The Complainant is American Society of Hematology, Inc., United States of America (“United States” or “USA”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
The Respondent is Upender Kashyapp, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 19, 2019. On September 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 23, 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 September 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2019. The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 17, 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 one of the world’s largest professional societies serving both clinicians and scientists around the world in the field of hematology. The Complainant was formed more than 60 years ago and has grown to consist of more than 17,000 members from nearly 100 countries. For over six decades, the Complainant has sponsored its annual meeting, an educational and scientific event in the field of hematology (“Annual Meeting”). The Complainant is the owner of numerous trademark registrations for the ASH trademark (“ASH Mark”) worldwide, including but not limited to the USA, Australia, the European Union, Mexico, Thailand, and Qatar. Its earliest trademark registration was in the USA on June 19, 2007, registration number 3253642, in classes 16, and 35. The Respondent is an individual based in India. The Disputed Domain Name was registered on September 4, 2019, through a privacy service and does not currently resolve to an active website. However, according to the Complaint dated September 19, 2019, and the evidence attached, the Disputed Domain Name used to resolve to a website that was allegedly associated with the Complainant (“Former Website”). 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) the Disputed Domain Name is confusingly similar to the Complainant’s registered ASH Mark as it incorporates the Complainant’s ASH trademark in its entirety, along with the descriptive word “meeting”, which is an obvious reference to the Complainant’s Annual Meeting; (b) the Complainant has never authorised or licenced the Respondent, who is not affiliated with the Complainant in any way, to use its ASH Mark. The Disputed Domain Name used to resolve to the Former Website, which gave the misleading impression that it was affiliated or sponsored by the Complainant, as it prominently displayed the Complainant’s ASH Marks, and referred to the Complainant and its Annual Meeting. This cannot amount to a bona fide offering of goods or services. Therefore, the Respondent has no rights or legitimate interest in the Disputed Domain Name; and (c) the Former Website to which the Disputed Domain Name used to resolve, incorporates the ASH Marks and was designed to give the impression that it was affiliated with or sponsored by the Complainant in relation to the Annual Meeting. The Former Website sought to collect personal data by inviting users to register for the Annual Meeting and claiming to offer accommodation, all of which was false. The Respondent registered and used the Disputed Domain Name in bad faith to intentionally attract, for commercial gain, Internet users to the Former Website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Former Website. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000 0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the 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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the ASH Mark, based on its trademark registrations in multiple jurisdictions. It is well-established that in making an enquiry as to whether a trademark is identical or confusingly similar to a domain name, the generic Top-Level Domain Name (“gTLD”) extension “.org” may be disregarded. See section 1.11 of the WIPO Overview of Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainant’s ASH Mark in its entirety with the addition of the dictionary word “meeting”. It is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark, and the only difference is a dictionary term, then such a dictionary term does not negate the confusing similarity between the disputed domain name and the mark (see Oakley, Inc. v. Joel Wong/BlueHost.com- INC,WIPO Case No. D2010-0100; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; and The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088). The Panel finds that the mere addition of the dictionary word “meeting” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademark. As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ASH Mark and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the ASH Mark, and there is no relationship between the Complainant and the Respondent that would otherwise entitle the Respondent to use the ASH Mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or (2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trademark or service mark rights; or (3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. No evidence has been provided to demonstrate that the Respondent has trademark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name. The Disputed Domain Name does not currently resolve to an active website. According to the Complaint and evidence attached, the Disputed Domain Name used to resolve to the Former Website, which incorporated the Complainant’s ASH Mark and falsely claimed to be associated with the Complainant and its Annual Meeting. Such prior use of the Disputed Domain Name cannot amount to a bona fide offering of goods or services or use for noncommercial or fair use purposes. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is generally recognised that passive holding of a domain name does not as such prevent a finding of bad faith. As stated in “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc.,WIPO Case No. D2017-0246, “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See section 3.3 of the WIPO Overview 3.0. In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent and the prior use of the Disputed Domain Name by the Respondent to resolve to the Former Website amount to bad faith registration and use due to the following: (i) the Complainant’s ASH Mark is well-known and the Respondent was clearly aware of the Complainant and the Complainant’s ASH Mark, as the Former Website incorporated the ASH Mark and directly referred to the Complainant, claiming to be the registration site for the Annual Meeting and to offer accommodation relating to it; (ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; and (iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use. The Former Website to which the Disputed Domain Name used to resolve gave the false impression that it was affiliated with or sponsored by the Complainant for the purpose of the Annual Meeting. The Former Website sought to collect the personal data of users, such as name, email, telephone number, and country, by inviting users to register for the Annual Meeting and claiming to offer accommodation via the Former Website, all of which was false. Further, the Respondent’s Former Website prominently featured the ASH Mark and included links to the Complainant’s official Facebook, LinkedIn, Twitter, and YouTube account pages. Crucially, the website featured a full “ASH 61st Annual Meeting” page detailing the dates and location, an “About ASH” page, an Event/Meeting Schedule page, a Housing information page, a FAQ page, and an Event Venue location map and contact box. This is a further indication of bad faith intentions. See American Society of Hematology v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Andy Abbott, IT Company,WIPO Case No. D2017-1307. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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 Gabriela Kennedy
Sole Panelist
Date: October 31, 2019
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