Complainant is B, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed 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 31, 2019. On June 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2019, 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 Complainant on June 7, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 11, 2019.
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”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 5, 2019.
The Center appointed Torsten Bettinger as the sole panelist in this matter on July 22, 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
Complainant states that it “provides a leading cloud-based benefits management platform for consumers, employers, insurance carriers, and brokers”; and that “[a]s of December 31, 2018, [it] serve[d] 1,024 large employer customers ([companies with] more than 1,000 employees), and 57 carrier customers”. Complainant also states that “[it] has established approximately 2,200 data exchanges with leading insurance, finance, HRIS and payroll providers”; and that it has “more than 23 million consumers with the benefit industry’s leading brokers, carriers, and largest ERP provider”.
Complainant states, and provides evidence to support, that it owns multiple trademark registrations for marks that consist of or contain the mark BENEFITFOCUS, including United States Reg. No. 2,496,059 for BENEFITFOCUS for use in connection with “[p]roviding on-line human resource management services for others via a global computer network accessible by personal computer or computer kiosk station” (registered October 9, 2001).
In addition to the United States trademark registration, Complainant states that it owns trademark registrations internationally for its BENEFITFOCUS trademark in the following countries: Australia, Canada, China, Ireland, Israel, India, New Zealand, South Africa, and the United Kingdom. Collectively, Complainant’s registered and common law rights in the BENEFITFOCUS mark are referred to herein as the “BENEFITFOCUS Mark”.
In order to establish itself on the Internet and promote its products and services, Complainant registered and owns, among others, the and domain names. Complainant utilizes the and URLs as online log-in portals in connection with the provision of Complainant’s services.
The disputed domain name was registered on April 12, 2019, and is being used in connection with a pay-per-click (“PPC”) website.
Complainant provides a copy of a demand letter that it sent to Respondent on April 30, 2019. Complainant states that it never received a response to this letter. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to its famous trademark BENEFITFOCUS, Respondent has no rights or legitimate interests in the disputed domain name and Respondent registered and is using the disputed domain name in bad faith.
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 4(a)(i) of the Policy, Complainant submits the disputed domain name is confusingly similar to the BENEFITFOCUS Mark as it incorporates the BENEFITFOCUS Mark preceded by the descriptive prefix “account”, which is a descriptive term commonly used in connection with the BENEFITFOCUS Mark.
With regard to Respondent having no rights or legitimate interests in the disputed domain name, Complainant submitted that:
- it has not authorized Respondent to use the BENEFITFOCUS Mark and that Respondent is not a licensee of the BENEFITFOCUS Mark;
- Respondent is not commonly known by the name “benefitfocus”;
- Respondent registered the disputed domain name to intentionally create a likelihood of confusion with Complainant’s well-known BENEFITFOCUS Mark and Complainant’s domain names in order to attract and redirect Internet users, in particular current Complainant’s clients, to the PPC website and redirected websites for Respondent’s own commercial gain;
- Respondent cannot assert that it has been using the disputed domain name, prior to any notice of the present dispute, in connection with a bona fide offering of goods or services or that it has made demonstrable preparation to do so, in accordance with paragraph 4(c)(i) of the Policy, as the disputed domain name has been used to resolve to a PPC website which featured sponsored advertisements;
- Respondent is currently redirecting visitors to a webpage which either contains malware or redirects visitors to third-party websites;
- Respondent is not making a bona fide offering of goods or services because Respondent’s registration of the disputed domain name, is meant only to capitalize on the well-known nature of Complainant’s BENEFITFOCUS Mark and the similarities to the disputed domain name currently owned and operated by Respondent in order to attract Internet users to the PPC website and redirected websites.
Finally, with regard to the disputed domain name having been registered and being used in bad faith, Complainant argues that:
- Complainant’s BENEFITFOCUS Mark is well-known;
- Respondent has no relationship with Complainant or the BENEFITFOCUS Mark;
- Respondent registered the disputed domain name, which wholly contains Complainant’s well-known BENEFITFOCUS Mark, in order to create confusion and drive Internet traffic to the PPC Website in order to generate click-through revenue for Respondent’s own financial gain via the sponsored advertisements featured on the website hosted at the disputed domain name as well as to redirect visitors to third-party websites;
- prior UDRP panel decisions have consistently recognized that the registration of domain names, which are then used to operate click-through sites, can be considered to be evidence of bad faith use;
- Respondent knew of and specifically targeted Complainant’s BENEFITFOCUS Mark in bad faith when registering the disputed domain name as evidenced by the fact that the disputed domain name is virtually identical to Complainant’s domain name.
- there is no other reasonable explanation for the registration of the disputed domain name when viewed in connection with the content displayed by the redirected websites and that therefore there can be no doubt that Respondent knew of and intentionally targeted the BENEFITFOCUS Mark when registering and using the disputed domain name;
- Respondent has not responded to Complainant’s cease and desist letter, which is evidence outside the confines of the Policy, paragraphs 4(b)(i)-(iv) demonstrating Respondent’s bad faith registration and use of the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Complainant holds worldwide trademark registrations for BENEFITFOCUS. The disputed domain name includes the Complainant’s trademark together with the descriptive word “account”.
It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
There is consensus among the panelist that the addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity between a domain name and a complainant’s trademark under the first element of the UDRP. (See, for instance, Facebook, Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, “account”, “password”, “hacker”, “analytics”, “survey” et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 (“The Domain Name consists of the Complainant’s registered mark DROPBOX plus the generic words “support” and “number” separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the Domain Names from the Complainant’s DROPBOX marks and the Panel finds that the Domain Names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.8 of WIPO Overview 3.0).
Finally, it has been long established under the UDRP that the specific generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net”, and “.org” is typically not to be taken into account when assessing the issue of identity or confusing similarity, except in certain cases where the applicable gTLD suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark BENEFITFOCUS in which the Complainant has rights. B. Rights or Legitimate Interests
A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Complainant has asserted that it never permitted the Respondent to use its BENEFITFOCUS trademark and that the Respondent has no rights or legitimate interests to register and use the disputed domain name. Furthermore, the Complainant asserted that the disputed domain name resolves to an active PPC website featuring sponsored advertisement links.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
Where a complainant makes out 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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
The Respondent chose not to contest Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. As there is also no evidence before the Panel that support the contrary to Complainant’s allegation, the Panel accepts Complainant’s allegations as undisputed facts and concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed 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
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 holds trademark registrations for BENEFITFOCUS in the United States and many other countries since at least 2001. Complainant’s trademark BENEFITFOCUS is distinctive and appears to be well known.
This and the fact that the disputed domain name is nearly identical to Complainant’s domain name which Complainant uses for an online log-in portal make it inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its BENEFITFOCUS trademarks.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Respondent has used the disputed domain name to resolve to an active PPC website featuring sponsored advertisement links.
Respondent did not contest these allegation and failed to submit a response or to provide any evidence of actual or contemplated good faith use. Respondent did also not reply to Complainant’s correspondence prior to the filing of the Complainant.
The Panel therefore concludes that the Respondent, for commercial gain, has used the Complainant’s widely-known trademark as part of the disputed domain name in order to redirect Internet users looking for the Complainant’s services to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Such use is also likely to damage the Complainant’s business.
The Panel therefore finds that this is a classic case of cybersquatting and that Complainant has also satisfied its burden on 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 disputed domain name be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Date: August 5, 2019
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