Complainant is eClinicalWorks, LLC of Westborough, Massachusetts, United States of America (“US”), represented by Bryan Cave, LLP, US.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, US / Domain Vault LLC. of Dallas, Texas, US, represented by Gary N. Schepps, US. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2014. On June 19, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 19, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 24, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 24, 2014.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceeding commenced on June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 16, 2014.
On July 21, 2014 Respondent contacted the Center by email objecting to the form of delivery of the Written Notice of the Complaint by post. The Center responded on July 22, 2014 informing Respondent that permission to submit any filing past the specified due date would be granted at the sole discretion of the Panel.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 22, 2014. 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.
The Panel reviewed the record with regard to the Center’s communication of the Written Notice of the Complaint to Respondent in accordance with paragraph 2(a)(i) of the Rules and found that the Center had properly discharged its responsibility. On August 5, 2014 the Panel used its discretion to grant Respondent the opportunity to file a formal response with a deadline of August 10, 2014.
On August 10, 2014 Respondent filed its Response. 4. Factual Background
Complainant is the owner of several registered trademarks (“Complainant’s marks”) including:
ECLINICALWORKS, US trademark registration number 2729199, registration date June 24, 2003
ECLINICALWORKS P2P, US trademark registration number 4014335, registration date August 23, 2011
ECLINICALWORKS ONE UNIFIED PRODUCT COMPANY EMR RX PRACTICE MANAGEMENT PATIENT PORTAL WWW MOBILE MESSAGING INTEROPERABILITY, US trademark registration number 4222505, registration date October 9, 2012
ECLINICALWORKS NUMBUS, US trademark registration number 4313151, registration date April 2, 2013
ECLINICALWORKS SCRIBE, US trademark registration number 4384615, registration date August 13, 2013
The Disputed Domain Name was created in February 2006. It is unknown when Respondent became the registrant. The Disputed Domain Name is currently involved in two pending litigations in the US. The Response alleges a US Federal Receiver registered the Disputed Domain Name as ordered by the US District Court and has parked the Disputed Domain Name. 5. Parties’ Contentions A. Complainant
Complainant is a Massachusetts limited liability company founded in 1999 which develops and licenses software, including electronic health record software, used by healthcare professionals to document patient medical information and to manage doctors’ medical practices. Complainant has a customer base of more than 85,000 physicians and 545,000 total users across the US with revenue in 2012 exceeding USD 250 million.
Complainant has invested a substantial amount of resources in the promotion, marketing, and advertising of its products and services and in building customer recognition and goodwill. Complainant has used its website located at to maintain an active Internet presence and promote the company. Complainant registered its website on October 24, 2001.
Complainant contends that the Disputed Domain Name is identical or confusingly similar to Complainant’s marks and that the omission of an “s” does not serve to sufficiently differentiate the Disputed Domain Name. Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because the website’s content includes links to companies in direct competition with Complainant and has not been used or associated with any legitimate business enterprise nor is it connected with or licensed by Complainant. Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent failed to use the Disputed Domain Name for four years after it was registered and is therefore cybersquatting. B. Respondent
Respondent contends that the word “eClinical” is a generic term and therefore cannot be protected by trademark. Respondent repeatedly states that the Disputed Domain Name is currently the subject of litigation which has prevented Respondent from making legitimate use of the Disputed Domain Name, but that it fully intends to make legitimate use of the Disputed Domain Name for the legitimate business purpose of providing a “home page for the eClinical work industry” and provide information with respect to job opportunities and tools of the trade. Respondent contends that the current webpage showing advertisement links is parked by the US Federal Receiver acting on the orders of the US District Court, and any links to competitors of Complainant which appear at the Disputed Domain Name are the result of Complainant “seeding” the Disputed Domain Name and that this proceeding is Complainant’s attempt at reverse domain name hijacking. 6. Discussion and Findings A. Identical or Confusingly Similar
The Disputed Domain Name is identical or confusingly similar to Complainant’s marks. Complainant has numerous registered trademarks using the term “eclinicalworks.” The mere omission of the final “s” from the end of the Disputed Domain Name is not sufficient to differentiate it from Complainant’s marks. See Associazione Radio Maria v. Ho Nin,WIPO Case No. D2010-0607. B. Rights or Legitimate Interests
Complainant contends that the Disputed Domain Name is not being used for any legitimate business and that links which appear at the site include links for Complainant’s competitors. Complainant includes an exhibit which appears to be a printout of the Disputed Domain Name showing links to competitors of Complainant. Complainant also contends that Respondent is not known by the Disputed Domain Name. Respondent states that any such links are the result of Complainant “seeding” the site and fraudulently presenting such evidence to this Panel. Respondent includes an exhibit, which appears to be two screenshots of the Disputed Domain Name one showing an advertisement link for “WIPO Cases”.
Despite Respondent’s creative use of exhibits, the Disputed Domain Name can be used to find Complainant’s competitors. See Weyerhaeuser Company v. D. Skinner,WIPO Case No. D2007-1545. It has no other use and links to no business owned by Respondent, and Respondent is not known by the Disputed Domain Name. The Panel finds that therefore Respondent has no rights or legitimate interests in the Disputed Domain Name. See Finter Bank Zurich v. Isaac Allotey-Pappoe,WIPO Case No. D2006-0243. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s use of the Disputed Domain Name amounts to typo-squatting which redirects users to Complainant’s competitors. Respondent contends, as reviewed above, that Complainant has seeded the Disputed Domain Name to create a false impression.
While the Disputed Domain Name does not automatically redirect a user to Complainant’s competitors, it does provide links to such competitors through its advertisement search function. In addition, despite Respondent’s statements that the Disputed Domain Name is currently the subject of litigation and will be used in the future for legitimate purposes, the purposes described depend on Respondent’s contention that “eClinical Work” is a generic term and it “can never become a trademark.” Respondent blithely ignores the fact that Complainant has a trademark for ECLINICALWORKS and several others incorporating ECLINICALWORKS. In the face of registered trademarks, Respondent has a heavy burden to prove that the term is generic by more than mere allegations. Respondent’s citation to a Wikipedia entry in this regard is unconvincing. Respondent has not met that burden.
For the foregoing reasons, this Panel finds that Respondent’s registration and use of the Disputed Domain Name are in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: August 21, 2014
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