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 Pawan Tharwani of Gurgaon, India / Pawan Tharwani of Ahmedabad, India. 2. The Domain Name and Registrar
The disputed domain names, and , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
A Complaint concerning the disputed domain name was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2018. On July 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 July 23, 2018. On July 24, 2018, the Center received an email communication from the Respondent. On July 31, 2018, the Center sent an email communication inviting the Parties to explore a settlement agreement. No response was received to the Center’s email communication. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018.
On July 27, 2018, the Complainant submitted a request to add the disputed domain name to the proceedings and provided an Amended Complainant.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 23, 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.
On the direction of the Panel, on September 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant but providing contact details which differed from those in respect of the disputed domain name .
In accordance with a Procedural Order issued by the Panel on September 17, 2018, the Center formally renotified the Respondent of the Complaint in accordance with the contact details provided for . The due date for response was October 9, 2018.
On September 21, 2018, the Center received an email communication from the Respondent. On September 25, 2018, the Center sent an email communication inviting the Parties to explore a settlement agreement. On September 25, 2018, the Complainant indicated that it did not wish to pursue settlement discussions and wished to proceed to a Panel Decision. 4. Addition of Second Domain Name
In this case, the Complainant has sought to add a second domain name to the proceedings after the original Complaint had been notified to the Respondent. In general, such additions are discouraged as they will result in a delay in the existing proceedings and because it is open to the Complainant to file an additional complaint in respect of any additional domain name1 . However, a panel may accept an application for the addition of a domain name where there is evidence of the Respondent seeking to game or frustrate the proceedings and where it would be fair and equitable to do so. In this case, the Panel accepts that the Respondent registered the second disputed domain name after the original Complaint had been filed and finds this to be prima facie evidence of an attempt to game or frustrate the proceedings. Further to the Procedural Order referred to above, the Respondent was notified of the proposed Amended Complaint including the disputed domain name , in accordance with the contact details provided for that registration, and was afforded a full opportunity to file a Response. No objection or other relevant submission having been received from the Respondent, the Panel determines that the Respondent in respect of both of the disputed domain names is the same and that the application to add the second disputed domain name and the Complainant’s Amended Complaint should be accepted. 5. Factual Background
The Complainant is a professional society serving clinicians and scientists working to conquer blood diseases. Its purpose is to further the understanding of such diseases by promoting research, clinical care, education, training and advocacy in the field of hematology.
For the past 60 years, the Complainant has convened an annual meeting, which it submits is the leading annual education and scientific event in the field of hematology. Its 60th annual meeting is to be held in San Diego, California in December 2018.
The Complainant is the owner of United States trademark number 3253642 for the word mark ASH registered on June 19, 2007, for newsletters in the field of hematology in Class16 and association services namely, promoting the interests of hematologists, in Class 35.
The disputed domain name was registered on May 30, 2018. It does not appear to have resolved to any active website. However, the Complainant provides evidence that this disputed domain name has been used for the purposes of an email server configured at “@” which has been used to correspond with prospective attendees for the Complainant’s 60th annual meeting referred to above.
The disputed domain name was registered on July 16, 2018. According to evidence submitted by the Complainant, this disputed domain name resolved for a limited time to a website which referred to the Complainant’s 60th annual meeting and offered accommodation for that event. The Complainant provides evidence that this web content was removed by the Registrar at its request on July 23, 2018. 6. Parties’ Contentions A. Complainant
The Complainant states that it has been using both a trademark comprising its full name and the trademark ASH since 1958. It states that it has over 17,000 members from nearly 100 countries and that it is expecting more than 25,000 delegates to attend its 60th annual meeting in San Diego. The Complainant exhibits evidence of its history, its use of the ASH mark and promotional references to the “ASH Annual Meeting”. The Complainant submits that, as a result of the above and other matters, its trademark ASH has gained significant goodwill and reputation over a period of decades and on an international basis.
The Complainant submits that the Respondent registered and has used the disputed domain names specifically to target potential delegates for its 60th annual meeting by way of a “phishing” scam. In connection with the disputed domain name , it exhibits emails sent from “[…]@” purporting to offer registration and accommodation facilities for the 60th annual meeting. The emails are signed “Housing Team, Central Reservations Office (CRO), ASH 2018, San Diego, CA, USA.” The Complainant states the emails included no disclaimer to the effect that the Respondent was not affiliated with the Complainant. In connection with the disputed domain name , the Complainant exhibits pages from the Respondent’s website mentioned above and states that the website provided the same email address as above,“[…]@”, as its contact email address.
The Complainant submits that the disputed domain names are identical or confusingly similar to a trademark in which it has rights. It states that both the disputed domain names comprise its trademark ASH together with the descriptive term “meeting” which is insufficient to avoid confusing similarity, particularly in circumstances where that term is a core component of the Complainant’s own activities.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It states that it has never authorized the Respondent to use its trademark ASH, that the Respondent has not commonly been known by the disputed domain names and that the Respondent is making neither bona fide commercial use nor legitimate noncommercial or fair use of the disputed domain names. Instead, the Complainant submits that the Respondent has used both of the disputed domain names to give a false impression of an affiliation with the Complainant for the purpose of pursuing a “phishing” scam.
The Complainant submits that the disputed domain names were registered and have been used in bad faith. It states that because the Respondent has used the disputed domain names for the purpose of emails and a website which make specific reference to the Complainant’s 60th annual meeting, it is inconceivable that the Respondent could claim to have been unaware of the Complainant’s trademark at the date of registration of the disputed domain names. The Complainant contends that it is clear from the Respondent’s signature block used on its emails that it intended to deceive Internet users into believing it was affiliated with the Complainant and its meeting for the purpose of obtaining personal details from those Internet users. Specifically, the Complainant alleges that by using the disputed domain names, the Respondent is seeking to attract Internet users to its website or online location by creating a likelihood of confusion with the Complainant’s ASH trademark.
The Complainant requests the transfer of both of the disputed domain names. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions. In its email to the Center dated July 24, 2018 the Respondent stated that it was willing to remove or delete the disputed domain name but had been unable to do so in its own account with the Registrar. It gave the Center permission to delete or deactivate the disputed domain name. The Respondent made similar comments in its email to the Center dated September 21, 2018 following renotification in respect of the disputed domain name . 7. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
It is for the Complainant to establish all three of the above elements are present, even in the absence of any substantive response from the Respondent. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in respect of the word mark ASH. That mark is clearly recognizable within each of the disputed domain names and and the Panel accepts that the addition of the dictionary word “meeting” is insufficient to distinguish either of the disputed domain names from the Complainant’s trademark. The generic Top‑Level Domains (“gTLDs”) “.org.” and “.online” are to be disregarded for the purpose of comparison. In these circumstances, the Complainant has satisfied the threshold test, which is necessary to give it standing to bring the proceedings, that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of either of the disputed domain names. However, the Respondent has filed no Response in this proceeding, has provided no answer to the Complainant’s allegations and has made no submissions as to any rights or legitimate interests that it may claim to have. Furthermore, there is nothing in the evidence available to the Panel upon which to conclude that the Respondent has any rights or legitimate interests in respect of the disputed domain names: on the contrary, the evidence suggests that the Respondent has used each of the disputed domain names falsely to suggest an affiliation with the Complainant. The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. C. Registered and Used in Bad Faith
Based on the evidence which has been submitted by the Complainant, it appears to the Panel that the Respondent has used the disputed domain name for the purpose of an email address from which it contacted prospective delegates to the Complainant’s 60th annual meeting offering them registration and accommodation services. The Panel accepts the Complainant’s submission that those emails were misleading in nature as they gave the impression that they were from the Complainant or from an organization affiliated with, or officially authorized in connection with, the Complainant’s meeting.
The Panel makes similar findings in respect of the disputed domain name , which the Respondent has used for the purposes of a website offering accommodation services for the Complainant’s meeting and providing the email address “@”. While the Panel notes that the Respondent’s website included a disclaimer at the foot of the final page, the Panel does not find this to be sufficient to displace the overall impression given by the website that it was authorized by or affiliated with the Complainant. In particular, the website included such text as “About ASH 2018”, “Conference Summary”, “Conference Schedule” and “Welcome to the ASH website”.
While it is not clear to the Panel whether the Respondent was operating a “phishing” scam as the Complainant alleges, or merely soliciting business on the back of the Complainant’s trademark and meeting, the Complainant has clearly demonstrated that the Respondent has used both disputed domain names in a misleading manner that has falsely represented an official affiliation with the Complainant and its 60th annual meeting. In those circumstances, the Panel finds that both of the disputed domain names have been registered and are being used in bad faith. 8. 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 names and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: October 11, 2018
1 See section 4.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Full & Egal Universal Law Academy