Luke Huber v. S.E.O Nitro
Claim Number: FA2209002013153
Complainant is Luke Huber (“Complainant”), represented by Steven L. Rinehart, Registered Patent Attorney, Utah. Respondent is S.E.O Nitro (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drlukehuber.com>, registered with GoDaddy.com, LLC.
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 Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on September 22, 2022; Forum received payment on September 22, 2022.
On September 23, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <drlukehuber.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 26, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2022 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@drlukehuber.com. Also on September 26, 2022, 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 timely, formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On October 26, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any timely, formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Respondent’s Purported Consent to Transfer of the Domain Name
On October 11, 2022, Respondent sent an email communication to the Forum stating, formal parts omitted, as follows:
“I have just received the “Written Notice of Complaint” and have logged into the website to respond, but there is only a place to upload documents to support why we want to retain, which we don’t, so I’m not sure what I to do.
We register domains for SEO purposes and have a long standing official policy in our company to give back (at no cost) any domain(s) that are unintentionally lost to the owner, (or for any other reason for that matter,) as it is not our intention to cause harm or disrupt another's business or person in any way.
We have deleted the domain from our hosting and as stated above; are amenable to transferring the domain back to the original owner. We just need the Godaddy account number and email associated with it to do so. Please advise what the next step is.”
The Panel has naturally considered whether it should dispose of the proceeding in the manner suggested by Respondent. The Panel has decided in all the circumstances that the matter should proceed in the usual manner, namely to a consideration of the three elements that must be proved by Complainant under the Policy and then to a consideration of whether and, if so, what order should be made in accordance with the Policy. The reasons for the Panel taking such a position will become more apparent from the remainder of this decision but, in brief, this case is a particularly egregious breach of the Policy, involving as it does the Respondent pretending to be a doctor and a specific qualified doctor and purporting to offer medical services and provide treatment to potential patients. Accordingly, it is not appropriate for Respondent to escape scrutiny and judgment on its conduct merely on its say-so that it consents to a transfer of the domain name.
A. Complainant
Complainant made the following contentions.
Complainant is a well-known naturopathic doctor. Complainant submits that he has common law rights in his name, DR. LUKE HUBER, through his continuous and profitable use of the mark in connection with providing naturopathic services. Respondent’s <drlukehuber.com> domain name is identical or confusingly similar to Complainant’s DR. LUKE HUBER mark, as it incorporates the mark in its entirety, only deleting the period or full stop between “DR” and “LUKE” and adding the “.com” generic top-level domain (gTLD).
The disputed domain name was previously registered in the name of Complainant, but the registration inadvertently lapsed when Complainant encountered some difficulties on the renewal of the registration. Complainant wanted to renew the registration and at no time wanted the registration to lapse. However, the registration lapsed and Complainant seeks to recover the domain name so that he may continue to use it in the practice of his profession.
Respondent lacks rights and legitimate interests in the disputed domain name. Complainant has not authorized or licensed Respondent to use the DR. LUKE HUBER mark, nor is Respondent commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent attempts to pass itself off as Complainant, mimicking Complainant’s website.
Respondent registered and uses the <drlukehuber.com> domain name in bad faith. Respondent disrupts Complainant’s business and attempts to attract users for commercial gain by passing itself off as Complainant and taking over Complainant’s domain name. Further, Respondent had actual notice of Complainant’s rights in the DR. LUKE HUBER mark, evidenced by his fame and Respondent’s mimicking of Complainant’s website. Finally, Respondent creates initial interest confusion, taking over Complainant’s domain name and passing itself off as Complainant at the resolving website.
B. Respondent
Respondent did not file a formal Response in this proceeding. On October 11, 2022, Respondent wrote to the Forum in the terms set out above.
1. Complainant is a United States registered practitioner engaged in the provision of the services of a naturopathic doctor.
2. Complainant has established his common law trademark rights in the DR. LUKE HUBER mark and he has held those rights since at least the year 2002.
3. Respondent registered the <drlukehuber.com domain name on August 5, 2021.
4. Respondent has used the domain name to attempt to pass itself off as Complainant by way of mimicking Complainant’s website.
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 timely, formal 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant does not submit that he holds a registered trademark for DR. LUKE HUBER, but he argues that he has common law rights in the DR. LUKE HUBER mark dating back to at least the year 2002. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if it can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Therefore, the Panel agrees that it is not necessary for Complainant to provide evidence of trademark registration to show that he has rights in the DR. LUKE HUBER mark if he can establish common law trademark rights in the mark.
In that regard, Complainant submits that he has common law rights in the DR. LUKE HUBER mark based on his use of the mark in commerce and as his personal name. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Further, common law rights have been recognized to exist in a personal name when the name is associated with specific goods and services. See John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum June 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to Jan. 1, 2005.). In this case, Complainant has provided an abundance of evidence that the DR. LUKE HUBER mark is associated with the offering of naturopathic medicine and that Complainant is identified as the source of the goods and services provided under the mark. That evidence is correctly described by Complainant as “countless newspaper articles, press releases, and websites demonstrative of the recognition and association of the Complainant and the Mark DR. LUKE HUBER.” See Compl. Annexes D-R. Thus, the Panel finds that Complainant has more than sufficiently established his common law rights in the DR. LUKE HUBER mark and that he has held those rights since at least the year 2002.
The next issue that arises is whether the disputed domain name is identical or confusingly similar to the DR. LUKE HUBER mark. Complainant argues Respondent’s <drlukehuber.com> domain name is identical or confusingly similar to Complainant’s DR. LUKE HUBER mark, as it incorporates the mark in its entirety, only deleting the period or full stop between “DR” and “LUKE” in the trademark and the “.com” gTLD. Such a deletion cannot negate the identical nature of the domain name as it is insufficient for that purpose. The Panel therefore finds the <drlukehuber.com> domain name is identical to Complainant’s DR. LUKE HUBER mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
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 DR. LUKE HUBER mark, and to use it in its domain name, only deleting the period or full stop between “DR” and “LUKE” in the trademark;
(b) Respondent registered the domain name on August 5, 2021;
(c) Respondent uses the disputed domain name to pass itself off as Complainant by way of mimicking Complainant’s website;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent lacks rights and legitimate interests in the <drlukehuber.com> domain name because Respondent is not authorized to use the DR. LUKE HUBER mark, nor is Respondent commonly known by the disputed domain name. Past panels have looked at the available WHOIS information to determine whether a Respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a mark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information shows Respondent is known as “S.E.O. Nitro” and there is no evidence to suggest Complainant authorized Respondent to use the DR. LUKE HUBER mark. See Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent does not use the <drlukehuber.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website attempts to pass Respondent off as Complainant, mimicking Complainant’s website and offering competing services. Using a disputed domain name only to deceive users about the affiliation between the parties and passing off as the complainant is neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”). In this case, the Panel notes screenshots of both Complainant and Respondent’s websites submitted in evidence by Complainant. See Compl. Annexes S and U. As the Panel agrees Respondent attempts to pass itself off as Complainant, the Panel finds Respondent is not using the disputed domain name in compliance with Policy ¶¶ 4(c)(i) & (iii).
‘All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, but has simply sought to have the domain name transferred voluntarily and without scrutiny, the Panel finds that Respondent does not have a right or legitimate interest 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 submits that Respondent registered and uses the <drlukehuber.com> domain name in bad faith because Respondent attempts to disrupt Complainant’s business and attract users for commercial gain by taking over Complainant’s domain name and offering similar services, passing itself off as Complainant. Taking possession of a complainant’s domain name and continuing to offer similar services in direct competition of the complainant evidences bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Once again, the Panel compares Complainant’s website with Respondent’s resolving website. See Compl. Annexes S and U.
These exhibits deserve scrutiny. They show that Respondent has copied Complainant’s website including a photograph of Complainant and held itself out as being Dr. Huber and as being prepared to offer the medical services Dr. Huber provides. In that regard it must be remembered that the website is directed at potential patients who must be vulnerable and in need of help. Trading on internet users’ vulnerabilities in medical matters and matters of health is reprehensible and clearly constitutes bad faith registration and use of the domain name.
Secondly, Complainant contends Respondent had actual notice of Complainant’s rights in the DR. LUKE HUBER mark, evidenced by the fame of the mark, as well as Respondent’s use of the mark to pass itself off as associated with Complainant. Past panels have established actual notice by looking at the notoriety of the mark, along with the respondent’s specific use of the mark. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In this case, the Panel notes the evidence provided by Complainant to show the mark’s notoriety. See Compl. Annexes D-R. Additionally, Respondent uses the domain name to pass itself off as Complainant. See Compl. Annexes S and U. Therefore, as the Panel finds Respondent had actual notice of Complainant’s rights in the mark, it finds bad faith registration and use.
Thirdly, Complainant argues Respondent uses the domain name to create initial interest confusion. Previously, panels have concluded initial interest confusion by seeing how similar the disputed domain name is to the mark. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Here, Respondent took over the domain name when it expired, keeping the apparent link to Complainant and confusing users into believing that Respondent was the true owner of the domain name. See Compl. Annexes S and U. As the Panel agrees, it finds Respondent acted in bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name
using the DR. LUKE HUBER mark and in view of the conduct that Respondent
has 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 <drlukehuber.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: October 27, 2022
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