WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Byram Healthcare Centers, Inc. v. ICS Inc. / Contact Privacy Inc.

Case No. D2014-0027

1. The Parties

The Complainant is Byram Healthcare Centers, Inc. of the United States of America, represented by Novagraaf Nederland B.V., Netherlands.

The Respondent is ICS Inc. of Grand Cayman, Cayman Islands, British Overseas Territory of United Kingdom and Northern Ireland / Contact Privacy Inc. of Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain name <bryamhealthcare.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2014. On January 9, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent listed as the registrant differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2014, 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 amendment to the Complaint on January 14, 2014.

The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2014.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on February 11, 2014. 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 in the field of medical supplies and owns the trademarks BYRAM HEALTHCARE and BYRAM MEDSHOP. The Complainant has United States trademark registrations for its marks and the present Complaint is based on the trademark BYRAM HEALTHCARE. The Complainant registered the domain name <byramhealthcare.com> on January 14, 1998, and has also registered the domain names <mybyramhealthcare.com> and <byramedshop.com>.

The Respondent registered the disputed domain name <bryamhealthcare.com> on January 17, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant contends it is a leading supplier of disposable medical products in the United States and adopted the trademark BYRAM in1986. It specializes in diabetes supplies, ostomy supplies, wound care supplies, urology supplies, and incontinence supplies. It uses the BYRAM trademark extensively in commerce and has built substantial reputation and goodwill due to the quality services and the support it provides. It states that considerable time and money has been spent in advertising its services under the trademark. Mediq, an international retail and distribution company, acquired the Complainant in 2008.

The Complainant argues that the disputed domain name is phonetically, visually and conceptually similar to its registered trademark. The disputed domain name is a misspelling of the trademark BYRAM HEALTHCARE as the second and third letters “y” and “r” have been switched. The Complainant argues that the minor misspelling of its trademark does not create a new or different mark in which the Respondent can claim legitimate rights. Such insignificant modifications to a trademark are often referred to as “typo squatting” or “typo piracy”, which seek to take advantage of common errors of users typing domain names into their web browser. The Complainant further contends that domain names that constitute typo squatting are confusingly similar by definition and are registered to exploit the reputation of the trademark.

The Complainant argues that the Respondent has no rights or legitimate interests in respect of the domain name, as none of the circumstances under paragraph 4(c) of the Policy are applicable in the circumstances of the present case. The Complainant has further argued that in view of the fact that the Respondent does not have any trademark rights or reputation in BYRAM HEALTHCARE or BYRAM and that no permission or license has been given to the Respondent to use its mark, no commercial relationship exists between the parties. The Complainant further argues that the disputed domain name is not used for legitimate noncommercial purposes and states that it is likely that the Respondent was aware of Complainant’s rights at the time of registration of the disputed domain name. Even a simple online search would have revealed the Complainant’s registered trademark rights, states the Complainant.

The Complainant further argues that the disputed domain name has been redirected to a pay per click parking website since its registration in 2006. The fact that the domain name was recently assigned to a new registrant appears to be for purposes of cyber flight. The sponsored links on the webpage are in the same medical area as that of the Complainant’s business and therefore misdirects customers who are looking for the Complainant and its products. The use of the disputed domain name to redirect customers to its competitors is objectionable and is a form of unfair competition or bait and switch method that consumers should be protected from, urges the Complainant, and refers to the case Robert Bosch GmbH v. Asia Ventures Inc., WIPO Case No. D2005-0946.

The Complainant states the disputed domain name has been registered and used in bad faith. Due to its confusing similarity to the trademark, the disputed domain name causes initial interest confusion and attracts customers to the Respondent’s website for commercial gain. The confusion is further enhanced, as the links placed by the Respondent are in the same or similar area of medical supplies such as the Complainant’s business, such as ostomy care; wound care urology and incontinence supplies. Deliberately diverting customers by creating initial interest confusion and disrupting the Complainant’s business by the registration and use of a domain name in which the Complainant has rights, amounts to bad faith argues the Complainant.

The Complainant has provided evidence that the Respondent, ICS Inc. has been involved in the registration of domain names that are misspellings of well-known trademarks and has been named as respondent in many previous domain name disputes. The Complainant lists out forty-eight such cases where ICS Inc. has been named as respondent. These include cases involving the domain names <marlborrow.com>, <sanofi-aventis.com>, <sanofiadventis.com>, <sanofi-aventi.com> and <armaniparfume.com> and the Respondent was found to have registered and used domain names in bad faith in all these cases. Based on its submissions the Complainant requests for the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

The Policy under paragraph 4(a) stipulates that the Complainant must establish three elements in these proceedings in order to obtain the remedy of transfer of the disputed domain name.

(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 was registered and is being used in bad faith by the Respondent.

A. Identical or Confusingly Similar

The Complainant is required to establish the disputed domain name is identical or confusingly similar to a trademark in which it has rights under first prerequisite of paragraph 4(a) of the Policy.

In order to establish rights in the trademark BYRAM HEALTHCARE, the Complainant has filed documents that show it has registered trademark rights in the BYRAM HEALTHCARE mark. Trademark registration is considered prima facie evidence of rights in a mark. It is accordingly found that the Complainant has established statutory rights in the trademark BYRAM HEALTHCARE in these proceedings.

As to whether the disputed domain name is confusingly similar to the Complainant’s mark, the Complainant has argued that the disputed domain name is a misspelling of the Complainant’s trademark. Transposing letters is a common error that users make while typing a name into a web browser, and domain names that constitute typo squatting are by definition confusingly similar to the trademark it seeks to imitate. It is further argued by the Complainant the disputed domain name remains visually, phonetically and conceptually similar to its mark despite transposing two letters in the mark.

It is well established from several previous UDRP decisions that transposing letters in a trademark is a classic form of typo squatting. In AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230, pertaining to the domain name <allaincebernstein.com>, transposing the two letters “i” and “a” in the word “alliance” was found to be confusingly similar to the trademark ALLIANCEBERNSTEIN. It was further found that the domain name incorporates Complainant’s mark in it’s entirely, and that merely transposing two letters is a classic example of typo squatting, a practice by which a registrant deliberately introduces slight deviations into famous marks for commercial gain. The said decision also referred to the cases FirstRand International Limited, FirstRand Bank Limited v. Virtual Sky, WIPO Case No. D2007-0701 where it was found that the domain name <ebuks.com> was confusingly similar to the eBUCKS trademark, and also in ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 where the domain name <espnnews.com> was found confusingly similar to the ESPNEWS trademark. The Panel finds the disputed domain name in the present case is a similar form of typo squatting, where the second and third letters “y” and “r” have been transposed in the word “Byram” of the Complainant’s trademark. As discussed, merely transposing letters does not lessen the confusingly similar of the disputed domain name to the Complainant’s trademark.

The Complainant has accordingly satisfied the first element under paragraph 4(a) of the Policy that the disputed domain name is identical or confusingly similar to a trademark in which it has rights.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has urged that there are various grounds to indicate the Respondent’s lack of rights or legitimate interests in respect of the disputed domain name. The Complainant states that no permission or license has been given to the Respondent to use its mark and no commercial relationship exists between the parties and the disputed domain name is not used for any legitimate noncommercial purposes. The Complainant has argued that none of the circumstances under paragraph 4(c) of the Policy are applicable to the facts and circumstances in the present case.

The Respondent has not participated in these proceedings or filed any response to the Complaint. From the evidence on record, the Panel finds the website linked to the disputed domain name has numerous sponsored links; most of the links are related to similar area of medical supplies that the Complainant does business in. Using the trademark of the Complainant in which the Complainant has acquired repute, namely in the area of medical supplies to attract unsuspecting customers and then mislead them to other competitor sites, as argued by the Complainant, amounts to a form of bait and switch activity. It is precisely to curb such activity that the Policy has been designed. The overriding objective of the Policy is the protection of unsuspecting online consumers from being misguided or mislead by confusingly similar yet spurious domain names that imitate trademarks, such as the domain name registered by Respondent in the present case.

A domain name that misleads users does not confer legitimate rights or interests in favour of the Respondent. This view has been upheld in several decisions. See Hürriyet Gazetecilik ve Matbaacılık Anonim Şirketi v. Moniker Privacy Services / Kemal Demircioglu, WIPO Case No. D2010-1941, (where it was discussed that the registering a domain name incorporating a well-known trademark and using it to misdirect Internet users to websites with the apparent intention of earning click through revenue does not give rise to a legitimate interest).

The Complainant has accordingly satisfied the second requirement of paragraph 4(a) of the Policy and has put forward a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name was registered in bad faith and is being used in bad faith.

The Complainant has submitted that the disputed domain name has been used in bad faith as the Respondent has posted sponsored links on the website connected to the disputed dispute name. The Complainant has further submitted that due to the disputed domain name being confusing similar with its trademark, customers are attracted to the Respondent’s website believing it is the Complainant’s website. The confusion is further enhanced as the sponsored links placed by the Respondent are in the same or similar area of medical supplies, such as ostomy care, wound care, urology and incontinence supplies as the Complainant.

The Panel finds the submissions made by the Complainant is supported by sufficient material that indicates the Respondent is using the disputed domain name to redirect users to websites or other online locations that are competitors of the Complainant. The deliberate diverting of customers to disrupt the Complainant’s business is considered evidence of bad faith registration and use of the disputed domain name. See for instance Edmunds.com, Inc. v. Ult.Search, Inc., WIPO Case No. D2001-1319, where it was found that the registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use of the domain name.

It has been established in these proceedings that the Complainant has adopted and promoted the trademark prior to registration of the disputed domain name. Given the circumstances described in the case, it is the Panel’s view, that the use of the Complainant’s trademark in the disputed domain name is likely to mislead the public and Internet users that the disputed domain name is some how connected to the Complainant. For the reasons discussed, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith as envisaged under paragraph 4(b)(iv) of the Policy.

The Complainant has also stated that the Respondent ICS Inc. has previously been involved in registration of domain names that are misspellings of well-known marks. The Complainant has provided a list of domain name cases where the Respondent has been named as a respondent and found to have registered and used those domain names in bad faith. The Panel finds from the evidence presented, that the Respondent has clearly been involved in a pattern of conduct that confirms it has been habitually registering and using domain names that involve well known trademarks. See CBOCS Properties v. Privacy Protection Services, Inc. /ICS Inc. WIPO Case No. D2013-0700, (<crackerbarrelschedule.com>), where the learned panel in that case has provided a lengthy listing of the numerous cases where the Respondent ICS Inc. has been found to have abusively registered and used the domain names in bad faith as described under the Policy. The Panel accordingly finds the Complainant has put forward sufficient evidence of bad faith registration and use of the disputed domain name.

The Complainant has satisfied the third requirement of paragraph 4(a) of the Policy that the Respondent has registered the disputed domain name in bad faith and is using the disputed domain name in bad faith.

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 <bryamhealthcare.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist
Date: February 25, 2014