The Complainant is Allergy Partners, P.L.L.C, 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 / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, Panama.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 7, 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 October 9, 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 October 13, 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 October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on November 17, 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 is a large, allergy, asthma and immunology practice based in the United States. It was founded in 1977 by Dr. J. Spencer Atwater Jr. and initially traded under his name. In 1994, the name of the business changed to Allergy Partners, P.A. and the Complainant has traded as ALLERGY PARTNERS from that time. The practice has grown significantly since inception; the Complainant presently has a team of 173 healthcare professionals and operates from over 125 locations across 20 states.
The Complainant has secured two trade mark registrations for ALLERGY PARTNERS, including United States Service Mark, registration number 4955397, in class 44. This mark was registered on May 10, 2016 and claims a first use in commerce date of February 1994. Additionally, the Complainant owns and operates the domain name
The disputed domain name was registered on April 22, 2016. It resolves to a landing page containing pay-per-click (“PPC”) links to third party products and services including “Medical Appointment Scheduling for Vaccination”, “EHR Health and Medical Records System” and “Patient Appointment Scheduling System”. The landing page also contains a notice that the disputed domain name may be for sale together with a link to a third party website on which it is advertised for sale at a price of USD 2884.
5. Parties’ Contentions A. ComplainantThe Complainant says that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which it has rights. It refers to its registered trade marks for ALLERGY PARTNERS, full details of one of these marks having been set out above. Whilst its marks were registered on May 10, 2016, the effective date is the date of filing, namely August 21, 2015. Additionally, the Complainant has common law trade mark rights in ALLERGY PARTNERS dating back to February 1994, when it first begin using this mark in commerce in the United States. Accordingly, such rights arose 22 years before the Respondent registered the disputed domain name in April 2016. The disputed domain name consists of a common, obvious or intentional misspelling of the Complainant’s ALLERGY PARTNERS mark and is therefore confusingly similar to it.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services and has not made demonstrable preparations to do so. The disputed domain name resolves to a website containing PPC links to third-party products as well as listing it for sale. Furthermore, having regard to the near-identicality between the disputed domain name and the Complainant’s mark, it is likely that the Respondent had actual knowledge of the Complainant’s mark and registered it in order to attract Internet users to its website for its own financial gain. Such use does not provide the Respondent with any rights or legitimate interests; see CenturyLink Intellectual Property LLC v. Above.com Domain Privacy / Protection Domain,
WIPO Case No. D2017-0144. Moreover, the Respondent is not commonly known by the name “ALLERGY PARTNERS” or “ALERGY PARTNERS”, nor is it authorised by the Complainant to use its mark or the disputed domain name, nor does the use it is making of the disputed domain name comprise a legitimate noncommercial or fair use of it.
Finally, the Complainant says that the disputed domain name was registered and is being used in bad faith. Registration of a well-known trade mark as a domain name can in itself be a clear indication of bad faith.
As at the date of registration of the disputed domain name, the Respondent knew of, and targeted, the Complainant’s ALLERGY PARTNERS mark, as evidenced by the fact that the disputed domain name wholly incorporates the Complainant’s mark and is virtually identical to its
WIPO Case No. D2017-0932. The Respondent registered the disputed domain name with the sole intent of driving Internet traffic to its website in order to generate click-through revenue and to sell the disputed domain name for its own financial gain.
The Respondent’s use of the disputed domain name creates initial interest confusion to Internet users, which is sufficient to establish bad faith use; see for example, Converse Inc. v. Perkins Hosting,
WIPO Case No. D2005-0350. Moreover, use of a domain name in order to operate a website containing PPC links can comprise evidence of bad faith use if, as here, the respondent is intentionally exploiting the complainant’s goodwill and reputation in its mark. Moreover, the Respondent is offering the disputed domain name for sale at a price in excess of its documented out-of-pocket costs relating to it, which comprises bad faith use within the meaning of paragraph 4(b)(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsDealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the 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.
A. Identical or Confusingly SimilarThe Complainant has provided details of the service marks it owns for ALLERGY PARTNERS, including the registration in respect of which full details have been provided above, which establish its rights in this mark. The Complainant’s assertion that it also has common law trade mark rights in ALLERGY PARTNERS is considered below in the context of the third element.
The Complainant’s service marks were each registered on May 10, 2016, that is after the date of registration of the disputed domain name on April 22, 2016 but before the filing of the Complaint. This is sufficient for them to be relied on for the purpose of the first element. As explained at section 1.1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed”.
As a technical requirement of registration, the Top-Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s ALLERGY PARTNERS mark and the disputed domain name is the omission of one of the two “l”s from the first word of the Complainant’s mark. This small difference does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.9 of the WIPO Overview 3.0: “ A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
The disputed domain name comprises an obvious misspelling of the Complainant’s ALLERGY PARTNERS service mark and the Panel accordingly finds that it is confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or legitimate interests in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
So far as the first of these circumstances is concerned, a parked page comprising PPC links will not represent a bona fide offering where the links exploit the reputation and goodwill of a complainant’s mark; see, by way of example, AMP Capital Investors Limited v. Xavier Dylan,
WIPO Case No. D2021-0904 and Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,
WIPO Case No. D2016-2302. The links on the Respondent’s webpage such as “Medical Appointment Scheduling for Vaccination” and “Patient Appointment Scheduling System” relate, at least indirectly, to the health services which the Complainant provides and, in these circumstances, do not amount to a bona fide offering of goods and services. But in any event, irrespective of the extent to which such links are associated with the Complainant’s services, the Respondent’s activities do not comprise a bona fide offering of goods and services because it is using the repute of the Complainant’s mark and the confusing similarity to it of the disputed domain name in order to attract Internet users to its webpage, and thereby derive a commercial advantage from the resulting confusion. Nor does offering the disputed domain name for sale amount to a bona fide offering of goods and services; see, for example, Educational Testing Service v. John Krzysik,
WIPO Case No. D2018-0931.
There is no evidence that the Respondent has been commonly known by the disputed domain name and the second circumstance under paragraph 4(c) of the Policy is therefore inapplicable. The third circumstance is also inapplicable; the use the Respondent is making of the disputed domain name is commercial in character and the strong likelihood that the disputed domain name will be associated by Internet users with the Complainant prevents its use from being considered fair.
The Complainant has made out 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 Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant’s service mark referred to above was applied for in August 2015, that is prior to the date of registration of the disputed domain name on April 22, 2016, but not registered until May 10, 2016. As explained at section 3.8.1 of the WIPO Overview, 3.0, save for certain specific scenarios, where a respondent registers a domain name before the complainant’s trade mark rights accrue, panels will not normally find bad faith on the part of the respondent. Whilst, in its submissions in respect of the first element, the Complainant has asserted that the priority date of its mark is the date of filing, its enforceable rights only arise on registration and a pending trademark application does not, in itself, establish trademark rights for the purposes of the Policy.
The Complainant additionally asserts, however, that it has common law trade mark rights in ALLERGY PARTNERS. Specifically, it says that, as at the date of registration of the disputed domain name, it had been using ALLERGY PARTNERS as its trading style for 22 years (as confirmed by the first use in commerce date in its trade mark application), that it also owns and operates the domain name
WIPO Case No. D2017-1380. The underlying facts of that case were substantially different from those in these proceedings and, in those proceedings, the registration of the Complainant’s mark (just) pre-dated the registration of the domain name in issue.
The Complainant’s evidence is thin when matched against the standard required by UDRP panels of complainants asserting common law trade mark rights; see, for example, GL Eletro-Eletrônicos Ltda. v. WhoisGuard Protected, WhoisGuard, Inc. / Joao Victor,
WIPO Case No. D2021-0578. Having regard to its powers under paragraphs 10 and 12 of the Rules and in accordance with the practice adopted by many UDRP panels in similar circumstances (see, by way of example Navasard Limited v. Valentine Kobzar,
WIPO Case No. D2019-2084) the Panel has visited the Internet archive known as the Wayback Machine in order to consider cached pages of the Complainant’s website and thereby obtain additional information as to the Complainant’s repute at the date of registration of the disputed domain name. These establish that, the Complainant has been using its domain name
Having regard to the extent of the Complainant’s repute in ALLERGY PARTNERS as at the date of registration of the disputed domain name, coupled with the confusing similarity between the disputed domain name and the Complainant’s ALLERGY PARTNERS mark, it is very likely that the Respondent was aware of the Complainant and its mark as at the date of registration of the disputed domain name and that it was registered by the Respondent in order to take unfair advantage of the Complainant’s mark. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,
WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.
Whilst the use of a domain name to point to a parking page hosting PPC sponsored links is not inherently objectionable, such conduct can constitute bad faith use if the respondent is capitalizing on the fame of the complainant’s mark in order to divert Internet users to its website. That reflects the position here, in that the Respondent is using the repute of the Complainant’s mark in order to attract Internet users to its website who are likely to assume, from the confusing similarity between the disputed domain name and the Complainant’s ALLERGY PARTNERS mark, that the disputed domain name is connected with the Complainant and its services. The fact that such users would, on reaching the Respondent’s website realize that this is not the case is immaterial because, by that point, the Respondent will have gained the opportunity of earning advertising revenue from visitors who click on the sponsored advertising links; see Yahoo! Inc. v. Hildegard Gruener,
WIPO Case No. D2016-2491. The Respondent’s conduct therefore falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, it has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
Additionally, the disputed domain name is advertised for sale at a price of USD 2,884. This sum will likely be well in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. The only likely potential buyers are the Complainant or one of its competitors. The offering for sale of the disputed domain name therefore amounts to bad faith registration and use within the circumstance described at paragraph 4(b)(i) of the Policy; see Warners’ Stellian Company, Inc. v. Moniker Privacy Services and HK Domain Privacy,
WIPO Case No. D2013-1886.
The Panel therefore finds, for the above reasons, that the disputed domain name was registered and is being used in bad faith.
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
Antony Gold
Sole Panelist
Date: December 1, 2021