Complainant is CK Franchising, Inc., United States of America (“United States”), represented by Areopage, France.
Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf; Iceland / Dorothy Felix, Comfort Keepers Home Care Services LLC, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2021. On August 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 27, 2021, 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 September 3, 2021 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 September 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. Respondent sent several informal email communications to the Center on September 4, 2021; October 29, 202 and November 2, 2021.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 10, 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 BackgroundFounded in 1998 by a home health aide to provide in-home medical care, Complainant is a provider of in-home care for seniors and adults who need assistance at home. In 2009, Complainant was purchased by SODEXO, a food and facilities management services company. Complainant operates under the brand COMFORT KEEPERS and operates a website at “www.comfortkeepers.com”. Complainant has developed the COMFORT KEEPERS brand, providing seniors and families around the world options on how and where elders age. Complainant provides quality of life services by serving over 75 million consumers in over 80 countries each day. With more than 700 offices worldwide, Complainant has been named one of the fastest growing franchise systems by INC. Magazine. Complainant’s franchise system includes a large, global network offering the following care services:
- In-Home Care: in-home care to help seniors live independently at home.
- Specialized Care: Alzheimer’s and dementia home care, end-of-life care, in-facility care (full range of care services to meet the needs of each client and family), private nursing.
- Personal care: preserving seniors' self-esteem by helping them maintain personal hygiene.
- Companionship: personally engaging with seniors.
- Nutrition: preparing meals for senior clients that provide the nutrients and energy needed to prevent illness and maintain health.
- Special assistance: meeting the needs of senior clients who have chronic health conditions, such as Alzheimer’s disease, other dementia-related conditions, diabetes, heart disease and Parkinson's disease.
- Technology solutions: providing electronic devices that promote the safety and well-being of seniors between visits by caregivers.
Complainant created the National Day of Joy in 2019. Complainant is recognized as a leader in senior home care and received the following awards:
- Extraordinary Achievement, Franchise Satisfaction (Franchise Research Institute): 2008 - 2018
- #1 in Senior Care, Top 500 Franchises (Entrepreneur): 2015
- Circle of Excellence, National Business Research Institute (NBRI), 2018
- Endorsed National Provider by Home Care Pulse, 2016
- COMFORT KEEPERS is first on the list of Newsweek’s “AMERICA'S BEST CUSTOMER SERVICE 2020” for the category “home-care services for seniors and disabled”.
Complainant has submitted evidence that the COMFORT KEEPERS marks are registered in many countries, including the following registered marks:
- COMFORT KEEPERS, European registration n° 009798001, registered on August 22, 2011, in international classes 10, 38 and 44;
- COMFORT KEEPERS, European registration n° 004210456, registered on January 19, 2006, in international classes 39, 43 and 45;
- COMFORT KEEPERS with logo, European registration n° 004210481, registered on January 19, 2006, in international classes 39, 43 and 45;
- COMFORT KEEPERS, United States registration n° 2366096, registered on July 11, 2000, in international class 42;
- COMFORT KEEPERS with logo, United States registration n° 2335434, registered on March 28, 2000, in international class 42;
- I AM A COMFORT KEEPER, United States registration n° 3172466, registered on November 14, 2006, in international class 45;
- WE ARE COMFORT KEEPERS, United States registration n° 3172467, registered on November 14, 2006, in international class 45;
- BE A COMFORT KEEPER, United States registration n° 3258432, registered on July 3, 2007, in international class 45.
The Domain Name was registered on June 11, 2021. When the Complaint was filed on August 26, 2021, the Domain Name was used as a parking page. Currently the Domain Name is inactive.
5. Parties’ Contentions A. Complainant(i) Identical or confusingly similar
Complainant states that the COMFORT KEEPERS mark has a strong reputation and is known all over the world. The Domain Name is composed of the mark COMFORT KEEPERS, associated to the expression “event planning and talent rep”. The element “rep” could mean “representation”. In the Domain Name, Complainant contends that the COMFORT KEEPERS mark keeps its individuality and is clearly perceived by consumers as the predominant part of the Domain Name. Complainant claims the addition of the descriptive elements “event planning and talent rep” in the Domain Name is not sufficient to distinguish it from Complainant’s marks. Complainant states it is widely admitted that the addition of a generic or descriptive term to a mark will not alter the fact that a domain name is confusingly similar to the mark in question.
Complainant submits that the risk of confusion or association between the Domain Name and the COMFORT KEEPERS mark is further increased because Complainant has submitted evidence that Complainant offers events, which are referenced in the Domain Name. Complainant fears a fraudulent use of the Domain Name, notably to perpetrate email scam sent to its clients requesting payment of false invoices on fake COMFORT KEEPERS bank accounts. Complainant explains that is why it decided to file the present Complaint.
(ii) Rights or legitimate interests
Complainant states that Respondent has tried to make believe that she has a legitimate interest in registering and using the Domain Name by specifying in her identity: "Comfort Keepers Home Care Services LLC ". However, Complainant states that Respondent has no rights nor legitimate interests in the Domain Name as she has no rights in COMFORT KEEPERS as a corporate name, trade name, shop sign, mark or domain name that would be prior to Complainant’s rights in its COMFORT KEEPERS marks. Respondent was not commonly known by the Domain Name prior to Complainant’s adoption and use of the business name and mark, COMFORT KEEPERS. Moreover, Respondent does not have any affiliation, association, sponsorship or connection with Complainant, and has not been authorized, licensed or otherwise permitted by Complainant or by any subsidiary or affiliated company to register the Domain Name and use it.
(iii) Registered and used in bad faith
Complainant states the Domain Name incorporates Complainant’s known mark COMFORT KEEPERS, which is a purely fanciful mark. Complainant asserts that nobody could legitimately choose this word or any variation thereof, unless seeking to create an association with Complainant.
Previous decisions issued under the UDRP already recognize that actual knowledge of a complainant’s trademarks and activities at the time of the registration of the disputed domain names may be considered an inference of bad faith. Complainant claims that Respondent not only knows the COMFORT KEEPERS marks, but wants to benefit from their reputation. It is obvious that Respondent registered the Domain Name with actual knowledge of Complainant's rights in the COMFORT KEEPERS marks and business name very likely for the purpose of creating confusion with Complainant's marks to divert or mislead third parties for Respondent's illegitimate profit.
Complainant states that even if the Domain Name does not presently have any active content, a passive holding of a domain name does not prevent a finding of bad faith. Panels have among others taken into consideration:
- the strong reputation and well-known character of Complainant’s mark;
- the lack of evidence provided by Respondent of any good faith use with regard to the Domain Name; and
- the identity of the Domain Name with Complainant's name and mark intended to divert or mislead potential web users from Complainant's website they are actually trying to visit.
Complainant asserts that these circumstances apply to the present case. Moreover, bad faith use may also result from the threat of an abusive use of the Domain Name by Respondent. The presence of the Domain Name in the hands of Respondent represents an abusive threat hanging over the head of Complainant (i.e., an abuse capable of being triggered by Respondent at any time) and therefore a continuing abusive use. Complainant states the unauthorized registration of the Domain Name by Respondent and its passive holding, likely in the aim of fraudulent uses, are for the purpose of commercial gain and constitute bad faith registration and use.
B. RespondentRespondent did not file a formal Response. However, Respondent did submit several emails to the Center, one of which, received on October 29, 2021, stated as follows:
“I BELIEVE YOU ARE A FRAUDULENT COMPANY. FIRST LET ME SCHOOL YOU. ONE CAN ONLY GET A NAME OR DOMAIN IF IT'S AVAILABLE. SO FOR ME TO PURCHASE IT, IT MEANS THAT IT'S AVAILABLE. SO IF YOU ARE A REAL COMPANY, TAKE IT UP WITH THE COMPANY THAT SOLD THE DOMAIN TO US.
DOROTHY”
A further email sent to the Center on November 2, 2021, stated:
“I DON'T KNOW WHO THE HELL YOU PEOPLE ARE BUT I AM WARNING YOU FOR THE LAST
TIME TO SEIZE AND DE-SEIZE FROM HARASSING ME. I WILL REPORT YOUR FRAUDULENT COMPANY TO THE FBI IF YOU DON'T STOP. CRIMINALS”
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent 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 Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly SimilarComplainant has demonstrated that through registration and extensive use, it has well-established rights and significant reputation in its COMFORT KEEPERS marks. The Panel observes that the Domain Name incorporates the COMFORT KEEPERS mark, along with the descriptive phrase “event planning and talent rep”. The Panel finds that this presentation in the Domain Name does not avoid confusing similarity with Complainant’s COMFORT KEEPERS mark, but instead suggests an association with Complainant and its activities which would be relevant under the second and third element of the Policy, discussed below.
In addition, the Panel notes that numerous UDRP decisions have found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also section 1.7 of the WIPO Overview 3.0, which states, “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”.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsRegarding the second element of the Policy, section 2.1 of the WIPO Overview 3.0, states, “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”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to rebut adequately Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use Complainant’s COMFORT KEEPERS trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services. Instead, at the time the Complaint was filed, the Domain Name was linked to a parking page, which presumably could be used to generate revenue if the links on that page were clicked.
Based on the email submitted by Respondent, Respondent appears to hold the view that if a domain name is available (i.e., not already registered), this is the only issue to be considered and Respondent bears no responsibility for choosing the Domain Name, rather the responsibility would lie with the Registrar. However, Respondent is wrong. The UDRP, in paragraph 2(b), sets forth the representations of a domain name registrant when registering a domain name, providing in relevant part that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”. The directives of paragraph 2(b) of the Policy are reflected in Respondent’s registration agreement with the Registrar and are relevant here, where Respondent has registered the Domain Name that fully encompasses Complainant’s distinctive and well-established COMFORT KEEPERS trademark, while adding a descriptive phrase related to services offered by Complainant. Respondent did not attempt to justify her registration of the Domain Name by reference to how Respondent intended to use it. The Panel’s view is that Respondent chose the Domain Name to trade off on the reputation of Complainant’s mark in order to generate increased web traffic to Respondent’s own site, whether it be the parking site to which the Domain Name was linked when the Complaint was filed, or another site that Respondent intended to develop (in this regard, the Panel observes that the Domain Name was registered on June 11, 2021, and Complainant filed the Complaint approximately two months later on August 26, 2021, possibly before Respondent could develop to her own operational site). On the record before the Panel, there has been no bona fide use of the Domain Name.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been sufficiently rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad FaithThe third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. The Panel is of the view that Respondent, when registering the Domain Name, was aware of Complainant and its distinctive COMFORT KEEPERS trademark, and intentionally targeted Complainant and its marks, when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s COMFORT KEEPERS trademark in its entirety, along with the descriptive phrase “event planning and talent rep”. Given the reputation of the COMFORT KEEPERS trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its COMFORT KEEPERS mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered). Respondent had an opportunity to rebut this view and justify registration of the Domain Name, but Respondent’s emails entirely failed to do so.
Regarding use of the Domain Name, at the time the Complaint was filed the Domain Name directed a parking site and Respondent had employed a privacy service to hide her identity. While each of these factors, on its own, might be insufficient to demonstrate bad faith use of a domain name, in this case, where the Domain Name is confusingly similar to Complainant’s well-established COMFORT KEEPERS trademark, and where there is no conceivable non-infringing use of the Domain Name, the Panel considers that these factors weigh in favor of bad faith use. See Alitalia-Linee Aeree Italiane S.p.A v. Colour Digital,WIPO Case No. D2000-1260 (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also WIPO Overview 3.0, section 3.3 (“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding”); and WIPO Overview 3.0, section 3.6 (“Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”). Moreover, the Panel finds that the composition of the Domain Name (i.e., Complainant’s trademark plus terms descriptive of one of Complainant’s activities) effectively impersonates or suggests sponsorship or endorsement by Complainant. Finally, there is also the threat of potential abusive use of the Domain Name in the future by Respondent, given the lack of conceivable non-infringing use. Conair Corp. v. Pan Pin, Hong Kong Shunda International Co. Limited, WIPO Case No. D2014-1564 (“The presence of the Domain Name in the hands of the Respondent represents, in the view of the Panel, an abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the Respondent at any time) and therefore a continuing abusive use.”).
In conclusion, in this case, where Respondent failed to submit a formal Response to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Christopher S. Gibson
Sole Panelist
Date: November 24, 2021