The Complainant is Benefitfocus.com, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2021. On September 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 22, 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 September 22, 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 in English on September 23, 2021.
On September 22, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the administrative proceeding. On September 22, 2021, the Complainant confirmed its request that English be the language of the administrative proceeding. The Respondent did not comment on the language of the administrative proceeding.
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 in English and Chinese, and the proceedings commenced on September 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on November 12, 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 BackgroundThe Complainant, Benefitfocus.com, Inc., is headquartered in South Carolina, United States. It provides cloud-based benefits management technology solutions for employers and health plans. It began doing business under the BENEFITFOCUS mark since 2000.
The Complainant is the owner of a range of trade mark registrations for marks that consist of the element “BENEFITFOCUS”, including United States Trade Mark Registration No. 2,496,059 for BENEFITFOCUS, registered on October 9, 2001, in class 35; and United States Trade Mark Registration No. 5,483,411 for BENEFITFOCUS, registered on June 5, 2018, in classes 41 and 42.
The Complainant also registered and operates a domain name
The Respondent is 杨智超 (Zhichao Yang), China.
The disputed domain name was registered on August 28, 2021. At the date of this Decision, the disputed domain name resolves to an active pay-per-click webpage that lists out multiple third-party links related to different advertisements covering content such as “HR Benefits”, “HR Services Company” and “HR Employee Services”.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to the Complainant’s BENEFITFOCUS mark. The Complainant has incontestable rights in the BENEFITFOCUS mark. The disputed domain name is an example of typosquatting. It wholly incorporates the BENEFITFOCUS mark preceded by the prefix “www” which is a common element for any URL and such addition in a domain name does not prevent a finding of confusing similarity.
The Complainant further alleges that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has not authorized or licensed the Respondent to use the BENEFITFOCUS mark. The Respondent registered the disputed domain name to intentionally create a likelihood of confusion with the Complainant’s well-known BENEFITFOCUS mark in order to create initial interest confusion and attract Internet users to the resolved website wherein the Respondent would profit from the pay-per-click sponsored advertisements featured on the website. Further, the Respondent is not commonly known by the disputed domain name.
The Complainant finally asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant’s BENEFITFOCUS mark is well-known, and the Respondent has no relationship with the Complainant or the BENEFITFOCUS mark. By registering the disputed domain name which is virtually identical to the Complainant’s mark, the Respondent knew of and specifically targeted the Complainant’s BENEFITFOCUS mark in bad faith. The Respondent registered the disputed domain name to create confusion and drive Internet traffic to the resolved website in order to generate click-through revenue for the Respondent’s own financial gain via the sponsored advertisements featured on the website. In particular, the sponsored advertisements featured on the website are directly related to the Complainant’s products and services.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingInitially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the registrant for the disputed domain name is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding for the reasons summarized below:
(a) the disputed domain name is comprised of characters from the ISO basic Latin alphabet, from which the English alphabet and language is derived;
(b) the disputed domain name is being used and resolved to a website featuring pay-per-click advertisements and the language of the advertisements is English;
(c) the I.P. address associated with the resolved website is owned by Team Internet AG, a holding company headquartered in Germany operating in the field of traffic monetization and domain services. The I.P. address also appears to be associated with Next Dimension Inc., a company related to Team Internet AG which is located in Canada. The Respondent, as a customer of Team Internet AG and Next Dimension Inc. can and should be presumed to be familiar with multiple languages as the Respondent is apparently conducting business with companies outside of China and one of those companies is located in Canada where English is an official language; and
(d) requiring translation of the Complaint into Chinese would place an unnecessary burden on the Complainant. The administrative proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below.
(a) the Complainant is a company based in the United States. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expenses;
(b) the Respondent’s choice of Roman letters for the disputed domain name and the content of the resolved website indicates some familiarity with the English language;
(c) even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) the Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of his/her default.
(e) the Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this Decision in English.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the BENEFITFOCUS mark.
The Panel notes that the disputed domain name is comprised of the BENEFITFOCUS mark in its entirety. The BENEFITFOCUS mark occupies a dominant position and is instantly recognizable in the disputed domain name. Further, it is accepted by previous UDRP panels that the addition to the complainant’s trade mark of other words or terms whether descriptive, geographical, pejorative, meaningless, or otherwise would not affect the confusing similarity of the domain name from the registered trademark under the first element of the Policy. As such, the Panel finds that the additional element “www”, the accepted acronym for “World Wide Web” and a common element for any URL, would not preclude a finding of confusing similarity between the BENEFITFOCUS mark and the disputed domain name. See sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Lastly, it is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, the Panel finds that the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsIn circumstances where the Complainant possesses exclusive rights to the BENEFITFOCUS mark whereas the Respondent seems to have no trade mark rights, and considering the facts and arguments set out above, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of terms that are identical or closely similar to “benefitfocus”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain name or otherwise has rights or legitimate interests in it. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s BENEFITFOCUS mark or register the disputed domain name. The Respondent is not making a noncommercial use of the disputed domain name in the terms of paragraph 4(c)(iii) of the Policy since at the date of this Decision the disputed domain name resolves to a website with links to third-party websites which directly reference the Complainant’s business. Such usage may reasonably be assumed to be commercial in its intent and effect. Past UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s BENEFITFOCUS mark was registered well before the registration of the disputed domain name. Search results using the key words “benefitfocus” on the Internet search engines direct Internet users to the Complainant and its business, which indicates that an exclusive connection between the BENEFITFOCUS mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s BENEFITFOCUS mark when registering the disputed domain name.
Section 3.1.4 of the WIPO Overview 3.0 states that “[…] mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain name, which was registered by an unaffiliated individual, incorporates the BENEFITFOCUS mark preceded by the descriptive “www” element in the usual URL format. The lack of the “dot” in between the two elements shows a bad faith intent by the Respondent to take advantage of a common typographical error by Internet users when entering web addresses.
The dispute domain name currently directs Internet users to a parking website where Internet users are presented with different third-party websites of a commercial nature, some of which are the Complainant’s competitors. The adoption by the Respondent of the “pay-per-click” business model using the Complainant’s trade mark without authorization for the purpose of attracting Internet users is an example of bad faith under the Policy, which in conjunction with the composition of the disputed domain name may lead Internet users to be confused into thinking, even if only initially, that this website is in some way endorsed by the Complainant. Such use constitutes evidence of bad faith registration and use as contemplated under paragraph 4(b)(iv) of the Policy.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain name and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain name as discussed above, the Panel is led to conclude that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 disputed domain name
Rachel Tan
Sole Panelist
Date: November 26, 2021