Everyday Health, Inc. v. Animashaun Olalekan
Claim Number: FA2211002022041
Complainant is Everyday Health, Inc. (“Complainant”), represented by Alyssa Flores of Ziff Davis, LLC, New York, USA. Respondent is Animashaun Olalekan (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <everydayhealthgroup.org>, registered with NameCheap, Inc.
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 November 29, 2022; Forum received payment on November 29, 2022.
On November 29, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <everydayhealthgroup.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 30, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 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@everydayhealthgroup.org. Also on November 30, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 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 response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions:
Everyday Health, Inc. is a global, multi-platform health and wellness company. Complainant asserts rights in the EVERYDAY HEALTH marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,892,193, registered December 21, 2010). See Amend. Compl. Ann. B. The <everydayhealthgroup.org> domain name is confusingly similar to Complainant’s EVERYDAY HEALTH marks as it wholly incorporates the famous “Everyday Health Group” trademark with the addition of the generic top level domain (“gTLD”) “.org”.
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <everydayhealthgroup.org> domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use because Respondent is not endorsed by, associated with or authorized by Complainant to use any of its intellectual property.
Respondent registered and uses the <everydayhealthgroup.org> domain name in bad faith. Respondent is diverting Internet users to its infringing website for commercial gain by creating confusion as to the source of its website or its affiliation. Respondent perpetrated a phishing scheme. Respondent failed to respond to a cease and desist letter. Additionally, Respondent had actual knowledge of Complainant’s rights in the EVERYDAY HEALTH marks prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a global, multi-platform health and wellness company.
2. Complainant has established its rights in the EVERYDAY HEALTH mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,892,193, registered December 21, 2010) and other marks that are members of the family of marks known as the EVERYDAY HEALTH GROUP marks.
3. Respondent registered the <everydayhealthgroup.org> domain name on September 21, 2022.
4. There is no evidence to show that Respondent is endorsed by, associated with or authorized by Complainant to use any of its intellectual property or that it has a right or legitimate interest in the disputed domain name.
5. The evidence shows that Respondent registered and has used the disputed domain name in bad faith.
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 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 submits and has shown by evidence that it has rights in the EVERYDAY HEALTH mark (e.g. Reg. No. 3,892,193, registered December 21, 2010) based upon registration of the mark with the USPTO. See Amend. Compl. Ann. B. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant has also established by evidence its rights in other registered marks that are members of the family of marks known as the EVERYDAY HEALTH GROUP marks. Accordingly, the Panel finds that Complainant has rights in the EVERYDAY HEALTH mark and the other EVERYDAY HEALTH GROUP marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EVERYDAY HEALTH mark. Complainant submits the <everydayhealthgroup.org> domain name is confusingly similar to Complainant’s EVERYDAY HEALTH mark because the disputed domain name wholly incorporates the famous EVERYDAY HEALTH trademark with the addition of the gTLD “.org”. The domain name is confusingly similar to the EVERYDAY HEALTH mark because it incorporates the whole of the EVERDAY HEALTH mark and adds the word “group”, which indicates the mark is part of the EVERYDAY HEALTH GROUP family of marks, that the domain name is a copy of EVERYDAY HEALTH GROUP and that it would be seen as such by internet users. Moreover, the addition of the “.org” gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy.”). Therefore, the Panel finds that the <everydayhealthgroup.org> domain name is confusingly similar to Complainant’s marks per 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), 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 EVERYDAY HEALTH mark and to use it in its domain name. In doing so, the domain name incorporates the whole of Complainant’s EVERDAY HEALTH mark and adds the word “group”, which indicates the mark is part of the EVERYDAY HEALTH GROUP family of marks, that the domain name is a copy of EVERYDAY HEALTH GROUP and that it would be seen as such by internet users;
(b) Respondent registered the domain name on September 21, 2022;
(c) There is no evidence to show that Respondent is endorsed by, associated with or authorized by Complainant to use any of its intellectual property;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent is not commonly known by the <everydayhealthgroup.org> domain name. Where there is no response, WHOIS information can substantiate a finding that a respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). 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). The WHOIS information of record names “Animashaun Olalekan” as the registrant of the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent fails to use the <everydayhealthgroup.org> domain name in connection with a bona fide offering of goods and services or for any legitimate or fair use because no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. A lack of authorization to use a complainant’s mark may indicate that a respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). As the Panel agrees with Complainant’s contentions, it finds Respondent failed to use the <everydayhealthgroup.org> domain name in connection with a bona fide offering of goods and services or a legitimate or fair use per 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 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 argues Respondent registered and uses the <everydayhealthgroup.org> domain name in bad faith. A strong likelihood of confusion exists that visitors of the Respondent’s website will believe that there is an association, endorsement or relationship between Complainant and Respondent. Use of a disputed domain name to create a likelihood of confusion as to the sponsorship or affiliation of the resolving website is evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding respondent uses the domain names to point to a site which offers links relating to complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Accordingly, the Panel finds Respondent registered and uses the <everydayhealthgroup.org> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant submits Respondent registered the <everydayhealthgroup.org> domain name in bad faith because Respondent is utilizing the website to impersonate Complainant by reaching out to individuals with fictitious job offers and extorting these individuals for financial profit. Capitalizing on the goodwill of EVERYDAY HEALTH marks to engage in a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant provides screenshot evidence of the Respondent’s job scam. See Amend. Compl. Ann. D. Accordingly, as the Panel agrees, it finds Respondent registered and uses the <everydayhealthgroup.org> domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that Respondent registered the <everydayhealthgroup.org> domain name with actual knowledge of Complainant’s rights in the EVERYDAY HEALTH marks. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant contends Respondent had actual knowledge of Complainant’s rights in the EVERYDAY HEALTH marks as the Complainant is a leading media brand for health and wellness. Complainant further submits it first used the EVERYDAY HEALTH marks in 2006, well before Respondent registered the disputed domain name on September 21, 2022. See Amend. Compl. Ann. C. Therefore, the Panel agrees that Respondent registered the disputed domain name in bad faith per 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 EVERYDAY HEALTH 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 <everydayhealthgroup.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: December 23, 2022
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