The Complainant is EmblemHealth Services Company, LLC of New York, New York, United States of America, represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Hou Guang Bin of Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with Ourdomains Limited (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 7, 2015. On December 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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, however an email was returned to the Center indicating a delivery failure, and the Written Notice sent by the Center by fax to the Respondent was not delivered due to an invalid telephone number. The proceedings commenced on December 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 4, 2016.
The Center appointed Stéphane Lemarchand as the sole panelist in this matter on January 13, 2016. 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 a United States non-profit organization formed in 2006 with the merger of Group Health Incorporated and the Health Insurance Plan of Greater New York. It provides health care coverage and insurance plans, as well as administrative services to approximately 3.4 million people in the United States.
The Complainant is the exclusive owner of the United States trademark registration for EMBLEMHEALTH No. 3641062 filed on August 6, 2008, and registered on June 16, 2009, for services in classes 36 (administration of prepaid health care plans) and 44 (managed health care services and health care in the nature of health maintenance organization services).
The above trademark claims a date of first use on September 8, 2008 and an identical date of first use in commerce.
The Complainant also owns domain names, including , registered by the Complainant on April 28, 2006, and , registered by the Complainant on April 9, 1999, from which it operates websites where it offers health care information and services.
The Disputed Domain Name was registered by the Respondent on November 2, 2014.
The Disputed Domain Name resolved, at the time of the Complaint, to a website featuring sponsored listings and advertising links related to health insurance.
Before instituting this proceeding, the Complainant sent three demand letters to the Respondent (on October 1, 12 and 22, 2015), seeking the transfer of the Disputed Domain Name. The Respondent never replied to any of these letters. 5. Parties' Contentions A. Complainant
The Complainant contends that it has spent a considerable amount of time and money protecting its intellectual property rights, and that the Disputed Domain Name is confusingly similar to the EMBLEMHEALTH registered trademark in that it incorporates the EMBLEMHEALTH trademark in its entirety. Thus, the Disputed Domain Name should be considered identical and confusingly similar to the Complainant's EMBLEMHEALTH trademark.
The Complainant also contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name in that:
a) the Respondent is not sponsored or affiliated with the Complainant in any way;
b) the Complainant has not given the Respondent permission to use the Complainant's trademark in any manner, including in domain names;
c) the Respondent is not commonly known by the Disputed Domain Name;
d) the Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with the Complainant's business; and
e) the Respondent registered the Disputed Domain Name significantly after the Complainant's first use in commerce of its trademark, after the Complainant filed for registration of its EMBLEMHEALTH trademark, and after the Complainant's registration of its domain name.
The Complainant further contends that the Disputed Domain Name was registered and is being used in bad faith in that:
a) the Respondent has demonstrated a knowledge of and familiarity with the Complainant's brand and business, so it is more likely than not that the Respondent knew of and targeted the Complainant's trademark;
b) the Respondent is using the Disputed Domain Name to display various links to third-party websites, some of which compete with the Complainant;
c) the Respondent is attempting to capitalize on typing errors committed by the Complainant's customers in trying to locate the Complainant on the Internet;
f) the Respondent has previously been involved in other UDRP cases, which provides evidence of a pattern of cybersquatting in which the Respondent is engaging; and
g) the Respondent has ignored the Complainant's attempts to resolve this dispute outside of this administrative proceeding.
The Complainant therefore requests that the Disputed Domain Name be transferred to it. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark 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.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered rights in the trademark containing the element "emblemhealth" in the United States, as well as domain names incorporating the trademark EMBLEMHEALTH.
Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
The only difference between the Complainant's trademark and the Disputed Domain Name is the addition of the country code Top-Level Domain ".co"; however, as it is well established, the addition of such kind of suffix is a distinction which typically does not change the confusing similarity and may be excluded from consideration as being a generic or functional component of a domain name (Belo Corp. v. George Latimer,WIPO Case No. D2002-0329).
The Panel therefore considers that the Complainant's trademark, which is reproduced in its entirety in the Disputed Domain Name string, is instantly recognizable in the Disputed Domain Name.
The Panel accordingly finds that the Disputed Domain Name is identical or confusingly similar to the trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) that before notice of the dispute, the Respondent used or made 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
(ii) that the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is 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 trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant.
However, the Complainant is required only to make out a prima facie case that the Respondent lack rights or legitimate interests. Once a prima facie case is made out, the burden shifts to the Respondent to come forward with appropriate evidence demonstrating its rights or legitimate interests in the Disputed Domain Name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441).
There is no evidence that the Respondent owns any rights corresponding to the Disputed Domain Name or has made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant states and the Panel accepts that it has never given the Respondent any license, permission or authorization to use the trademark EMBLEMHEALTH or to seek registration of any domain name incorporating that mark, or a variation of it.
The Panel considers that use of the Disputed Domain Name for redirection to a "parking website" which contains sponsored pay-per-click links including to commercial websites offering for sale identical or different kinds of goods and services to the Complainant does not provide rights or legitimate interests in the Disputed Domain Name.
Indeed, it is well known that the way in which many of these pay-per-click services operate is that the domain parking service operators obtain "click through revenue" when Internet users click on the "sponsored links" on the displayed page. Many of these services will then provide the domain name registrant with part of that "click through" revenue.
Although there is nothing per se illegitimate in using a domain parking service, it has been established in previous UDRP proceedings that linking a domain name to such a service with a trademark owner's name in mind and in the hope and expectation that Internet users searching for information about the business activities of the trademark owner will be directed to the parking service page, is a different matter and does not provide a legitimate interest in that domain name under the Policy (see, for example, Express Scripts, Inc. v. Windgather Investments Limited / Mr Cartwright,WIPO Case No. D2007-0267; and Owens Corning v. NA,WIPO Case No. D2007-1143).
There has been no evidence adduced to show that the Respondent has been commonly known by the Disputed Domain Name. In the instant case, the pertinent WhoIs information, confirmed by the Registrar, identifies the Respondent as "Hou Guang Bin" which does not resemble the Disputed Domain Name in any manner.
There also has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring links to third-party websites, some of which directly competing with the Complainant's business (links for individual health insurance, short term health insurance and low cost health insurance).
In the absence of any explanation from the Respondent as to why the Disputed Domain Name was registered, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
Accordingly, and in the absence of any Response from the Respondent, the Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name in light of the Complainant's prima facie case, and that paragraph 4(a)(ii) of the Policy is therefore satisfied in favor of the Complainant. C. Registered and Used in Bad Faith
The Complainant owns a trademark registration for EMBLEMHEALTH which well predates the registration date of the Disputed Domain Name. The Complainant has also been operating a website under the said name for almost ten years.
In the Panel's view, it is unlikely that the Respondent was not aware of the Complainant's trademark and website when registering the Disputed Domain Name.
The Panel therefore finds that the Respondent must have been well aware of the Complainant's mark and website at the time it registered the Disputed Domain Name. In particular, the Panel finds that the Respondent 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.
In addition, the Respondent failed to answer the numerous cease and desist letters sent by the Complainant. In this respect, the evidence shows that the contact particulars of the Respondent in the WhoIs database are invalid. Indeed, all attempts to communicate with the Respondent using the address and facsimile number have failed. According to previous UDRP proceedings, a registrant has a duty to act honestly and provide valid contact particulars when registering a domain name. The failure of the Respondent to do so in this case is further evidence of bad faith registration and use (Starwood Hotels & Resorts Worldwide, Inc., Sheraton LLC, Sheraton International IP, LLC v. Lin Qing Feng,WIPO Case No. D2014-0261).
The Panel is therefore satisfied that the Disputed Domain name was registered in bad faith.
The Panel is also satisfied that the Disputed Domain Name is being used in bad faith, in particular for attracting Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark.
Pay-per-click sponsored links on the Respondent's website are tailored to divert business to competitors of the Complainant and its services. There is therefore a demonstrated intent to attract Internet users to the Respondent's website for commercial gain (Blanco GmbH + Co KG v. A Domain Privacy / Transure Enterprise Ltd., WIPO Case No. D2012-2145).
Finally, the Panel notes that the Respondent has already been involved in a similar UDRP proceeding against another famous United States insurance company (The Hartford Fire Insurance Company v. Hou Guangbin, hou guang bin,WIPO Case No. D2014-1593).
In summary, the Respondent, by choosing to register and use the Disputed Domain Name which is confusingly similar to the Complainant's trademark, intended to ride on the goodwill of the Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the Disputed Domain Name and the conduct of the Respondent on the website to which the Disputed Domain Name resolves are indicative of registration and use of the Disputed Domain Name in bad faith.
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. Accordingly, the Complainant has proven the third element required by 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 be transferred to the Complainant.
Stéphane Lemarchand
Sole Panelist
Date: January 22, 2016
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