WIPO Domain Name Decision D2018-1533 for benefitfocusbenefitsplace.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Benefitfocus, Inc. v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot Case No. D2018-1533 1. The Parties
Complainant is Benefitfocus, Inc. of Charleston, South Carolina, United States of America ("United States"), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot of San Mateo, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 3, 2018.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 14, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant states that it "provides a leading cloud-based benefits management platform for consumers, employers, insurance carriers, and brokers"; that it "serves two separate but related market segments: the employer market (employers offering benefits to their employees) and the insurance carriers market" that "[a]s of December 31, 2017, [it] served 915 large employer customers (companies with other 1,000 employees), an increase from 141 in 2010, and 54 carrier customers, an increase from 29 in 2010"; that it "supports over 100 health and voluntary benefits clients and has established over 1,500 data exchanges with leading insurance, finance, HRIS and payroll"; and that it has "more than 20 million members [who] manage all types of benefits through the services offered by Complainant".
Complainant states, and provides evidence to support, that it owns multiple trademark registrations for marks that consist of or contain the mark BENEFITFOCUS, including United States Reg. No. 2,496,059 for BENEFITFOCUS for use in connection with "[p]roviding on-line human resource management services for others via a global computer network accessible by personal computer or computer Kiosk Station" (registered October 9, 2001). These trademarks are referred to herein as the "BENEFITFOCUS Trademark." In addition, Complainant states, and provides evidence to support, that it filed an intent-to-use application on April 2, 2018, for the mark BENEFITFOCUS BENEFITSPLACE, United States Serial No. 87-859,161. Further, Complainant states, and provides evidence to support, that it is the registrant of the domain names (created April 6, 2000) and (created February 26, 2015).
The Disputed Domain Name was created on April 5, 2018, and is being used in connection with a website that offers it for sale for USD 950.
Complainant provided a copy of a demand letter that it sent to Respondent on June 1, 2018. Complainant states that it never received a response to this letter. 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the BENEFITFOCUS Trademark because, "when directly compared… there is no question that the Domain Name is confusingly similar to the BENEFITFOCUS trademark and identical to the BENEFITFOCUS BENEFITSPLACE trademark".
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,"Complainant has not authorized Respondent to use the BENEFITFOCUS Marks"; "Respondent is not a licensee of the BENEFITFOCUS Marks"; "Respondent is not commonly known by the name BENEFITFOCUS or BENEFITFOCUS BENEFITSPLACE"; simply advertising the Disputed Domain Name for sale "cannot provide Respondent with any rights or legitimate interests in the Domain Name for purpose of the Policy"; "Respondent's website soliciting offers to purchase the Domain Name… intentionally trades on the fame and reputation of a complainant's trademark should not be regarded as bona fide use within the meaning of paragraph 4(c)(i) of the Policy"; and, by registering the Disputed Domain Name three days after Complainant filed its intent-to-use application for BENEFITFOCUS BENEFITS