ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Zocdoc, Inc. v. Nicholas Diaz Case No. DAI2024-0071 1. The Parties Complainant is Zocdoc, Inc., United States of America (“United States” or “U.S.”), represented by Markmonitor Inc., United States. Respondent is Nicholas Diaz, United States. 2. The Domain Name and Registrar The disputed domain name (the “Disputed Domain Name”) is registered with Hexonet Services Inc / 1API GmbH (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2024. On October 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 8, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to Complainant on November 11, 2024, 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 November 18, 2024. 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 November 19, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2024. Respondent sent an informal email communication to the Center on November 18, 2024. The Center informed the Parties about the commencement of panel appointment process on December 16, 2024.
page 2 The Center appointed Richard W. Page as the sole panelist in this matter on December 26, 2024. 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 was founded in 2007 in New York City and operates “Zocdoc” which is a leading U.S. healthcare marketplace and telehealth platform. Complainant connects millions of patients each month to nearly 100,000 providers across 250 specialties nationwide, including dermatology, primary care, urgent care, mental health care, online therapy, and online psychiatry. The platform also functions as a physician and dentist rating and comparison database. Since its inception, Complainant has used an innovative approach to healthcare scheduling, resulting in Complainant’s last reported valuation of USD 1.8 billion in 2015. Complainant continually receives press coverage in such well-known publications and media outlets as CNBC, Modern Healthcare, Fast Company, Fortune, and NPR. Complainant continues to develop its Zocdoc Platform, introducing Guided Search in February 2024, providing patients with a more tailored set of results based on their unique care needs so they can select the right provider and book with greater confidence. Complainant also launched its Integration Partner Program in March 2024, deepening the partnerships with leading electronic health record (EHR) and practice management software (PMS) companies. Complainant became aware of Respondent’s registration of the Disputed Domain Name which is identical to its ZOCDOC mark, in combination with the country code Top-Level Domain (ccTLD) “.ai”. The Disputed Domain Name was registered on December 27, 2022. The Disputed Domain Name currently resolves to a For Sale Page, displaying a message “This domain is available for sale!” next to an online form which visitors can use to “Get a price in less than 24 hours.” Complainant is the owner of numerous trademark registrations for its business name and highly distinctive ZOCDOC mark (the “ZOCDOC Mark”), including without limitation the following: International Registration No.1086554, registered on July 15, 2011, duly renewed and covering goods and services in class 44; International Registration No. 1328765, registered on August 16, 2016, covering goods and services in classes 9 and 42; and United States Registration No. 5098998, registered on December 13, 2016, duly renewed and covering goods and services in classes 9, 42, and 44. Complainant operates a domain name at , registered on April 30, 2007, which resolves to Complainant’s principal website. 5. Parties’ Contentions A. Complainant Complainant contends that the Disputed Domian Name incorporates the ZOCDOC Mark without any additional terms.
page 3 Complainant further contends that the ccTLD “.ai” in the Disputed Domain Name is a standard registration requirement and should therefore be disregarded. The Disputed Domain Name should be considered as identical to the ZOCDOC Mark. Complainant alleges that Respondent is not affiliated with Complainant in any way and has not been authorized by Complainant to use or to register the ZOCDOC Mark or to seek registration of any domain name incorporating the ZOCDOC Mark. Complainant further alleges that Respondent is neither commonly known by the name “Zocdoc” nor “Zocdoc AI” nor is in any way affiliated with Complainant. Complainant further alleges that the ZOCDOC Mark is unique as it does not have any meaning in the English language, which is used by Respondent as the language of the website to which the Disputed Domain Name resolves, nor in any other language, making it highly unlikely that the registration of the Disputed Domain Name was a mere coincidence or that Respondent was doing anything other than misappropriating Complainant’s business name and trademark. Accordingly, it cannot be inferred Respondent is making either a bona fide or a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant further alleges that the Disputed Domain Name resolves to a For Sale Page, displaying a message “This domain is available for sale!” next to an online form inviting visitors to “Get a price in less than 24 hours.” Therefore, it is clear that Respondent has no intention to develop a legitimate activity through the Disputed Domain Name and that Respondent is trying to capitalize on Complainant’s reputation. Such is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. Complainant submits that Respondent knew or should have known of Complainant’s right in the ZOCDOC Mark when it registered the Disputed Domain Name. Complainant further submits that the Disputed Domain Name was registered contemporaneously with Complainant’s publication of the 2023 What Patients Want Report, which highlighted the use of AI (artificial intelligence) as one of the key trends and predictions for the year 2024 in the healthcare industry. Complainant further submits that the ccTLD “.ai” technically denotes Anguilla, United Kingdom. It has become a popular ccTLD because of the heightened interest in AI in the tech sector of the global economy. Complainant further submits that, other than the For Sale Page, Respondent has not posted any content on the website to which the Disputed Domain Name resolves. Thus, Respondent has essentially engaged in passive holding. Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. The Respondent asked about the Complaint on November 18, 2024. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.” The informal email communication sent by Respondent on November 18, 2024 does not constitute a response to the issues raised by Complainant.
page 4 Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the three essential elements of the claims are met. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3. Paragraph 4(a) of the Policy directs that Complainant must prove each of the following: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the ZOCDOC Mark in which Complainant has rights; and, ii) that 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 WIPO Overview 3.0, section 1.2.1 states that registration is prima facie evidence of Complainant having enforceable rights in the ZOCDOC Mark. Complainant has shown rights in respect of the ZOCDOC Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the ZOCDOC Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. The ccTLD “.ai” in the Disputed Domain Name is a standard registration requirement and is therefore disregarded. WIPO Overview 3.0, section 1.11.1. The entirety of the ZOCDOC Mark, without additional terms, is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is identical to the ZOCDOC Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving Respondent lacks rights or legitimate interests in the Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Paragraph 4(c) of the Policy allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
page 5 (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the ZOCDOC Mark. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names: (i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the ZOCDOC Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the ZOCDOC Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the ZOCDOC Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. In the present case, the Panel notes that Respondent has posted a For Sale Page showing its intent to sell the Disputed Domain Name in violation of paragraph 4(b)(i) of the Policy. In addition, Respondent has attempted to attract Internet users to its website for financial gain in violation of paragraph 4(b)(iv). The Panel further finds that identity (particularly domain names incorporating the mark) to a famous or well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. The Panel finds that Complainant has established the third element of the Policy.
page 6 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 be transferred to Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: January 9, 2025
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