The Complainant is EmblemHealth Services Company, LLC, United States of America (“United States”), represented by CSC Digital Brand Services Group AB, Sweden.
The Respondent is Christian Clotter, Christian clotter, United States.
The disputed domain name <emblemhealth.app> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2020. On April 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 20, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2020. On April 28, 2020, the Center received an email communication from the Respondent offering to settle. No further communication from the Respondent was received. Accordingly, on May 19, 2020 the Center informed the Parties that it will proceed to appoint a panel.
The Center appointed William F. Hamilton as the sole panelist in this matter on May 27, 2020. 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 was formed in 2006 as a result of a merger of two large health insurance companies. The Complainant currently provides health insurance services to over 3 million customers. The Complainant is based in New York, New York, United States, and provides community-based services within the greater New York City area. The Complainant owns and operates its website at <emblemhealth.com> which receives over 500,000 visitors each year. The Complainant owns the service mark EMBLEMHEALTH (the “Mark”). The Mark was registered with the United States Patent and Trademark Office on June 16, 2009, under registration number 3641062.
The disputed domain name was registered by the Respondent on January 8, 2020. The disputed domain name resolves to an “automatically” generated landing page featuring numerous pay-per-click links. In February 2020, the Complainant contacted the Respondent and requested the Respondent to transfer the disputed domain name to the Complainant. After the Complainant’s “Third and Final Notice” requesting transfer of the disputed domain, the Respondent stated that if the Complainant “wished to obtain [the disputed domain name], you can simply make me an offer for it.”
The Complainant contends the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name is composed of the Mark appended to the generic Top-Level Domain (“gTLD”) “.app”. The Complainant asserts that the Respondent was not provided any permission or authority to use the Mark or the disputed domain name and that the Respondent is not known by the Mark and has not conducted any bona fide business or activity in connection with the Mark or the disputed domain name. Finally, the Complainant asserts the disputed domain name was registered and used in bad faith to attract unsuspecting Internet users to the Respondent’s website for commercial gain.
The Respondent did not formally reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.
The disputed domain name is composed by the addition of the gTLD “.app” to the Mark. A domain name which wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888. Moreover, a gTLD suffix does not prevent a finding of confusing similarity. “The applicable Top-Level Domain in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. See also Research In Motion Limited v. One Star Global LLC, WIPO Case No. D2008-1752 (addition of gTLD does not dispel confusion).
The Complainant has met its burden under paragraph 4(a)(i) of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name. Additionally, because the disputed domain name is identical to the Complainant’s Mark, but for the gTLD, an inference thus arises that the disputed domain name was registered in bad faith to attract unsuspecting Internet users to the Respondent’s website. WIPO Overview 3.0, section 2.5.1 (“Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation.”). The Respondent did not formally respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name.
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
The Panel finds the disputed domain name was registered and used in bad faith.
The Panel finds on the evidence presented that the Respondent has intentionally attempted to falsely lure and attract Internet users to the Respondent’s website for commercial gain. The disputed domain name resolves to a website offering click through links for a variety of health care services. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name…”). Moreover, the Mark is sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Finally, in response to the Complainant’s cease and desist letters, the Respondent merely attempted to seek payment for the disputed domain name, which under the circumstances of this case gives rise to an inference that the disputed domain name was registered and is being used in bad faith. Spirig Pharma AG v. Whois privacy services, provided by DomainProtect / Alexander Zinovjev, WIPO Case No. D2014-1612.
The Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <emblemhealth.app> be transferred to the Complainant.
William F. Hamilton
Sole Panelist
Date: June 10, 2020