The Complainant is American Society of Hematology, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Pranaey H, 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 May 4, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 6, 2021, 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 the Complainant on May 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 8, 2021. 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 the Respondent of the Complaint, and the proceedings commenced on May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2021. The Center appointed Luca Barbero as the sole panelist in this matter on June 7, 2021. 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 the American Society of Hematology, a professional society serving both clinicians and scientists around the world in the field of hematology, working to conquer blood diseases. Its mission is to further the understanding, diagnosis, treatment, and prevention of disorders affecting the blood, bone marrow, and the immunologic, hemostatic, and vascular systems, by promoting research, clinical care, education, training, and advocacy in hematology. The Complainant was formed as an association in 1958 and has grown to more than 18,000 members from nearly 100 countries. The Complainant’s BLOOD trademark has been in use since 1946 in connection with the BLOODjournal, which provides an international forum for the publication of original articles describing basic laboratory, translational, and clinical investigations in hematology. The BLOOD journal’s circulation counts presently about 16,000 subscribers. The journal published 849 articles in 2020 – with almost 8% increase from the previous year – achieving an Impact Factor of 17.794 – up from 16.601 in 2019. The Complainant is the owner of several trademark registrations for BLOOD, including the following, as per trademark certificates submitted as annexes to the Complaint: - United States trademark registration no. 4069976, for BLOOD (word mark), filed on March 15, 2011, and registered on December 13, 2011, in international class 16; - United States trademark registration no. 5285047, for BLOOD (word mark), filed on February 14, 2017, and registered on September 12, 2017, in international classes 9 and 41; - United States trademark registration no. 5267101, for BLOOD ADVANCES (word mark), filed on April 28, 2016, and registered on August 15, 2017, in international class 9; - United States trademark registration no. 5418332, for BLOOD ADVANCES (word mark), filed on September 20, 2017, and registered on March 6, 2018, in international classes 16 and 41. The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Registrant is not commonly known by the disputed domain name, has in no way been authorized by the Complainant to use the BLOOD trademark, and is not a licensee of the BLOOD trademark. Moreover, the Complainant emphasizes that the disputed domain name has been passively held and that the Respondent intended to use the well-known trademark BLOOD in the disputed domain name with the intention of confusing or defrauding people via the use of an email address, since the disputed domain name is currently associated with email servers. The Complainant also underlines that the Respondent’s failure to provide correct contact information is also evidence that the Respondent has not made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. As a circumstance evidencing bad faith in the use of the disputed domain name, the Complainant highlights that the disputed domain name has never been used in relation to an active website and is therefore being passively held by the Respondent. The Complainant also contends that bad faith registration can be inferred since the Respondent knew or should have known of the Complainant’s trademark rights at the time of registering the disputed domain name, nevertheless registered the disputed domain name regardless of the Complainant’s strong reputation and world renown. Lastly, the Complainant highlights that the Respondent’s failure to respond to the Complainant’s cease and desist letters and the use of privacy services, are both further evidence of the Respondent’s bad faith registration and use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark BLOOD based on the trademark registrations cited in section 4 above and the related trademark certificates submitted as annex 12 to the Complaint. As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Moreover, as stated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. In the case at hand, the Complainant’s trademark BLOOD is entirely reproduced in the disputed domain name, with the mere addition of the term “journal”, which directly relates to the products and services for which the Complainant’s trademark is registered and used, a hyphen between the words “blood” and “journal” which is of no consequence, and the generic Top-Level Domain “.com”, which can be disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0). Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you 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 (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 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 the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to rebut this or to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name or that the Respondent, which has not used the disputed domain name in connection with an active website and has not provided any explanation as to the reasons why it registered the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate, noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Furthermore, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name carries a risk of implied affiliation. See Section 2.5.1 of the WIPO Overview 3.0: “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. Here, using the Complainant’s mark plus a term covered by its trademark registration, clearly produces such risk. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. As to the bad faith at the time of the registration, the Panel finds that, in light of the prior registration and use of the Complainant’s trademark BLOOD in connection with the Complainant’s renowned publications in the field of hematology and considering the composition of the disputed domain name, combining the Complainant’s trademark with the term “journal”, which is directly referrable to the Complainant’s publications, the Respondent very likely registered the disputed domain name in order to target the Complainant and its trademark. With reference to the use of the disputed domain name, the Panel notes that it does not resolve to an active website. Prior UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith under certain circumstances, as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Furthermore, is should be noted that the disputed domain name has a mail exchanger record (MX record) – which specifies the mail server responsible for accepting email messages on behalf of a domain name – configured. In addition, the Sender Policy Framework (SPF record) – allowing the receiving mail server to check, during mail delivery, that a mail (incoming from a specific domain name) is submitted by an IP address and/or email server authorized by that domain name’s administrators – is also active. The fact that the MX record is configured entails the possibility that the Respondent is using, or plans to use, the disputed domain name for emails aimed at phishing activities and the fact that also the SPF record is configured is an additional circumstance evidencing that the disputed domain name is very likely used, or will be used, to send fraudulent messages Therefore, in view of: i) the reputation of the Complainant’s trademark BLOOD in the field of scientific publications; ii) the Respondent’s registration of a domain name confusingly similar to the Complainant’s prior trademark and clearly referring to the Complainant’s publications given the use of the related term “journal”; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complainant’s cease and desist letter and to the Complaint; v) the implausibility of any good faith use to which the disputed domain name may be put; vi) the configuration of the MX record and also of the SPF record of the disputed domain name, which is a clear indication that the domain name is, or could be, used by the respondent for phishing activities, the Panel finds that the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. See section 3.3 of WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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 Luca Barbero
Sole Panelist
Date: June 21, 2021
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