The Complainant is American Society of Hematology of Washington D.C., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Australia / Andy Abbott, IT Company of Noida, India. 2. The Domain Name and Registrar
The disputed domain name is registered with ZNet Technologies Pvt Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2017, 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 the Complainant on July 17, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 17, 2017.
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”).
On July 18, 2017, the Center received an informal email communication from the Respondent.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2017.
On August 12, the Center received an email communication from the Respondent.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on August 11, 2017. 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
The Complainant owns the trademarks AMERICAN SOCIETY OF HEMATOLOGY (design), registered in the United States under number 2084324, and the trademark ASH, registered in the United States under number 3253642. The Complainant’s trademarks have been registered on June 29, 1997 and June 19, 2007, respectively.
The disputed domain name was registered on June 6, 2017, and currently resolves to a website with an error page. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainants trademarks as it incorporates the Complainant’s ASH trademark with the word “hematology”, which is the subject matter of the Complainant’s organization.
The Respondent has no right or legitimate interest in the disputed domain name. The Complainant has not authorized the Respondent to use its ASH trademark or the disputed domain name. The Respondent is also not commonly known by the disputed domain name and it is not making legitimate noncommercial or fair use of the disputed domain name.
The Complainant’s trademarks are well-known throughout the world. Considering the combination of the terms ASH and HEMATOLOGY, it is inconceivable that the Respondent would not have had knowledge of the Complainant’s trademarks when registering the disputed domain name.
The disputed domain name resolves to a website purporting to be the annual meeting registration site of the Complainant. Hence the Respondent is creating a likelihood of confusion with the Complainant in order to obtain data from Internet users attempting to register for the Complainant’s annual meeting. B. Respondent
The Respondent states that it is no longer using the disputed domain name and has released it and that there is no website or content published on the disputed domain name. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name incorporates the Complainant’s trademark ASH in its entirety with the word “hematology”, which, according to Wikipedia, is the generic term of the branch of medicine relating to the diseases of blood.
In accordance with section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), noting that the disputed domain name consists of the Complainant’s trademark along with a descriptive word, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ASH and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview 3.0.
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Respondent has not contested the Complainant’s contentions.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
1. “(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
2. (ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
3. (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or competitor; or
4. (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”
The Complainant submits that its trademarks are well-known all over the world. There is not much evidence to support this contention, but the Complainant has submitted that it has been using the trademarks for over 50 years and that it has over 17,000 members from almost 100 countries. The Complainant’s 2017 annual meeting is expected to attract more than 25,000 delegates and in 2016, its 14 separate meetings throughout the world attracted more than 30,000 delegates.
This information has not been disputed by the Respondent. Accordingly, the Panel considers that the Complainant’s trademarks are familiar to a large part of the relevant public, which consists of persons who professionally or otherwise relate to the field of hematology.
It is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademarks when registering the disputed domain name.
This is supported by the fact that the disputed domain name previously resolved to a website which purported to be the registration site of the Complainant’s annual meeting.
The Respondent’s website included the following text:
“ASH Annual Meeting and Exposition 2017 will be attended by Hematology professionals from around the world who will gather in Atlanta of Georgia, USA to share, discuss and learn latest information through sessions with thousands of scientific abstracts uncovering every aspect of Hematology. ASH 2017, the 59th Annual Meeting and Exposition of American Society of Hematology, is scheduled to be held from 9th to December 12, 2017 and will focus on the latest advancements, research and improvement in techniques about Hematology and related fields.”
The Respondent has therefore used the disputed domain name in order to create likelihood of confusion with the Complainant’s trademarks in order to deceive potential registrants to submit their personal data, such as name, email address, telephone number and special requirements. Such data may have already been or later will be sold, i.e. used for commercial gain.
The Respondent’s website currently resolves to a website with an error page. Such “passive holding” of the disputed domain name does not prevent a finding of bad faith, particularly in light of all relevant circumstances, including evidence of the Respondent’s prior use of the disputed domain name, which demonstrates targeting of the Complainant’s ASH marks by the Respondent. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and section 3.3 of the WIPO Overview 3.0.
Based on the above, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy has been fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: August 25, 2017
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