The Complainant is Delta Dental Plans Association of Oak Brook, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondents are ICS INC. aka ORM Ltd. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Balticsea LLC of Kaliningrad, the Russian Federation, Contact Privacy Inc. of Toronto, Ontario, Canada; Registrant [4459713]: Taranga Services Pty Ltd of Wellington, New Zealand, Moniker Privacy Services of Portland, Oregon, United States of America; ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines, Privacy Protection Service INC d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia; ICS INC. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, GEORGE WASHERE of Panama, WHOIS PRIVACY PROTECTION SERVICE, INC. of Kirkland, Washington, United States of America; Diamond Point Enterprises Limited of St Johns, Antigua and Barbuda, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia; Transure Enterprise Ltd of Tortola, Virgin Islands, United Kingdom of Great Britain and Northern Ireland, Above.com Domain Privacy of Beaumaris, Victoria, Australia; Online Management of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America; Ryan G Foo, PPA Media Services of Santiago,Chile, Fundacion Private Whois of Panama; Pham Dinh Nhut of Ho Chi Minh, Viet Nam, Vietnam Domain Privacy Services of Ho Chi Minh, Viet Nam; Pavol Icik, Poste Restante of Slovakia, Dragan Platic, Poste restante of Costa Rica, Privacy Protection Service of Shanghai, China.
The disputed domain names <deltadentalofar.com>, <deltadentalofarkansas.com>, <deltadentalofgeorgia.com>, <deltadentalofillinois.com>, <deltadentalofkansas.com>, <deltadentalofkentucky.com> and <deltadentalofmi.com> are registered with Tucows Inc.
The disputed domain names <deltadentalofcalifornia.com>, <deltadentalofcolorado.com>, <deltadentalofmichigan.com>, <deltadentalofmo.com>, <deltadentalofvirginia.com> and <deltadentalofks.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The disputed domain names <deltadentalofga.com>, <deltadentalofil.com> and <deltadentalofiowa.com> are registered with eNom.
The disputed domain names <deltadentalofma.com>, <deltadentalofmissouri.com>, <deltadentalofnj.com> and <deltadentalofca.com> are registered with Moniker Online Services, LLC.
The disputed domain names <deltadentalofmn.com> and <deltadentalofpa.com> are registered with Internet.bs Corp.
The disputed domain names <deltadentalofarizona.com> and <deltadentalofminnesota.com> are registered with Above.com, Inc.
The disputed domain name <deltadentalofco.com> is registered with GoDaddy.com, LLC.
The disputed domain name <deltadentalofaz.com> is registered with Fabulous.com.
The disputed domain name <deltadentalofva.com> is registered with April Sea Information Technology Corporation.
The disputed domain names <deltadentaloftn.com> and <deltadentalofwisconsin.com> are registered with
Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com.
The above-mentioned registrars are hereinafter referred to as the "Registrars".
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 25, 2014, initially involving 30 domain names. On March 26, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. Between March 26, 2014 and April 2, 2014, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 2014 providing the registrant and contact information disclosed by the Registrars, inviting the Complainant to submit an amendment to the Complaint, and addressing the issue of consolidation of Respondents. On April 3, 2014, the Center also invited the parties to comment on the language of the proceeding as the language of the registration agreement of the disputed domain name <deltadentalofwisconsin.com> is Slovak and the language of the registration agreement of the disputed domain name <deltadentalofva.com> is Vietnamese. On April 4, 2014, the Center received an email communication from the registrant of the domain name <deltadentalofky.com> indicating its willingness to transfer the domain name to the Complainant. The Center informed the Complainant of the same on April 4, 2014.
On April 7, 2014, the Complainant requested that English be the language of the proceeding. The Respondents did not comment on the language of the proceeding by the specified due date. The Complainant also submitted a request for suspending the proceeding on the same day. On April 8, 2014, the proceeding was formally suspended until April 18, 2014.
On April 9, 2014, the Complainant filed an amended Complaint to address the issues of underlying registrants and consolidation of Respondents. In the same amended Complaint, the Complainant also submitted a request for adding the disputed domain name <deltadentaloftn.com> to the proceeding. The Center acknowledged receipt of the amended Complaint and transmitted by email to the Registrar Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com a request for registrar verification in connection with the newly added disputed domain name on April 9, 2014. On April 14, 2014, the Registrar Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <deltadentaloftn.com> which differed from the named Respondent and contact information in the amended Complaint. The Center sent an email communication to the Complainant on April 15, 2014 providing the registrant and contact information disclosed by the Registrar Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com, inviting the Complainant to submit an amendment to the Complaint, and addressing the issue of consolidation of Respondents in particular regarding the newly added disputed domain name <deltadentaloftn.com>.
On April 22, 2014, the Complainant requested to remove the domain names <deltadentalofillinois.net> and <deltadentalofky.com> from the proceeding. On the same day, the Complainant also filed the second amended Complaint addressing underlying registrants disclosed in relation to the newly added disputed domain name <deltadentaloftn.com>. On April 23, 2014, the Center reminded the Complainant that it did not address the issue of consolidation of Respondents in particular regarding the newly added disputed domain name <deltadentaloftn.com>. The Complainant replied to the Center's email on the same day.
On April 24, 2014, the Center informed the parties that there appears to be at least prima facie grounds sufficient to warrant putting the Complainant's request for consolidation before a Panel. Therefore, the Center would proceed with this administrative proceeding on that basis. It would be within the Panel's discretion to decide consolidation of Respondents.
The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceeding commenced on April 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 15, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on May 16, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 26, 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.
The Complainant is a provider of dental and vision services to customers all over the United States of America through its member companies.
The Complainant is the registered owner of the mark DELTA DENTAL in the United States of America and has been using the mark in the provision of dental and vision services to customers all over the United States of America.
In order to conduct its business, and to further promote its services, the Complainant has registered over a hundred generic top-level domain (gTLD) names comprised of its DELTA DENTAL marks, including but not limited to <deltadental.com>, <deltadental.net> and <deltadental.org> , which were registered by the Complainant as early as 1995.
The Complainant is comprised of 39 member companies which are licensed to offer the aforesaid services under the DELTA DENTAL marks in specific geographic regions in the United States of America. Among other things, each member company is required to use "Delta Dental" in its legal name or trade name, which must also contain a geographic limitation phrase that accurately describes its licensed territory, e.g. "Delta Dental of Arizona" or "Delta Dental of Illinois". In addition, each member company is required to register and use a URL comprising the term "Delta" or "Delta Dental" along with a geographic indicator that is consistent with its trade name, typically, the accepted two letter abbreviation for the state in which it is licensed to offer the aforesaid services.
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
(1) The disputed domain names are confusingly similar to the Complainant's DELTA DENTAL marks because they fully incorporate the Complainant's DELTA DENTAL marks.
(2) The disputed domain names differ from the respective trademarks only through the addition of the word "of" and a geographic word – either a state name or two-letter state abbreviation of the United States of America such as Arizona or CA (for California). Prior UDRP panels have found that the addition of a geographical word does not serve to distinguish a domain name from a registered trademark.
(3) The disputed domain names which wholly incorporate the Complainant's registered trademark DELTA DENTAL and differ only in the addition of a geographical word, namely a state name or two-letter state abbreviation, are sufficient to establish confusing similarity for the purposes of the Policy. The disputed domain names therefore are confusingly similar to the Complainant's DELTA DENTAL marks.
The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names on the following grounds:
(1) The Respondents have no legitimate business relating to or incorporating the term "Delta Dental," nor do Respondents have any identifiable history of using that term in connection with the bona fide offering of goods or services. It is well established that the mere registration of a domain name does not create rights in the name, and that such rights can arise only through the bona fide offering of goods or services.
(2) The Respondents have not used the term "Delta Dental," in connection with the bona fide offering of goods or services.
(3) The Complainant has never licensed or otherwise authorized the Respondents' use of its DELTA DENTAL marks.
(4) The Respondents also are not making a legitimate noncommercial or fair use of the disputed domain names. On the contrary, the Respondents are merely using the Complainant's DELTA DENTAL marks in the disputed domain names to divert Internet users from the Complainant's websites, and have made no bona fide offering of goods or services on the websites associated with the disputed domain names.
(5) The Respondents have instead registered the disputed domain names and are parking them, with the current web pages to which the disputed domain names resolve including links to links to searches for dental services, insurance and/or unrelated content, sponsored listings and unrelated web search result and are generating click revenue for the Respondents.
(6) The Respondents' use of the disputed domain names is not a noncommercial or fair use of the disputed domain names by the Respondents.
The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:
(1) The Respondents have registered the disputed domain names in bad faith and with full knowledge of the Complainant's DELTA DENTAL marks.
(2) Given the widespread recognition the Complainant's marks, it is inconceivable that the Respondents innocently registered the disputed domain names without having an intent to exploit the disputed domain names' confusing similarity to the Complainant's DELTA DENTAL marks and websites.
(3) Even if the Respondents were to claim ignorance of the Complainant's DELTA DENTAL marks, the Respondents were put on constructive notice of the Complainant's rights in its DELTA DENTAL marks prior to registering the disputed domain names by virtue of the Complainant's aforementioned trademark registrations.
(4) The Respondents registered and commenced use of the disputed domain names with knowledge of the Complainant's prior use of the DELTA DENTAL marks in order to capitalize, benefit from, and trade upon the reputation and goodwill that had long been established by the Complainant in the DELTA DENTAL marks.
(5) The Respondents have registered the disputed domain names in bad faith by intentionally adopting the disputed domain names that fully incorporate the Complainant's well-known DELTA DENTAL marks, 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 names.
(6) By registering and maintaining the disputed domain names which are comprised entirely of the federally-registered DELTA DENTAL marks together with the word "of" and a geographic indicator, which mimics the domain name convention frequently used by the Complainant and its members and licensees, the Respondents have prevented the Complainant from registering the DELTA DENTAL marks specifying states where its members are located.
(7) The Respondents' bad faith is further illustrated by the disputed domain names' resolution to web pages containing pay-per-click links that redirect Internet users to third party websites. Not only does the Respondents' registration divert Internet users to its website based on the goodwill of the Complainant's DELTA DENTAL marks, but it also threatens to divert actual clients away from the Complainant.
(8) The Respondents' identities as proxy services further evidences bad faith.
The Respondents did not reply to the Complainant's contentions.
Previous UDRP panels have articulated principles governing the question of whether a UDRP complaint may be brought against multiple respondents. These criteria encompass situations in which (i) the disputed domain names or the websites to which the disputed domain names resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16.
Common control has been found based on commonalities in registrant information, such as shared administrative or technical contacts and shared postal or email addresses, as well as other circumstances in the record indicating that the respondents are related or that a sufficient unity of interests otherwise exists that they may be essentially treated as a single domain name holder for purposes of paragraph 3(c) of the Policy. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281. A unity of interests may be shown to exist where each of the disputed domain names have been used in an identical manner to attract Internet visitors to websites operated by the registrants containing identical materials. Another factor which evidences common control is similarities in the naming convention of the disputed domain names. See Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei, WIPO Case No. D2011-1541.
The Panel notes that each of the disputed domain names follows an identical naming convention, namely (DELTA DENTAL marks+ of + state name or two-letter state abbreviation). Additionally, each of the disputed domain names is registered with a privacy registration service supported by the corresponding registrar. Furthermore, the website associated with each the of the disputed domain names resolves to a nearly identical parked page that offers pay-per-click advertising.
In the circumstances, the Panel finds that the Complainant has established that the disputed domain names are subject to common control and that such common control is sufficient to justify consolidation of the Complainant's claims against the Respondents (hereinafter the"Respondent"). The Panel further finds in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
According to the information received by the Center from the concerned Registrars, the language of the Registration Agreements for two of the disputed domain names <deltadentalofva.com> and <deltadentalofwisconsin.com> is Vietnamese and Slovak respectively. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English. The Respondent did not respond to the Complainant's request for the proceeding to be conducted in English.
After considering the circumstances of the present case and the submissions from the Complainant and no Response from the Respondent, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
Paragraph 11 of the Rules provides:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
Thus, the parties may agree on the language of the proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. The Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain names are made up of letters in Ascii-Script and could be pronounced phonetically in English and the corresponding websites are in English (as is the Complainant's business); (b) only the disputed domain names <deltadentalofva.com> and <deltadentalofwisconsin.com> are registered in Vietnamese and Slovak Registration Agreements respectively, whilst the rest of the other 27 disputed domain names were registered with English Registration Agreements. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English.
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
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:
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the DELTA DENTAL marks in connection with dental and vision services. The Panel finds that the Complainant's DELTA DENTAL marks are widely-known for dental and vision services offered by the Complainant and its member companies in the United States of America.
In assessing the degree of similarity between the Complainant's trademarks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademarks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products.
The disputed domain names incorporate in the entirety of the Complainant's registered DELTA DENTAL marks, the addition of the word "of" and a geographic word – either a state name or two-letter state abbreviation and the gTLD ".com". The Panel finds that the distinctive part of the disputed domain names is the term "Delta Dental" and the mere addition of a geographical term or its accepted abbreviation is insufficient to distinguish the disputed domain names from the Complainant's DELTA DENTAL marks. Furthermore, it is a well-accepted principle that the addition of TLD suffixes such as ".biz", ".info", ".net", ".mobi" and/or ".name" is also not a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's DELTA DENTAL marks in the United States of America and (b) the lack of distinguishing factors between the disputed domain names and the Complainant's marks, the Panel therefore finds that the disputed domain names are confusingly similar to the DELTA DENTAL marks in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test.
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms "deltadentalofar"; "deltadentalofarizona"; "deltadentalofarkansas"; "deltadentalofaz"; "deltadentalofca"; "deltadentalofcalifornia"; "deltadentalofco"; "deltadentalofcolorado"; "deltadentalofga"; "deltadentalofgeorgia"; "deltadentalofil"; "deltadentalofillinois"; "deltadentalofiowa"; "deltadentalofkansas"; "deltadentalofkentucky"; "deltadentalofks"; "deltadentalofma"; "deltadentalofmichigan"; "deltadentalofmi"; "deltadentalofminnesota"; "deltadentalofmissouri"; "deltadentalofmn"; "deltadentalofmo"; "deltadentalofnj"; "deltadentalofpa"; "deltadentaloftn"; "deltadentalofva"; "deltadentalofvirginia"; "deltadentalofwisconsin";
(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the DELTA DENTAL marks;
(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
(4) the Complainant and its DELTA DENTAL marks enjoy a widespread reputation and high degree of recognition in connection with dental and vision services in the United States of America and the DELTA DENTAL marks are also federal registered trademarks in the United States of America. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondents, the DELTA DENTAL marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview 2.0, paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to the respondent of the dispute, respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service of the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the reputation of the Complainant and its DELTA DENTAL marks in the United States of America, the Panel finds that it is highly unlikely that the Respondent would not have notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had, at the very least, some notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with an intent to create an impression of association with the Complainant and its products.
The fact that the Respondent has chosen to register 29 disputed domain names all incorporating the Complainant's DELTA DENTAL marks in their entirety lends weight to the argument that the Respondent has prior knowledge of the Complainant's business presence and its marks. This argument has not been rebutted by the Respondent.
Where the Respondent has chosen to register disputed domain names that are identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired substantial fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use to the disputed domain names for purposes of bona fide offering of goods and services over the Internet. On the contrary, Respondent is merely using the Complainant's DELTA DENTAL marks in the disputed domain names to divert Internet users from the Complainant's websites, and has made no bona fide offering of goods or services on the websites associated with the disputed domain names. The Respondent has instead registered the disputed domain names and is parking them, with the current web pages to which the disputed domain names resolve including links to links to searches for dental services, insurance and/or unrelated content, sponsored listings and unrelated web search result and are generating click revenue for the Respondent. In this regard, the Panel finds that the Respondent has not provided any plausible explanation of its use of the disputed domain names.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's disputed domain names which redirect to third party's websites essentially composed of sponsored links under paragraphs 4(b)(iv) of the Policy. The Panel finds that given the established renown of the Complainant's DELTA DENTAL marks and a lack of plausible explanation for the choice of incorporating the Complainant's registered trademark in the disputed domain names, the registration of the disputed domain names for the primary purpose of directing traffic to various third party websites essentially composed of sponsored links are all relevant factors indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test.
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 names <deltadentalofar.com>; <deltadentalofarizona.com>; <deltadentalofarkansas.com>; <deltadentalofaz.com>; <deltadentalofca.com>; <deltadentalofcalifornia.com>; <deltadentalofco.com>; <deltadentalofcolorado.com>; <deltadentalofga.com>; <deltadentalofgeorgia.com>; <deltadentalofil.com>; <deltadentalofillinois.com>; <deltadentalofiowa.com>; <deltadentalofkansas.com>; <deltadentalofkentucky.com>; <deltadentalofks.com>; <deltadentalofma.com>; <deltadentalofmichigan.com>; <deltadentalofmi.com>; <deltadentalofminnesota.com>; <deltadentalofmissouri.com>; <deltadentalofmn.com>; <deltadentalofmo.com>; <deltadentalofnj.com>; <deltadentalofpa.com>; <deltadentaloftn.com>; <deltadentalofva.com>; <deltadentalofvirginia.com> and <deltadentalofwisconsin.com> be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: June 16, 2014