Complainant is Benefitfocus.com, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
Respondent is Whois Agent (628124973), Whois Privacy Protection Service, Inc., United States / George Washere, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 25, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 5, 2020 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 March 5, 2020. 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 March 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2020. The Center appointed Marina Perraki as the sole panelist in this matter on April 3, 2020. 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 As per Complaint, Complainant is headquartered in Charleston, South Carolina and provides a cloud-based benefits management platform for consumers, employers, insurance carriers and brokers, which supports medical benefit plans and non-medical benefits, such as, dental, life, disability insurance, income protection, digital health and financial wellness. As of December 31, 2018, Complainant served 1,024 large employer customers and 57 insurance carrier customers. Presently, Complainant connects over 150,000 employers and more than 23 million consumers with benefit industry brokers, carriers and ERP provider. Complainant provides its services at “www.beneftifocus.com”. The “accounts.benefitfocus.com” and “billing.accounts-benefitfocus.com” are URLs used by Complainant as online log-in portals in connection with the provision of its services. Complainant has been using the BENEFITFOCUS mark since 2000 and due to its wide use and advertising, the mark has grown significantly over the years and enjoys reputation and goodwill in the field of benefit management and related software solutions. Complainant holds various trademark registrations in many countries consisting of or including the word BENEFITFOCUS, such as: - the United States trademark BENEFITFOCUS (word), registration No. 2,496,059, filed on April 8, 2000, registered on October 9, 2001 for services in international class 35, with first use in commerce May 15, 2000 and; - the United States trademark BENEFITFOCUS (word), registration No. 5,483,411, filed on February 29, 2016, registered on June 5, 2018 for services in international classes 41 and 42, with first use in commerce May 15, 2000 for class 42 services and May 18, 2011 for class 41 services. Complainant is also the owner of domain name registrations for The Domain Name was registered on January 20, 2020 and resolves to a pay-per-click (PPC) website (the Website) displaying sponsored advertisement links related to “Employee Health Insurance”, “Health Insurance Enrollment”, “Health Insurance”, “Employee Health Benefits” and “Employee Benefits”. All these links are related to Complainant’s products and services, appearing to be offering various options for healthcare insurance and employment benefits providers. Such providers are potentially current or future clients of Complainant. The Website displays also a hyperlink indicating that the Domain Name is being offered for sale. The hyperlink directs users to an Afternic webpage that is soliciting offers to purchase the Domain Name. On January 30, 2020 and February 7, 2020, Complainant sent cease and desist letters to Respondent by email to which Respondent did not reply. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s mark BENEFITFOCUS in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The addition of the word “accounts” in the beginning of the Domain Name does not prevent a finding of confusing similarity as it is a non-distinctive term and the BENEFITFOCUS mark remains clearly distinguishable (Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the BENEFITFOCUS mark of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, 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 [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 [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 [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 Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name. Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant has demonstrated that the Domain Name resolves to a Website displaying PPC links to third party sites, which appear to be offering options of healthcare insurance and employment benefits providers, namely potentially current or target clients for Complainant. Furthermore, the Website contains a hyperlink indicating that the Domain Name is being offered for sale, which directs Internet users to an Afternic webpage soliciting offers to purchase the Domain Name. The use of a domain name to host a page comprising PPC links does not represent a bona fide offering where such links capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users, such as in the case at issue (WIPO Overview 3.0 , section 2.9 ). Furthermore, the fact that all PPC links are related to Complainant’s services is a further indication that Respondent knew of Complainant and its field of business. In addition, the Domain Name incorporates in entirety Complainant’s mark and thus carries a high risk of implied affiliation (WIPO Overview 3.0 , section 2.5.1 ). The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and uses the Domain Name in bad faith. As per Complaint, Complainant’s mark BENEFITFOCUS is well-known in the sector of benefits management. Because the BENEFITFOCUS mark had been used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754). Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of BENEFITFOCUS mark on the Internet, namely at “www.benefitfocus.com” (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, namely services provided through an online platform. Respondent could have searched the United States trademark registry and would have found Complainant’s prior registrations in respect of BENEFITFOCUS (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). Furthermore, the Domain Name incorporates in its entirety Complainant’s mark plus an additional term “accounts” that corresponds to Complainant’s nature as benefits management platform and is similar to the domain name registration of Complainant As regards bad faith use, Complainant demonstrated that the Domain Name leads to a Website displaying PPC links and an offer to sell the Domain Name. Accordingly, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. It has been recognized that use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi,WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar,WIPO Case No. D2016-2497; WIPO Overview 3.0 , section 3.5 ). Lastly, the Domain Name was registered with a privacy shield service to hide the registrant’s identity, whereas Respondent did not reply to the cease and desist letters sent by Complainant. Respondent’s failure to respond to Complainant’s cease and desist letters constitutes further indication of bad faith (Samsung Electronics Co., Ltd. v. EAO Digital Solutions,WIPO Case No. D2012-0693) and so is the concealment of the Domain Names holder’s identity through use of a privacy shield (Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696). Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith. Complainant has established Policy paragraph 4(a)(iii). 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 Marina Perraki
Sole Panelist
Date: April 17, 2020
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