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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Delta Dental Plans Association v. Fundacion Private Whois / PPA Media Services

Case No. D2012-1440

1. The Parties

The Complainant is Delta Dental Plans Association of Oak Brook, Illinois, United States of America (“U.S.”) represented by Neal, Gerber & Eisenberg, U.S.

The Respondent is Fundacion Private Whois of Panama, Panama and PPA Media Services of Santiago, Chile.

2. The Domain Name and Registrar

The disputed domain name <nedeltadental.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2012. On July 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 20, 2012, 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 July 20, 2012 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 July 24, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2012.

The Center appointed Alistair Payne as the sole panelist in this matter on August 23, 2012. 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 has since the 1960’s provided dental and vision insurance services to customers throughout the U.S. It owns various trade marks for or incorporating its DELTA DENTAL mark dating from 1993 and including in particular word mark registration 3076313 for DELTA DENTAL filed on March 10, 2005. Since 1995 it has maintained a website at the domain name <deltadental.com>.

The disputed domain name was registered on January 5, 2008. The disputed domain name was subsequently transferred after the commencement of these proceedings to PPA Media Services.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has built up very substantial goodwill in its DELTA DENTAL mark as a result of substantial use for many years. It says that its business is operated through 39 member companies who are licensed to offer services under the DELTA DENTAL mark in specific regions of the U.S. Each company has to use the mark in its company or legal trading name together with a geographic indicator describing its territory. In addition each member must register a URL incorporating the DELTA or DLTA DENTAL trade names together with a geographic indicator. The Complainant notes in this regard that several of its members jointly trade under the name NORTHEAST DELTA DENTAL and has also registered the domain name <nedelta.com> on July 26, 1996.

The Complainant submits that the disputed domain name is confusingly similar to its DELTA DENTAL mark and differs only in the addition of the prefix “ne”. It says that the incorporation of its mark in its entirety is indicative of confusing similarity and relies on the decision in Bright Imperial Ltd. v. Senja Dumpin, WIPO Case No. D2009-1619 in which the UDRP panel found that the domain name <hqredtube.com> was confusingly similar to the complainant’s RED TUBE trade mark, even though the domain name included the prefix “hq”.

The Complainant submits that the Respondent does not use the disputed domain name for a bona fide offering of goods or services and does not own a relevant mark and is not known by the disputed domain name. It further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and is rather using the disputed domain name to divert Internet users to the Respondent’s website which contains sponsored links to the Complainant’s competitors. The Complainant submits accordingly that there is nothing to suggest that the Respondent has rights or legitimate interests in the disputed domain name and on the contrary that purposeful diversion of Internet users to its website which features sponsored links to competitors is illegitimate activity (Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891).

The Complainant submits that the disputed domain name was registered in 2008 but that it only became aware of the registration in 2012 at which time it sent a letter of demand to the original registrant and subsequently to the current Respondent and that it never received a reply to this correspondence. It says that based on the widespread use and repute attaching to the Complainant’s DELTA DENTAL mark that the Respondent must have been aware of the mark, or at the very least had constructive notice of the mark’s registration. The fact that the disputed domain name wholly incorporates the DELTA DENTAL mark and that the Respondent’s website contains links to the Complainant’s competitors is according to the Complainant further evidence that the Respondent must have been aware of the Complainant’s rights at the date of registration of the disputed domain name.

The Complainant further submits that the Respondent registered the disputed domain name in bad faith by intentionally adopting a domain name that fully incorporates the Complainant’s well-known DELTA DENTAL mark, which is likely to create a likelihood of confusion with the Complainant’s DELTA DENTAL Marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name.

Based on the Complainant’s investigations it says that the disputed domain name <nedeltadental.com> resolves to “ww1.nedeltadental.com” which is a parked page offering sponsored links. It submits that the fact that the disputed domain name resolves to a website containing links to the Complainant’s competitors serves not only to divert Internet users based on the Complainant’s goodwill but which also threatens to divert actual customers away from the Complainant, is further evidence of the Respondent’s use of the disputed domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it has rights in its DELTA DENTAL mark under U.S, word mark registration 3076313 dated January 10, 2006.

The disputed domain name wholly incorporates the disputed domain name but also incorporates the prefix “ne”. The Panel finds that the most distinctive element of the disputed domain name is the DELTA DENTAL mark and the addition of the prefix “ne” does not sufficiently distinguish the disputed domain name from the Complainant’s mark. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s DELTA DENTAL mark. UDRP panels have found confusing similarity in similar circumstances where the Complainant’s mark is wholly incorporated into the disputed domain name, for example, Bright Imperial Ltd. v. Senja Dumpin, WIPO Case No. D2009-1619.

B. Rights or Legitimate Interests

There is no evidence to suggest that the Respondent is known by the disputed domain name, has made any bona fide offering service of goods under it, or is making an appropriate fair or noncommercial use. In the circumstances of the Panel’s findings in relation to bad faith as set out below, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in light of the Complainant’s prima facie case.

C. Registered and Used in Bad Faith

By the date of registration of the disputed domain name in 2008, the Complainant had been using its DELTA DENTAL mark in the U.S. for many years, had secured a combined logo and word mark featuring DELTA DENTAL in 1993 and had obtained a plain word mark registration for DELTA DENTAL in 1996 as well as various other registrations incorporating its mark or variations of it. In addition it had since 2005 maintained a website at “www.deltadental.com”. In these circumstances and considering that the Respondent’s mark wholly incorporates the DELTA DENTAL mark, only differs from it in that it also includes the prefix “ne” and resolves to a place keeper website containing links to the Complainant’s competitors, it is difficult to believe that the Respondent registered the disputed domain name independently and without knowledge of the Complainant’s mark.

In these circumstances and in the absence of any explanation to the contrary and of any response to the Complainant’s pre-action letter of demand and follow-up correspondence, the Panel infers that the Respondent’s choice of and use of the disputed domain name to resolve to a place keeper website at “ww1.nedeltadental.com” which contains links to the Complainant’s competitors amounts to an intention to divert Internet users to its website by creating a likelihood of confusion with the Complainant’s DELTA DENTAL mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name under paragraph 4(b)(iv) of the Policy (for similar cases see for example Lardi Limited v. Belize Domain WHOIS Service Lt, WIPO Case No. D2010-1437 and Société Nationale des Chemins de fer Français - SNCF v. Damian Miller / Miller Inc., WIPO Case No. D2009-0891).

The fact that the original registrant of the disputed domain name transferred the disputed domain name to the current Respondent after the date of the Complainant’s initial letter of demand only serves to reinforce the Panel’s view that the Respondent has registered and used the disputed domain name in bad faith.

Accordingly the Panel finds that the disputed domain name was registered and used in bad faith and the Complaint succeeds under the third element 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 <nedeltadental.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Dated: September 5, 2012

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