DECISION

 

Highmark Inc. v. Travis Crawford

Claim Number: FA2304002040360

 

PARTIES

Complainant is Highmark Inc. (“Complainant”), represented by Michael D. Lazzara of Leech Tishman Fuscaldo & Lampl LLC, Pennsylvania, USA.  Respondent is Travis Crawford (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <highmarkhealths.org>, (‘the Domain Name’) registered with NameCheap, Inc..

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 17, 2023; Forum received payment on April 17, 2023.

 

On April 17, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <highmarkhealths.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 April 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2023 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@highmarkhealths.org.  Also on April 18, 2023, 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 May 12, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant’s contentions can be summarized as follows:

 

The Complainant is the owner of the HIGHMARK mark registered in the USA for  health related services and used since 1997. It operates on the Internet using, inter alia, highmarkhealth.org and enjoys common law rights in the mark HIGHMARK HEALTH.

 

The Domain Name registered in 2023 is confusingly similar to the Complainant’s HIGHMARK mark adding only the generic word ‘health’, an extra ‘s’ and the gTLD .org which does not prevent such confusing similarity. It is also confusingly similar to the Complainant’s common law mark HIGHMARK HEALTH.

 

Respondent does not have rights or legitimate interests in the Domain Name, not being commonly known by the Domain Name or authorized by the Complainant. The Domain Name is an example of typosquatting and has been used for an e mail phishing scheme using the name of one of the Complainant’s officers. This cannot be a bona fide offering of goods or services or a noncommercial legitimate fair use.

 

Typosquatting and phishing are bad faith per se and designed to confused Internet users and disrupt the Complainant’s business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of, inter alia, the HIGHMARK mark registered in the USA for  health related services and used since 1997. It operates on the Internet using, inter alia, highmarkhealth.org.

 

The Domain Name registered in 2023 does not point to an active web site, but has been used for an e mail phishing scheme.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

The Domain Name consists of the Complainant’s HIGHMARK mark (registered, inter alia in the USA for health related services since 1997), the generic word ‘health’, the letter ‘s’ and the gTLD ‘.com’. Since the Complainant has a pertinent registered mark it is unnecessary to consider its common law rights.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). Accordingly the Panel agrees that the addition of the generic term ‘health’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.

 

Panels have found that adding one letter does not distinguish a domain name from that mark. See Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015)(finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter ‘c’). Accordingly adding the letter ‘s’ does not prevent confusing similarity between the Complainant’s mark and the Domain Name.

 

The gTLD ‘.org’ does not serve to distinguish the Domain Name from the Complainant’s mark, which is the distinctive component of the Domain Name. See Red Hat Inc v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which the Complainant has rights.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its HIGHMARK mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The Domain Name has been used in a fraudulent phishing attempt using the name of one of the Complainant’s officers.  This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. (See DaVita Inc. v. Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’.)

 

The Domain Name also appears to be a typosquatting registration, differing by only one letter from the Complainant’s url highmarkhealth.org. Typosquatting is an indication of a lack of rights or legitimate interests. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as set out herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Impersonating a complainant by use of a sign confusingly similar to the complainant’s mark in a fraudulent phishing attempt is disruptive and evinces bad faith registration and use. See Microsoft Corporation v. Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4 2016) (finding that respondent’s use of the disputed domain name to send fraudulent e mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii).)

 

The use of the name of one of the Complainant’s officers in the Respondent’s fraudulent phishing e mail scheme shows that the Respondent is aware of the Complainant, its rights, business and services.

 

The Domain Name seeks to take advantage of the situation where Internet users may make a typographical error. Typosquatting itself is evidence of relevant bad faith registration and use and disruption of the Complainant’s business. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”).

 

As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Policy 4 (b)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <highmarkhealths.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Dawn Osborne, Panelist

Dated:  May 15, 2023

 

 

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