WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apria Healthcare Group, Inc., a v. Private Registrations Aktien Gesellschaft
Case No. D2012-1127
1. The Parties
The Complainant is Apria Healthcare Group, Inc. of California, United States of America represented by Neal & McDevitt, United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines.
2. The Domain Name and Registrar
The disputed domain name <apria.net> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2012. On June 1, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On June 2, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2012.
The Center appointed Cherise Valles as the sole panelist in this matter on July 2, 2012. 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 relevant trademark in this Complaint is APRIA® and various variations thereof (“Complainant’s Marks”), which the Complainant uses in connection with healthcare treatment goods and services, including, but not limited to, home healthcare related goods and services
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on May 31, 2012, the Complainant asserts that:
-The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is confusingly similar or identical to the Complainant's registered trademark, APRIA®, and variations thereof, in light of the fact that it wholly incorporates the Complainant’s Marks. The disputed domain name differs only from the registered trademark of the Complainant in the addition of the “.net”.
-The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
-The disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that the disputed domain name was registered in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel shall draw appropriate inferences therefrom.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of federal registrations and applications for APRIA® Marks and variations thereof. The mark, APRIA, has been in use in commerce since at least as early as 1995. The Complainant has submitted evidence in Annex C to the Complaint demonstrating that it is the owner of multiple trademark registrations and applications in the U.S. for the mark APRIA® and variations thereof, including the following:
APRIA RESPIRATORY ASSIST
APRIA PHARMACY NETWORK
APRIA GREAT ESCAPES
APRIA HEALTHCARE & Design
In addition, the Complainant submitted evidence in Annex D to the Complaint that it owns and has registered numerous domain names, including the following:
The Complainant’s Marks are distinctive and well-known in the home healthcare industry, as evidenced by the Complainant’s Marks, the number of variations of the mark APRIA®, the Complainant’s significant expenditures in promoting and advertising its marks and the number of years of use. The disputed domain name is confusingly similar to the APRIA® Marks. The disputed domain name contains the identical APRIA® Mark. The fact that the Respondent owns a domain name that contains a mark owned by the Complainant supports the conclusion that the Respondent’s domain name is confusingly similar to registrations in which the Complainant has rights. The disputed domain name is comprised dominantly of the term APRIA and is identical to APRIA® Marks.
In addition, “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Six Continent Hotels, Inc. v. The Omnicorp, WIPO Case No. D2005-1249. Previous UDRP panels have accepted that “[g]enerally, a user of a mark ‘may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or nondistinctive matter to it.’” J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998) cited in Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-1206. See also Telstra Corporation v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423. The addition of “.net” to the Complainant’s Marks does not change the likelihood of confusion, as “.com” and similar gTLDs are an irrelevant distinction. See Microsoft Corp. v. Amit Mehrotra, WIPO Case No. D2000-0053.
In light of the foregoing, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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 Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Complainant submits that the Respondent has neither used, nor made any 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.
As stated above, the domain name <apria.net> is confusingly similar to the APRIA® Marks in which Complainant enjoys substantial goodwill.
The Respondent, on the other hand, has no rights or legitimate interests with respect to the use of the disputed domain name. The Respondent is not listed as an owner of any United States or other trademark containing the term APRIA. Nor is there any evidence that the Respondent owns or has applied for any United States trademark registrations. There is no evidence that the Respondent, as an individual, business or other organization, had been commonly known by the domain name <apria.net>, even if Respondent has acquired no trademark or service mark rights.
The Respondent has made no use of, nor any demonstrable preparations to use, the disputed domain name or any name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Similarly, the Respondent is not making a legitimate noncommercial or fair use of the domain name <apria.net>.
Rather, the Respondent is blatantly using the disputed domain name and the APRIA® Marks on its website in a misleading fashion, with apparent intent for commercial gain and to divert potential customers. The Respondent’s website features the APRIA® Marks and information about various healthcare products and services as if it were sponsored by the Complainant. Moreover, as submitted in Annex E to the Complaint, the Respondent’s website links to various other websites, some of which may belong to the Complainant’s competitors. Thus, the Respondent is using the APRIA® Marks on its website to “attract users to [its] website in order to generate ‘pay-per-click’ revenue” which results in redirecting legitimate Internet users who seek the Complainant’s products or services to other, unrelated websites. Starwood Hotels & Resorts Worldwide,Inc. v. G Design/Domains by Proxy, Inc., WIPO Case No. D2011-1283. The Respondent is not authorized to use the APRIA® Marks in connection with its website and has acquired the disputed domain name with no apparent intention of utilizing it in connection with legitimate goods or services.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(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;
(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 its 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 web site or location or of a product or service on its website or location.
The Complainant’s Marks are well-known in connection with home healthcare services and products and the Complainant has expended numerous amounts of money promoting, selling and advertising APRIA® services and products, and it continues to maintain ongoing business operations in the United States. The Respondent is using a domain name that is identical and confusingly similar to trademarks in which the Complainant has rights. The Respondent’s use of the disputed domain name appears to be an intentional attempt to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the APRIA® Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Respondent is presumably familiar with the Complainant, its presence in the home healthcare industry, and its well-known trademarks. The registration of a well-known trademark in a domain name, of which the Respondent must reasonably have been aware, constitutes opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. Polygenix Grp. Co., WIPO Case No. D2000-0163 and Hardee’s Food Systems, Inc. v. Jones, WIPO Case No. D2006-1571 (“Given the notoriety of the Hardee’s restaurant chain, the Panel cannot conceive that the Respondent registered the subject domain names in compliance with her representations and warranties to the domain name Registrar”).
In addition, a domain name that incorporates a well-known trademark which is used to direct visitors to unconnected websites and/or competitor websites has been held to constitute bad faith use of the domain name. See Int’l Bus. Publishers, Inc. v. The Ctr. for Bus. Intelligence, LLC, WIPO Case No. D2001-0181; Lifetime Prods., Inc. v. IQ Mgmt Corp., WIPO Case No. D2004-0719. The Respondent’s website potentially derives revenues from “click-throughs” by confused web users who are looking for the Complainant’s website or information related to the Complainant.
Numerous UDRP decisions have held that “using the disputed domain name to redirect Internet users to websites that host links to external websites”, evidences bad faith. See DaimlerChrysler Corp. and DaimlerChrysler Ser. N. Am. LLC v. LaPorte Holdings, Inc., WIPO Case No. D2005-0070, citing Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031. The Respondent’s use appears to be to attract, for commercial gain, Internet users to other websites by creating a likelihood of confusion with the Complainant’s Mark.
Furthermore, and as mentioned above, the use of the Complainant’s Marks simply for the purpose of driving traffic to the Respondent’s website and to other websites is not a bona fide attempt to offer goods and services to the public. The fact that the Respondent appears to have registered its disputed domain name under a privacy service, presumably to conceal its true identity, is further evidence to support a finding of bad faith. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 <www.apria.net> be transferred to the Complainant.
Cherise M. Valles
Dated: July 17, 2012