WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dominion Dental USA, Inc. v. I S, ICS INC

Case No. D2019-1870

1. The Parties

The Complainant is Dominion Dental USA, Inc., United States of America (“United States”), represented by Latimer LeVay Fyock LLC, United States.

The Respondent is I S, ICS INC, United Kingdom¹ .

2. The Domain Name and Registrar

The disputed domain name <dominionproviders.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, 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 August 7, 2019 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 August 12, 2019.

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 August 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2019.

The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on September 24, 2019. 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 states that it is a leading insurer and administrator of dental and vision benefits in the United States and currently serves nearly 1 million customers. The Complainant also states that it operates several distinct domain names that assist patients and providers in securing its services. These distinct domain names include <dominiongroups.com>, <dominionmembers.com>, <dominionprovider.com>, <dominionnational.com> and <dominiondental.com> (which directs customers to <dominionnational.com>).

The Complainant states that of these domain names, <dominiongroups.com>, <dominionmembers.com>, and <dominionprovider.com> and the associated websites allow for entry of sensitive personal information and that the domain name <dominionprovider.com> presents the greatest risk of hacking because it is accessed by dental offices whose servers store sensitive and private data on potentially thousands of patients. The Complainant states that it has been using this domain name since 2011 and that dental offices rely on the security of <dominionprovider.com> when entering sensitive information.

The Complainant also states that it has rights in its DOMINION, DOMINION NATIONAL, DOMINION DENTAL, and DOMINION USA trade marks (collectively, the “DOMINION trade marks”). In this respect, it is the owner of the following United States trade mark registrations:

The Complainant states that it has used and operated under its DOMINION DENTAL trade mark since 1996 and has provided services under its DOMINION trade marks to customers throughout the United States. It states that customers have come to trust and rely upon the DOMINION trade marks which they also encounter as domain names.

The disputed domain name <dominionproviders.com> was registered on April 30, 2016 (the “Relevant Date”) and was first active on August 5, 2018.

The Complainant states that the disputed domain name resolves to a page that infects users’ computers with Malware. The Complainant has provided evidence of this (attached to the Complaint as Annex 7). The Complainant also states that this Malware is particularly dangerous to dental offices which rely on the <dominionprovider.com> website because if it were to be downloaded onto their server, patients’ personal information would be at risk.

5. Parties’ Contentions

A. Complainant

The Complainant asserts its rights in the DOMINION trade marks. The Complainant contends that the disputed domain name is confusingly similar to its DOMINION trade marks. It states that the most dominant feature of the disputed domain name is DOMINION which is the primary component of its name and trade marks. The Complainant also states that the term “providers” in the disputed domain name is non-distinctive, descriptive and generic. It further states that the disputed domain name is confusingly similar to its own domain name <dominionprovider.com> as the Respondent has merely added the letter “s” to the term “provider”.

The Complainant also asserts that the Respondent has no rights to the disputed domain name. In this respect, the Complainant states that the Respondent is not affiliated or related to it in any way and is not licensed by it or otherwise authorized to use the DOMINION trade marks.

The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not commonly known by the disputed domain name and has not acquired any trade mark or service rights in the DOMINION name or mark. The Complainant contends that the Respondent’s use of the disputed domain name is to unlawfully disseminate malicious computer software or malware. The Complainant states that this puts customers of the Complainant and their patients at risk of having their private medical and financial information exposed.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith and that this is evidenced by the fact that the disputed domain name directs users to a website that contains malware. The Complainant also contends that the Respondent has previously engaged in a pattern of registering domain names closely corresponding with the names of other trade mark owners and has referred to a number of UDRP decisions in support. It contends that the decisions show a pattern of conduct on the part of the Respondent in registering domain names in order to prevent trade mark holders from reflecting their marks in corresponding domain names and potentially using them in connection with fraudulent activity.

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) That the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) That the 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

The Complainant has provided evidence of its registrations in relation to the DOMINION trade marks in the United States. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the DOMINION trade marks with a history of use going back to 1996. The Panel is satisfied that the Complainant is well-known by its DOMINION trade marks in the United States as an insurer and administrator of dental and vision benefits.

The Panel finds that the disputed domain name contains as a first and dominant element the primary component of the DOMINION trade marks, combined with the generic term “providers”. The use of this term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The Panel also notes that it is well established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparison under the first element.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s DOMINION trade marks.

Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favour 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 one 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 had acquired no trade mark 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 trade mark 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.

The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any trade mark or service rights in the DOMINION name or mark. The Panel is also satisfied that the Complainant has not licensed or otherwise authorized the Respondent to use its DOMINION trade mark.

The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.

The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is also satisfied that the disputed domain name has been registered in bad faith for the following reasons:

(i) At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its DOMINION trade marks, the Complainant’s exclusive rights in those trademarks and the goodwill residing in those trade marks. The Respondent’s adoption of a domain name which differs from a domain name of the Complainant merely by the addition of an “s” to the word “provider” supports a finding that the Respondent knew of the Complainant, the Complainant’s DOMINION trademarks and the Complainants services at the time of the registration of the disputed domain name.

(ii) The Panel agrees that the addition of an “s” to the term “provider” as it appears in the Complainant’s own domain name is also likely to mislead the Complainant’s customers into believing that the disputed domain name belongs to the Complainant.

(iii) Further, without any rights or legitimate interests and noting the circumstances of the case, the Respondent’s registration of the disputed domain name is indicative of bad faith.

(iv) The Panel also notes the list of cases where the Respondent was found by other panels to have registered third party trade marks as domain names with the intention of exploiting, in one form or another, the goodwill associated with these trade marks. This is also indicative of bad faith on the part of the Respondent in registering the disputed domain name.

The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons:

(i) The Complainant has provided evidence (attached to the Complaint as Annex 7) that the website to which the disputed domain name resolves infects users’ computers with Malware. The Expert finds that this is not a bona fide offering of goods or services, nor is this a legitimate noncommercial or fair use.

(ii) The decision of Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., WIPO Case No. D2015-2140 noted that dissemination of malware through a predictable typo-variant is often used to steal consumer information for commercial gain and that this is evidence of bad faith. There is no question that the addition of “s” to the term “provider” is a predictable typo-variant. Further, and as also noted in the decision in Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., ut supra., even if it is unclear whether or not the Respondent intended to manipulate the mark in question for ordinary commercial gain, the Respondent’s malicious conduct is still considered evidence of bad faith following early decisions such as Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303.

Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.

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 <dominionproviders.com> be transferred to the Complainant.

Andrew Brown Q.C.
Sole Panelist
Date: October 2, 2019

¹ The Complaint was originally filed against the privacy service Registration Private, Domains By Proxy, LLC.