The Complainant is eClinicalWorks, LLC, United States of America, (“United States”), represented by Reed Smith LLP, United States.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2019. On May 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 19, 2019, 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 May 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on June 19, 2019. 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 date of the Domain Name registration was confirmed by the Registrar to be April 12, 2019.
The Complainant is a provider of unified and integrated healthcare IT solutions for medical professionals. The Complainant is the owner of a number of trademark registrations, including inter alia, the following trademark registrations: United States TM Reg. No. 2,729,199 for ECLINICALWORKS, registered on June 24, 2003, in Class 9, United States TM Reg. No. 5,067,022 for ECLINICALWORKS, registered on October 25, 2016 in Classes 9, 35, 38, 42 and 44, United States TM Reg. No. 4,014,335 for ECLINICALWORKS P2P, registered on August 23, 2011, in Class 9, United States TM Reg. No. 4,384,615 for ECLINICALWORKS SCRIBE, registered on August 13, 2013, in Class 9, and United States TM Reg. No. 4,313,151 for ECLINICALWORKS NIMBUS, registered on April 2, 2013, in Classes 38, 42 and 44, (hereinafter referred to collectively as the “ECW Marks”).
The Panel also conducted an independent search to determine that the Domain Name is currently active, and appears to be a “parking page” with links to advertisements relating to electronic medical records and other medical health records, which is in the direct field of the Complainant. 5. Parties’ Contentions A. Complainant
This Complaint is based on the Complainant’s ECW Marks, which the Complainant adopted and has been using since at least as early as September 1, 2001—long before the Respondent’s registration of the Domain Name in 2019.
The Complaint alleges that since 1999, the Complainant has been a premier provider of unified and integrated healthcare IT solutions for medical professionals of every size and type, including, ambulatory practices, urgent care facilities, health centers, and more than 50 other specialties. Today, the Complainant’s cloud-based software solutions are running in 80,000+ facilities, and are used by more than 130,000 physicians and nurse practitioners, and more than 850,000 medical professionals, for practice management, population health, patient engagement and revenue cycle management. In 2018 alone, the Complainant’s revenues exceeded USD 500 million. The Complainant has also received numerous awards over the years (list omitted) and a January 2018 reaction data poll of nearly 900 physicians who use electronic health records (“EHR") daily rated the Complainant’s EHR software highest for overall satisfaction.
The Complainant contends that the company and its ECW Marks are famous and enjoy a wide reaching reputation in connection with high-quality healthcare IT software solutions and services. The Complainant has expended significant time, money and resources to promote its products and services using the ECW Marks on Internet websites, social media, podcasts, mobile applications, and other media outlets. As a result, the Complainant has developed significant goodwill in the ECW Marks and has grown the ECW Marks into one of the most recognized and well-known brands in the healthcare IT space.
By registering the Domain Name as a proxy registration that has a landing page advertising goods directly competitive with the Complainant’s goods and services, the Respondent is taking opportunistic benefit of association with the Complainant’s trademarks and reputation.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark ECLINICALWORKS, in respect of a wide range of medical records and related goods and services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the letter “s” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for ECLINICALWORKS.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the extra letter “s” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and if anything, appears as a “typo”, and together with the website enhances it to suggest the offer of the Complainant’s products online/ goods and services (which also informs the third element below). See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” See also section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, and given that the goods being offered on the “parking page” are in direct competition with the Complainant’s goods and services, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark ECLINICALWORKS and uses it for the purpose of misleading and diverting Internet traffic, and for the purpose of taking commercial advantage of the Complainant’s brands in opportunistic bad faith.
The Panel is persuaded that the Respondent’s sole intention in registering and using the Domain Name is to take advantage of the Complainant’s brands and that the obvious connection between the registration of the Domain Name and the Complainant’s trademark cannot be interpreted with any legitimacy. The Panel’s finding is consistent with the panel’s finding in Veuve Clicquot Ponsardin Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). This is underscored by the specific links and ads on the Respondent’s “parked page” that correspond with the activities and products of the Complainant.
The Panel also finds that the Respondent’s registration through a privacy shield and its deliberate attempt to conceal its true identity is evidence of its bad faith use and registration. Groupe Auchan v. Parapharmacie Marche, Xavier Marche,WIPO Case No. D2014-0925 (August 12, 2014); see also Trednet, Direct Distribution International Ltd (“DDI”) v. WhoisGuard namecheap / BODYPOWER,WIPO Case No. D2012-2001 (use of a privacy shield… once connected with additional elements… clearly points towards a registration and use in bad faith).
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademark through a privacy shield registration, and the “parked page” advertising links to products that are competitive with the Complainant’s goods and services, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) of the Policy. 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 Domain Name, be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: June 24, 2019
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