Complainant is eClinicalWorks, LLC of Westborough, Massachusetts, United States of America (the “USA”), represented by Bryan Cave, LLP, USA.
Respondent is Contact Privacy, Inc. of Toronto, Ontario, Canada / Privacy Protection of “US, Kaliningrad, USA”. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2014. On July 7, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7 and 8, 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 July 16, 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 July 18, 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 proceedings commenced on July 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2014.
The Center appointed Michael A. Albert as the sole panelist in this matter on August 25, 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. 4. Factual Background
Complainant was founded in 1999 and 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 registered the ECLINICALWORKS mark, U.S. Trademark No. 2729199, on June 24, 2003. Complainant also owns several other marks incorporating the ECLINICALWORKS mark, U.S. Trademarks Nos. 4014335, 4222505, 4313151, and 4384615, all registered between August 23, 2011 and August 13, 2013.
The disputed domain name, , was registered on or about May 15, 2010. 5. Parties’ Contentions A. Complainant
Complainant describes its rights in the ECLINICALWORKS family of registered marks and its extensive use of these marks over the last two decades in business. In connection with its business, Complainant also registered the domain names and .
Confusing Similarity
Complainant argues that Respondent’s domain name incorporates Complainant’s ECLINICALWORKS registered mark. The only differences are the addition of the generic Top-Level Domain (“gTLD”) “.com” and the addition of the word “my”; the addition of a gTLD is irrelevant to the analysis of similarity, as is the addition of a single, generic word such as “my.”
Based on the even closer similarity between Complainant’s subdomain and Respondent’s domain name , Complainant also argues that Respondent’s domain name incorporates a basic typographical error typical of typo-squatting.
Lack of Rights or Legitimate Interests
Complainant notes that Respondent uses the disputed domain name as a parking page redirecting users to various advertising search engines unconnected with Complainant. Respondent’s delay in posting content to the website further indicates its lack of legitimate purpose. Internet search results do not indicate the existence of a third party known by the “myeclinicalworks” name, and Complainant has not authorized Respondent to use the ECLINICALWORKS mark.
This evidence, Complainant argues, is sufficient to make a prima facie showing of no rights or legitimate interests. The burden of production shifts therefore to Respondent to show such rights or interests by “concrete evidence.”
Registration and Use in Bad Faith
Complainant argues that Respondent’s use of the disputed domain name as a parking page with advertisements that redirect users to the content of competitors constitutes typo-squatting, which has been found to be registration and use in bad faith under Policy, paragraph 4(b)(iv). Further, Respondent uses the website to display advertising search engines, some of which direct users to Complainant’s competitors. Respondent’s substantial delay in using the disputed domain name for any legitimate purpose and its use of a privacy registration service further suggest registration in bad faith. B. Respondent
The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established its rights in the ECLINICALWORKS mark and related marks. The disputed domain name incorporates the ECLINICALWORKS mark in its entirety; the only differences are the addition of a gTLD and a minor generic term. Panels have consistently held that neither addition is sufficient to avoid a finding of confusing similarity. See, e.g., TPI Holdings, Inc. v. Carmen Armengol,WIPO Case No. D2009-0361 (finding confusingly similar to AUTOTRADER mark); Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768 (finding confusingly similar to PLAYBOY trademark); Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,WIPO Case No. D2000-0587 (finding et al. confusingly similar to YAHOO marks).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s ECLINICALWORKS mark. B. Rights or Legitimate Interests
Respondent is not affiliated with Complainant, and does not have permission to use the ECLINICALWORKS mark. Nor does Respondent appear to be using the disputed domain in a manner that would generate rights or legitimate interests. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”) notes that use of a domain name to post parking pages does not give rise to any rights or legitimate interests where the value of the page derives from trademark value rather than dictionary or common words or phrases.
Here, particularly given Complainant’s showing that no third parties are known by the term “eclinicalworks” and that Respondent’s website includes trademark-related advertisements, a prima facie showing of lack of rights or legitimate interests exists. Respondent has not replied to this showing with any evidence to the contrary.
The Panel therefore finds that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Several factors in this case point towards registration and use in bad faith.
First, the creation of a parking page that directs users to Complainant’s competitors constitutes bad faith use. Here, there is no evidence of how such links were selected; however, in the absence of any evidence to the contrary, it is reasonable to infer that “[t]he Respondent must have known that by using a parking service, some sponsored links would be generated,” and that they would probably relate to the trademark value of the term. Owens Corning v. NA,WIPO Case No. D2007-1143.
In addition, Respondent’s registration and use of the disputed domain name appear to be an archetypical case of typo-squatting. Typo-squatting, the registration of a domain name that differs from a rights-holder’s mark or website URL only by a basic typographical error, has often been held to constitute evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy. See, e.g., Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc.,supra (“Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant’s, domain name. […] This constitutes bad faith registration and use as defined by ¶4(b)(iv) of the Policy.”). Here, the fact that the disputed domain name differs from Complainant’s website’s URL only by the omission of a single period supports an inference of typo-squatting.
The Panel agrees with Complainant’s arguments, and finds that the disputed domain name was registered and is being used 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 the Complainant.
Michael A. Albert
Sole Panelist
Date: August 28, 2014
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