previous adverse UDRP findings against the respondent. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations). For this reason, the Panel finds that Respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent’s use of the domain name to host competing hyperlinks constitutes bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv) and the Panel agrees. Prior panels have also agreed with that view. 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)); see also 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). Thus, the Panel finds that Respondent’s use of the domain name constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Fourthly, Complainant submits that Respondent used a privacy service when it registered the domain name. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007) (finding a change of privacy service after notice of complaint indicative of bad faith); see also Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). Therefore, as the Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, it agrees that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent has failed to respond to Complainant’s cease and desist letters. See Compl., at Attached Annexes 18 and 21. Panels have held that a respondent’s failure to respond to a complainant’s cease and desist letters may constitute bad faith registration and use. See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”). As the Panel agrees with Complainant’s submission, it finds that Respondent has acted in bad faith.
Sixthly, Complainant submits that because of Complainant’s registered trademark for, and longstanding use of, the JEFFERSON DENTAL CLINICS mark, it is clear that Respondent registered the domain name with at least constructive knowledge of Complainant’s mark and rights therein. While panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <jeffersondentalclinic.com> domain name using the JEFFERSON DENTAL CLINICS 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 <jeffersondentalclinic.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 27, 2016
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