Complainant is Actuated Medical, Inc., United States of America, represented by Metz Lewis Brodman Must O'Keefe LLC, United States of America (“United States” or “US”).
Respondent is Contact Privacy Inc. Customer 1248442267 / Annette Cook, 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 October 21, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 2020, 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 October 23, 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 October 23, 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 October 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 18, 2020. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on December 1, 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 states that it is the owner of trademark rights in the mark ACTUATED MEDICAL, which it uses in connection with “a variety of medical devices.” A copy of a trademark registration certificate from the US. Patent and Trademark Office provided by Complainant identifies it as the owner of US. Reg. No. 4,568,836 for the mark ACTUATED MEDICAL for use in connection with “electromechanical medical devices, namely, occlusion clearing devices for clearing patient feeding and medication tube conduit lumens, tissue penetration devices, namely, medical instruments for cutting tissue, and piezoelectric motor devices for use in or near magnetic fields of magnetic resonance imaging machines for patient diagnostics and treatment.” This registration was issued on July 15, 2014, and is referred to herein as the “ACTUATED MEDICAL Trademark.” The Disputed Domain Name was created on October 14, 2020. According to evidence provided by Complainant, the Disputed Domain Name is being used in connection with an employment scheme impersonating Complainant, “to lure unsuspecting potential employees to provide personal information or fees.” 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the ACTUATED MEDICAL Trademark because “Respondent essentially incorporates Complainant’s [ACTUATED MEDICAL] Mark in its entirety in the subject domain name, and simply adds a superfluous ‘s’”; and “when a disputed domain name incorporates an entire trademark with only the addition of a letter or additional term, it is still confusingly similar to the trademark as the addition of the letter ‘s’ does not eliminate the likelihood of confusion.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Complainant has “not granted any permission to the Respondent’s use of the domain name and the domain name has no ‘connection with a bona fide offering of goods or services’”; “[t]o the best of Complainant’s knowledge, Respondent has not been ‘commonly known by’ a name consisting in whole or in part of the wording ACTUATED MEDICAL or its substantial equivalent; indeed, it could not be without authorization from Complainant and Respondent is not an agent or licensee of Complainant”; and “Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain due to the misleading nature of the domain name to deceive consumers.” - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “Respondent registered the domain name to intentionally attempt to attract for commercial gain, potential employees of Complainant in an online ‘phishing’ scam in order to lure unsuspecting potential employees to provide personal information or fees”; “Respondent is conducting chat sessions and sending and receiving emails to the confusingly similar domain name 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”; “the scam attempts to obtain information by posing as Complainant but using the disputed domain name as the recipient email address”; and “Respondent has even offered fraudulent positions to unsuspecting victims as part of the scam.” 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 Based upon the trademark registration cited by Complainant, it is apparent that Complainant has rights in and to the ACTUATED MEDICAL Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the ACTUATED MEDICAL Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “actuatedmedicals”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”. WIPO Overview 3.0, section 1.11.1. The Disputed Domain Name contains the ACTUATED MEDICAL Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Further, “[t]he additional ‘s’ suggests merely a plural form of the service mark, and thus provides no meaningful distinction from, but only increased confusion with, that mark.” MarkMonitor Inc., Thomson Reuters Canada Limited, Thomson Reuters Organization LLC, and Thomson Reuters Corporation v. Domain Admin, E-Promote,WIPO Case No. D2016-0693. Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, Complainant has “not granted any permission to the Respondent’s use of the domain name and the domain name has no ‘connection with a bona fide offering of goods or services’”; “[t]o the best of Complainant’s knowledge, Respondent has not been ‘commonly known by’ a name consisting in whole or in part of the wording ACTUATED MEDICAL or its substantial equivalent; indeed, it could not be without authorization from Complainant and Respondent is not an agent or licensee of Complainant”; and “Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain due to the misleading nature of the domain name to deceive consumers.” WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). The Panel finds that use of the Disputed Domain Name by Respondent in connection with an employment scheme impersonating Complainant is evidence of bad faith. See, e.g., Six Continents Hotels, Inc. v. WhoisSecure / Dickson White,WIPO Case No. D2019-0087: “The Panel accepts that the Domain Name has been registered and used with the intention of furthering a fraudulent scheme whereby the underlying controller of the Domain Name has sought to impersonate the Complainant and that this has been done in order to try and deceive potential applicants for jobs with the Complainant…. [T]he registration and use of a domain name for such a purpose[] involves registration and use in bad faith.” Accordingly, the Panel finds that Complainant has proven the third element 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 Douglas M. Isenberg
Sole Panelist
Date: December 8, 2020
Full & Egal Universal Law Academy