Complainant is Health Care Service Corporation, United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
Respondent is Nanci Nette, Name Management Group, United States. 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 8, 2020. On September 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2020, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 5, 2020. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on October 12, 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 Complainant is a large customer-owned health insurer in the United States and has been offering health and life insurance products under the HCSC trademark (“Complainant’s Mark”) since at least 1975. Complainant serves more than 16 million customers across the United States and employs more than 23,000 people in more than 60 local offices. Complainant’s Mark has been recognized and reported on by numerous prominent national and international media outlets such as The Wall Street Journal, Yahoo News and Forbes. Complainant advertises its HCSC mark on various major social media platforms - such as Facebook, Twitter, LinkedIn, among others - and through various marketing events and print materials. Complainant is also the registrant of numerous domain names incorporating its HCSC mark, including The disputed domain name Respondent has been the losing respondent in at least 15 other UDRP proceedings. See, Ruby Life Inc. v. Domains By Proxy, LLC / Nanci Nette,WIPO Case No. D2020- 0093 (transfer), Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Nanci Nette,WIPO Case No. D2019-2545, Facebook, Inc. and WhatsApp Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette,WIPO Case No. D2019-2223, CVS Pharmacy, Inc. v. Registration Private, Domains By Proxy, LLC / Nanci Nette, Name Management Group,WIPO Case No. D2019-1740, Echobox Audio, LLC v. Nanci Nette,WIPO Case No. D2019-0751, Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Nanci Nette, Name Management Group,WIPO Case No. D2018-2508, Wikimedia Foundation, Inc. v. Domains by Proxy, LLC / Management Group, Nanci Nette,WIPO Case No. D2018-1453, Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. D2018-0717, Getty Images (US), Inc., iStockphoto L.P. v. Nanci Nette, Name Management Group,WIPO Case No. D2017-1645, Veolia Environnement SA v. Nanci Nette, Name Management Group,WIPO Case No. D2017-1511, LogMeIn, Inc. v. Nanci Nette,WIPO Case No. DME2019-0007, Slack Technologies, Inc. v. Registration Private, Domains by Proxy, LLC / Nanci Nette, Name Management Group,WIPO Case No. DCO2020-0018, OkCupid, operated by Humor Rainbow, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. DCO2017-0008. 5. Parties’ Contentions A. Complainant Complainant alleges that the disputed domain name is confusingly similar to Complainant’s Mark because it reproduces identically and entirely the HCSC mark, with the addition of the term “int”, which Complainant alleges is an abbreviation of the descriptive term “internal”. Complainant asserts that the inclusion of this descriptive term does nothing to dispel the confusing similarity between the disputed domain name and its HCSC mark. Complainant also contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, Complainant has not licensed Respondent the right to use Complainant’s Mark, and that Respondent is not otherwise authorized to act on Complainant’s behalf. Furthermore, Complainant argues that Respondent’s use of the disputed domain name to perpetrate phishing fraud cannot be considered a bona fide offering of goods and services nor a legitimate noncommercial or fair use. Complainant further contends that the disputed domain name was registered and used in bad faith. Complainant argues that Respondent must have had actual knowledge of Complainant’s rights in the HCSC mark given the complete incorporation of the HCSC mark in the disputed domain name. Furthermore, Complainant argues that Respondent’s use of the disputed domain name in connection with a phishing scheme whereby visitors are prompted to contact the “Microsoft Security Team” because they have allegedly received a “Virus Alert 17 from Microsoft” is manifestly considered evidence of bad faith. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. WIPO Overview 3.0, section 1.3. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Id. Here, Complainant provided sufficient evidence to show that it has common law trademark rights in the HCSC mark. It provided evidence that it has used the HCSC mark since at least 1975. Complainant has also shown that it has consistently promoted and advertised the mark through social media platforms, and digital and print media. Moreover, Complainant has provided evidence showing that various prominent national and international media outlets recognize the HCSC mark as being associated with Complainant. With Complainant’s rights in the HCSC mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word or suffix. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “[w]here 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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. Here, Complainant’s HCSC mark is fully incorporated in the disputed domain name. The inclusion of the descriptive abbreviation “int” in the disputed domain name does not prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s HCSC mark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) 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 trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it never authorized, licensed, or permitted Respondent to use the HCSC mark in any way. Complainant has also asserted that Respondent is not commonly known by the disputed domain name. Furthermore, as shown in evidence submitted by Complainant, the disputed domain name was used in connection with a website that falsely informs visitors that they received a virus alert from Microsoft and that they should contact “Microsoft Security” apparently in furtherance of a fraudulent scheme to obtain personal information from visitors. These activities cannot be considered bona fide offerings of goods or services nor legitimate noncommercial or fair uses under the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; WIPO Overview 3.0, section 2.13.1, and section 2.5.1. Indeed, the use of a domain name for illegal activity, including phishing and fraud, can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group,WIPO Case No. D2018-0717; WIPO Overview 3.0, section 2.13.1. Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith In this case, bad faith can be found in the registration and use of the disputed domain name. Complainant provided ample evidence to show the widespread use and recognition of the HCSC mark that long predates Respondent’s registration of the disputed domain name. Complainant also provided evidence showing that it was the original registrant of the disputed domain name. Therefore, Respondent was undoubtedly aware of Complainant and its rights in the HCSC mark when Respondent registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Furthermore, Complainant provided evidence that the disputed domain name is being used to conduct an apparent fraudulent scheme to collect Internet users’ data by sending them messages falsely indicating that they have received a “virus alert” from a certain company and that they should contact that company’s security team. This type of illegal activity is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra. Therefore, Respondent’s registration and use of the disputed domain name not only clearly indicate full knowledge of Complainant’s HCSC mark, but also an attempt to misleadingly divert consumers for Respondent’s own commercial gain in some manner through its fraudulent activities. See Policy, paragraph 4(b)(iv). Lastly, Respondent’s pattern of abusive domain name registrations constitutes additional evidence of bad faith use and registration of the disputed domain name under paragraph 4(b)(ii) of the Policy. UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names. Complainant cited at least fifteen other UDRP proceedings where Respondent was found to have been engaging in bad faith conduct targeting trademarks. The Panel independently confirmed that Respondent has been the losing respondent in every one of those UDRP proceedings. Therefore, the Panel finds that Respondent most likely registered the disputed domain name primarily for the purpose of profiting in some fashion from or otherwise exploit Complainant’s HCSC mark, in a similar manner as has been found by previous UDRP panels in previous proceedings against Respondent under the Policy. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name was 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 disputed domain name, Brian J. Winterfeldt
Sole Panelist
Date: October 26, 2020
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