The Complainant is NIB Health Funds Limited, Australia, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Domain Administrator, DVLPMNT MARKETING, INC., Saint Kitts and Nevis. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with DNC Holdings, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2019. On May 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 29, 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 31, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on July 3, 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 Complainant is an international health and medical insurance provider based in Australia. It is present in eight countries and is publicly traded on the Australian Securities Exchange.
The Complainant is the owner of a number of trade mark registrations for NIB in Australia, including:
- Trade mark registration number 1009420;
- Trade mark registration number 1009421; and
- Trade mark registration number 1009422,
(the “Marks”).
Each of the Marks was registered on July 5, 2004.
The Domain Name was registered on March 8, 2006. It appears to have been acquired by the Respondent between July 16 and September 16, 2013. It currently directs Internet users to a webpage featuring pay-per-click links, including links to pages belonging to competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is merely a combination of its trade marks with the descriptive words “health insurance”, which describe the Complainant’s business, and the generic Top-Level Domain (“gTLD”) “.com”.
It alleges that the Domain Name is being used to direct Internet users to pay-per-click links which offer services that directly compete with its services.
The Complainant also provides evidence of the Respondent having been ordered to transfer domain names in around 25 UDRP proceedings, and of the Respondent’s many registrations of domain names featuring third party trade marks.
The Complainant states that the Respondent is not affiliated with or connected to the Complainant in any way and has not been given any permission to use the Marks, in the Domain Name or otherwise, nor is there any evidence that the Respondent has been commonly known by the Domain Name or that it has any rights or legitimate interests in respect of it. It argues that the Respondent must have been aware of the Complainant when choosing the Domain Name, given the similarity of the added words “health insurance” to the services provided by the Complainant under the Marks, and since the Complainant is an international and publicly traded company. “NIB” does not have any obvious relation to “health insurance” other than as a reference to the Complainant.
The Complainant also submits that there is no evidence that the Respondent has or is making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, and argues that the use of the Domain Name to direct Internet users to websites that operate in competition with the Complainant is evidence of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Marks.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore accepts that the Domain Name is confusingly similar to the Marks. The addition of the descriptive term “health insurance” to the Domain Name does not make the Marks unrecognizable in the Domain Name and the addition of the gTLD “.com” does not alter this conclusion.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. It states that it has not given the Respondent permission to use the Marks, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the Domain Name. The Complainant also submits that the redirection of Internet users to a website offering pay-per-click links to competitors does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.”
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”.
Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith
Section 3.9 of the WIPO Overview 3.0 states, in relevant part, that “the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith”. Therefore the relevant date for assessing whether the Respondent registered the Domain Name in bad faith in this Complaint is between July 16 and September 16, 2013.
In the present Complaint, nothing depends on where in that window the transfer of the Domain Name to the Respondent actually took place and the Panel finds that the Domain Name was registered in bad faith whether it was acquired by the Respondent in July or September 2013 since the Marks had been registered for almost 10 years even by the earliest date in the relevant window. In any event, even if the Respondent had registered the Domain Name in 2006, the Marks were registered in July 2004. Furthermore, the combination of “NIB” and “health insurance” can only be understood to be a reference to the Marks, for which use the Respondent had no permission. The Respondent has offered no explanation for the choice of the Domain Name or any evidence to displace the strong inference from the available evidence that it was chosen to attract Internet users who were looking for the Complainant.
The Domain Name is also being used in bad faith in that it is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to competitors of the Complainant. The existence of other UDRP proceedings having been won against the Respondent does not create a presumption of bad faith registration and use per se, but it does tend to support such a finding of bad faith where the Respondent has not taken any steps to rebut it.
Accordingly, the Panel finds that the Domain Name has been 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 Domain Name be transferred to the Complainant.
Gareth Dickson
Sole Panelist
Date: July 18, 2019
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