The Complainant is PatientKeeper, Inc., United States of America (“United States”), represented by Partridge Partners PC, United States.
The Respondent is Registration Private, Domains by Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <medstarpatientkeeper.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2021. On June 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 23, 2021, 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 June 29, 2021 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 June 30, 2021.
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 July 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 9, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on August 27, 2021. 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.
Since 1999, the Complainant has provided computer software products and services to medical institutions and healthcare professionals. These are used for a variety of purposes, including optimizing workflow, capturing and organizing patient information and records, and the provision of reimbursement and revenue assurance functionality.
The Complainant trades as “PatientKeeper” and it has registered a number of trade marks to protect this trading style. These include, by way of example only, United States trade mark for PATIENTKEEPER, registration number 2,567,019, registered on May 7, 2002 in class 9. The Complainant also owns the domain name <patientkeeper.com>, a subdomain of which, <medstar.patientkeeper.com>, is used in connection with its business relationship with MedStar Health, Inc.
The disputed domain name was registered on May 17, 2021. It resolves to a website which contains pay-per-click (“PPC”) advertising, including links such as “Patient Billing”, “Medical Billing Services” and “Patient Portal Systems”. The disputed domain name is also advertised for sale on a third party website, with offers solicited for a minimum amount of USD 899.
The Complainant says that the disputed domain name is identical or confusingly similar to the trade mark in which it has rights. It refers to its PATIENTKEEPER trade marks, full details of one of these marks having been provided above, and says that, as the disputed domain name incorporates the entirety of its mark, the addition of “medstar”, which is a third party trade mark, is insufficient to avoid a finding of confusing similarity. In fact, because the Complainant does business with Medstar Health Inc., the inclusion of “medstar” within the disputed domain name affirms the confusing similarity between the disputed domain name and the Complainant’s mark.
The Complainant says also that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain name to resolve to a website containing PPC links which relate to services provided by the Complainant. Clicking on the links leads to information relating to the Complainant’s competitors. The Respondent is trading off the Complainant’s goodwill and its use of the disputed domain name does not constitute a bona fide offering of goods or services.
The Respondent is not affiliated or related to the Complainant, nor is it licensed or otherwise authorized to use its PATIENTKEEPER trade mark. The Respondent is not commonly known by the disputed domain name and has no rights in the PATIENTKEEPER mark. Nor does the Respondent’s use of the disputed domain name comprise a legitimate non-commercial or fair use; it is using the disputed domain name for commercial purposes and its use falsely suggests affiliation with the Complainant.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the burden of production shifts to the Respondent to show otherwise.
Finally, the Complainant says that the Respondent registered and is using the disputed domain name in bad faith. Having regard to the fact that the Complainant’s PATIENTKEEPER mark is inherently distinctive and has been in continuous use since at least as early as 1999, the Respondent knew or should have known, when registering the disputed domain name that it was confusingly similar to the Complainant’s trade mark. Where a simple search would have revealed a complainant’s rights, a finding of bad faith may be made; see The Comerica Bank v. Rita Rodriguez, WIPO Case No. D2016-0417. Furthermore, the combination of PATIENTKEEPER and MEDSTAR within the disputed domain name, both of which are distinctive marks related to each other, cannot be a coincidence; see Bytedance Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Lawal Babatunde , WIPO Case No. DCO2020-0096. The registration of the disputed domain name is accordingly in bad faith.
The Respondent is also using the disputed domain name in bad faith; registration of a domain name confusingly similar to a trade mark by an entity with no relationship to that mark is itself sufficient evidence of bad faith registration and use; see MasterCard International Incorporated v. North Tustin Dental Associates, WIPO Case No. D2007-1412. The Respondent’s primary intention has been to target the Complainant’s reputation and trade marks in order to mislead consumers/Internet users. Its conduct accordingly falls within the circumstance of bad faith registration and use described at paragraph 4(b)(iv) of the Policy namely that its use of the disputed domain name is creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Additionally, the listing of the disputed domain name for sale on a third party website for a minimum offer of USD 899 establishes that the Respondent has registered the disputed domain name primarily for the purpose of selling it to the Complainant or a third party for valuable consideration in excess of its out-of-pocket costs directly related to the disputed domain name; see, in similar circumstances, DKH Retail Limited v. Zuhal Topuz, WIPO Case No. D2021-0008. This comprises bad faith registration and use in accordance with the circumstance described at paragraph 4(b)(i) of the Policy.
Finally, the fact that the Respondent has been a respondent in over 100 cases under the Policy, all of which have resulted in decisions adverse to her comprises a pattern and thus a further basis for a finding of bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
The Complainant has provided details of a number of the registered trade marks it owns for PATIENTKEEPER. These include the registration in respect of which full details have been provided above, which thereby establishes its rights in this mark.
As a technical requirement of registration, the Top Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the word “medstar” followed by the Complainant’s PATIENTKEEPER mark. The Complainant asserts that, in view of its business relationship with MedStar Health, Inc., this creates a resonance between the disputed domain name and its PATIENTKEEPER mark. In fact, irrespective of this commercial connection, the additional term does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Complainant’s PATIENTKEEPER mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interests in a domain name. These are, summarised briefly: (i) if the respondent has been using the domain name in connection with a bona fide offering of goods or services; (ii) if the respondent has been commonly known by the domain name; or (iii) if the respondent has been making a legitimate noncommercial or fair use of the domain name.
Whether use of a domain name in order to host a website containing PPC links might amount to a bona fide offering of goods and services is considered at section 2.9 of the WIPO Overview 3.0, which explains at that “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. The incorporation of the Complainant’s mark into the disputed domain name combined with the fact that the PPC links on the Respondent’s website relate to services associated with the Complainant amounts to an unjustified exploitation by the Respondent of the Complainant’s repute in its mark and does not comprise a bona fide offering of goods or services.
The second and third circumstances are also inapplicable. There is no evidence that the Respondent has been commonly known by the disputed domain name. Moreover, the use which it is making of is plainly commercial in character. Finally, the Respondent’s use of the disputed domain name is not considered fair in that it inaccurately suggests some form of connection with the Complainant. As explained at section 2.5.1 of the WIPO Overview 3.0; “[e]ven where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The Complainant has established a prima facie case that the second element of the Policy is satisfied and the burden of production shifts to the Respondent, with the burden of proof remaining on the Complainant. See section 2.1 of the WIPO Overview 3.0. The Respondent having failed to respond to the Complaint, has self-evidently not discharged it. The Panel therefore finds that it has no rights or legitimate interests in respect of the disputed domain name.
The registration by the Respondent of the disputed domain name, which incorporates the Complainant’s PATIENTKEEPER trade mark in its entirety and couples it with a term, “medstar”, which is the trading style of one of a healthcare organisation with which the Complainant has a commercial relationship, points to an awareness of the Respondent of the Complainant and its business as at the date of registration. The use to which the Respondent has put the disputed domain name since registration points to the Respondent’s motivation having been to exploit the repute of the Complainant’s mark for its own commercial benefit. As explained at section 3.1.4 of the WIPO Overview 3.0. “[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. See also Bytedance Ltd. v. WhoisGuard Protected, WhoisGuard, Inc. / Lawal Babatunde (supra). The Panel therefore finds the registration of the disputed domain name to have been in bad faith.
Whilst the use of a domain name to point to parking pages hosting PPC sponsored links is not inherently objectionable, it has been well established in previous decisions under the Policy that such conduct can constitute bad faith use if the combination of the characteristics of a domain name and the nature of the links on the website to which it points are intended to mislead Internet users or unfairly profit from the complainant’s mark. See, for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491, in which the panel explained that “[t]he use, to which the disputed domain names are put, namely parking pages featuring sponsored advertising links, is calculated to attract Internet users to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. The object has to be commercial gain, namely pay-per-click or referral revenue achieved through the visitors to the site clicking on the sponsored advertising links. Even if visitors arriving at the websites to which the disputed domain name resolve become aware that these websites are not such of the Complainant, the operators of these websites will nonetheless have achieved commercial gain in the form of a business opportunity, namely the possibility that a proportion of those visitors will click on the sponsored links”.
The circumstances of the Respondent’s use of the disputed domain name are similar to those outlined in Yahoo! Inc. v. Hildegard Gruener (supra) in that it is the repute of the Complainant’s mark which is being used as bait to attract Internet users to its website and thereby provide the Respondent with the opportunity to earn revenue from the PPC links on its webpage. Such conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy namely that, by using the disputed domain name, 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 that website.
Additionally, the offering for sale of the disputed domain name on a third party website for a minimum offer of USD 899 comprises bad faith registration and use within the circumstance described at paragraph 4(b)(i) of the Policy, namely that the Respondent has registered and acquired the disputed domain name primarily for the purpose of selling it to the Complainant or a third party for valuable consideration in excess of its out-of-pocket costs directly related to the domain name.
Finally the fact that the Respondent has been a respondent in numerous cases under the Policy which have resulted in decisions adverse to her, provides additional evidence of a pattern of bad faith registration and use within the meaning of paragraph 4(b)(ii) of the Policy.
For the above reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <medstarpatientkeeper.com> be transferred to the Complainant.
Antony Gold
Sole Panelist
Date: September 10, 2021