Complainant is American Society of Hematology of Washington D.C., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Maneet Tikku of Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2018. On May 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 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 the Respondent of the Complaint, and the proceedings commenced on June 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 26, 2018.
The Center appointed Leon Trakman as the sole panelist in this matter on July 4, 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 is an internationally recognized professional society of clinicians and scientists. It is globally engaged in the treatment of blood diseases. An integral part of its mission is to sponsor annual meetings to further the understanding, diagnosis, treatment and prevention of disorders affecting the blood, bone marrow, and the immunologic, hemostatic and vascular systems.
Complainant adduces evidence that it registered and has used the trademark ASH since 1958; and that it holds these United States federal trademark registrations: U.S. Reg. No. 2084324 – AMERICAN SOCIETY OF HEMATOLOGY & design, registered July 29, 1997, and U.S. Reg. No. 3253642 – ASH, registered June 19, 2007 (the “ASH Marks”).
Complainant establishes further that it has used its ASH Marks internationally since that registration; that it uses those marks on its website to provide research, clinical care, education, training, and advocacy in hematology; and that one such purpose is to promote and organize its ASH Annual Meetings.
Respondent registered the Domain Name on November 24, 2017. It hosts a website under the Domain Name that, inter alia, collects names, emails, telephone numbers, countries and special requirements information for registration for the 2018 ASH Annual Meeting and related housing.
On May 11, 2018, Complainant wrote to Domains by Proxy requesting the WhoIs information on the use of the Domain Name. On May 14, 2018 Complainant sent a cease and desist letter to Respondent through the Domains by Proxy email address. On May 14, 2018, Domains by Proxy indicated that the user of the Domain Name no longer subscribed to its privacy service. On May 14, 2018, Complainant sent a take-down request letter to Hostinger International Limited regarding Respondent’s use of the Domain Name to host its website. On May 14, 2018, Hostinger International Limited confirmed that Respondent’s account had been terminated and that the website had been taken down. On or before May 19, 2018, Respondent contracted with a new hosting company, Rocknet Internet Services Pvt, and resumed use of the Domain Name to host the new website in issue. 5. Parties’ Contentions A. Complainant
Complainant alleges that its trademark registration is incontestable under 15 U.S.C. section 1065. As such, its certificates of registration constitute “conclusive evidence of the validity of the registered mark and of the registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. section 1115(b); Ralph Maltby Enterprises, Inc. v. Women With Balls (W.W.B. Accessories),WIPO Case No. D2004-0917 (finding that “[u]nder U.S. trademark law (15 U.S.C. Section 1115), these incontestable registrations provide conclusive evidence of Complainant’s ownership of the marks in the U.S. and of its exclusive right to use the marks in connection with the goods and services identified in the registrations”). Complainant adds that, regardless of Respondent’s knowledge or intent in selecting the Domain Name, Complainant has well-known and incontestable trademark rights in the ASH Marks. See Koninklijke KPN N.V. v. Telepathy Inc.,WIPO Case No. D2001- 0217 (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore, it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Complainant alleges the Domain Name is confusingly similar to the ASH Marks.
Complainant alleges further that Respondent cannot assert that it has been using the Domain Name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services, or that Respondent has made demonstrable preparations to do so, in accordance with paragraph 4(c)(i) of the Policy. Complainant asserts that Respondent’s website displayed at its Domain Name was deliberately designed to give the false impression that Respondent is affiliated to or sponsored by the Complainant, which is not the case. Complainant argues further that prior panels deciding under the UDRP have held that such use of a domain name cannot be a “bona fide offering of goods or services”. See Microsoft Corporation v. M aka Tarek Ahmed,WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services”). In addition, Complainant alleges Respondent is not commonly known by the Domain Name, and Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant alleges further that Respondent registered and used the Domain Name to obtain personal data from confused Internet users in bad faith. Complainant alleges that the website at the Domain Name used Complainant’s ASH Marks without authorization and was designed create confusion regarding the source, sponsorship, affiliation, or endorsement of the website by Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the Domain Name, , is confusingly similar to Complainant’s ASH Marks. Respondent’s Domain Name incorporates Complainant’s distinctive ASH Marks, adding only the term “meeting” which is directly related to Complainant’s annual meetings. It is well-recognized by UDRP panels that adding a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid the disputed domain name being confusing similar to the Complainant’s mark. See eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. The term “meeting” is a material component of Complainant’s business. Respondent’s use of a confusing similar domain name is likely both to mislead Internet users into believing that the Respondent is identified with, part of, or employed by Complainant. That is clearly not the case here. B. Rights or Legitimate Interests
The Panel holds that Respondent has no rights or legitimate interests in the Domain Name. Complainant did not employ or otherwise authorize Respondent to use the ASH Marks. Respondent is not a licensee of the ASH Marks. Respondent is not commonly known by the Domain Name sufficient to support a claim of having rights and legitimate interest in the Domain Name. Nor does Respondent have any interest in using the Domain Name to provide access to its website, other than to attract Internet user to its site on the mistaken assumption that Respondent, for all intents and purposes, is Complainant.
Accordingly, the Panel holds that there is prima facie evidence under paragraph 4(a)(ii) of the Policy that Respondent does not have rights or legitimate interests in the Domain Name under section 4(c) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141. Nor has Respondent adduced any evidence to indicate that it has any such rights or legitimate interests, under paragraph 4(c) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the Domain Name in bad faith. It is evident that Respondent is not making a legitimate noncommercial or fair use of the Domain Name under paragraph 4(c)(iii) of the Policy. The Domain Name links to Respondent’s website which uses the ASH Marks in multiple misleading and deceptive ways. The only reasonable inference to draw is that Respondent is doing so in order to confuse Internet users into believing that its website is affiliated with or authorized by Complainant. That is clearly not the case. Indeed, it is clear that Respondent is using the Domain Name and the associated website for providing misleading and deceptive data entry forms to obtain personal data from Internet users who assume that they are providing such information to Complainant. Such a use constitutes bad faith, not only in relation to Internet users as members of the public, but also poses reputational damage to Complainant whom Internet users may well assume is the source of such misleading and deceptive conduct. See Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, WIPO Case No. D2001-0879 (“it is well-settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy”); American Society of Hematology v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP / Andy Abbott, IT Company,WIPO Case No. D2017-1307 (finding no legitimate use of a similar housing scheme website set up at the domain name, ).
The fact that Respondent used a privacy service to shield its identity from the WhoIs database is further evidence of its bad faith use of the Domain Name in these circumstances. As prior panels have held, such privacy shields may have “nefarious ends, such as obstructing proceedings under the UDRP, [and] hiding evidence of bad faith cybersquatting patterns…” Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753. See also The Saul Zaentz Company d/b/a Tolkein Enterprises v. Eurobox Ltd. / “The Saul Zaentz Company”,WIPO Case No. D2008-0156 (“The attempt by the Respondent to hide its identity… support[s] a finding of bad faith”). Paragraph 4(b)(iv) of the Policy explicitly provides that a domain name user may be in bad faith if, “by using the domain name, you [the user] have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. It is reasonable to conclude that the Respondent’s website is directed at attracting potential ASH Annual Meeting attendees to Respondent’s website. The website was clearly so designed, including, inter alia, by (i) prominently using in multiple locations on the website the ASH Marks; (ii) including “About,” “Registration,” “Group Housing,” and “Programme” sections of the Website in a manner that a reasonable Internet user would assume was either drafted by or approved by Complainant; (iii) not including any information about Respondent’s true identity; (iv) seeking to register attendees to the 60th Annual Meeting, when Respondent has no such responsibility or authorization; and (v) seeking to collect personal contact information from potential attendees by offering to provide conference registration, accommodation and transportation services for the ASH annual meeting.
The fact that Respondent’s website contains a purported disclaimer does not mean that Respondent’s use of the Domain Name constitutes fair use. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.7 states, “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused.” The Panel holds that Respondent has evinced bad faith through the use of the aforementioned disclaimer.
Accordingly, the Panel determines that (1) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, contrary to Policy, paragraph 4(a)(i) and Rules, paragraphs 3(b)(viii), (b)(ix)(1); (2) Respondent has no rights or legitimate interests in respect of the Domain Name, contrary to Policy, paragraph 4(a)(ii) and Rules, paragraph 3(b)(ix)(2), and (3) the Domain Name was registered and is being used in bad faith, contrary to Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3). 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.
Leon Trakman
Sole Panelist
Date: July 16, 2018
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