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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Benefitfocus, Inc. v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot

Case No. D2018-1533

1. The Parties

Complainant is Benefitfocus, Inc. of Charleston, South Carolina, United States of America ("United States"), represented by Nelson Mullins Riley & Scarborough, LLP, United States.

Respondent is Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot of San Mateo, California, United States.

2. The Domain Name and Registrar

The disputed domain name <benefitfocusbenefitsplace.com> (the "Disputed Domain Name") is registered with Dynadot, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 9, 2018. On July 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 3, 2018.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on August 14, 2018. 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

Complainant states that it "provides a leading cloud-based benefits management platform for consumers, employers, insurance carriers, and brokers"; that it "serves two separate but related market segments: the employer market (employers offering benefits to their employees) and the insurance carriers market" that "[a]s of December 31, 2017, [it] served 915 large employer customers (companies with other 1,000 employees), an increase from 141 in 2010, and 54 carrier customers, an increase from 29 in 2010"; that it "supports over 100 health and voluntary benefits clients and has established over 1,500 data exchanges with leading insurance, finance, HRIS and payroll"; and that it has "more than 20 million members [who] manage all types of benefits through the services offered by Complainant".

Complainant states, and provides evidence to support, that it owns multiple trademark registrations for marks that consist of or contain the mark BENEFITFOCUS, including United States Reg. No. 2,496,059 for BENEFITFOCUS for use in connection with "[p]roviding on-line human resource management services for others via a global computer network accessible by personal computer or computer Kiosk Station" (registered October 9, 2001). These trademarks are referred to herein as the "BENEFITFOCUS Trademark." In addition, Complainant states, and provides evidence to support, that it filed an intent-to-use application on April 2, 2018, for the mark BENEFITFOCUS BENEFITSPLACE, United States Serial No. 87-859,161. Further, Complainant states, and provides evidence to support, that it is the registrant of the domain names <benefitfocus.com> (created April 6, 2000) and <benefitsplace.com> (created February 26, 2015).

The Disputed Domain Name was created on April 5, 2018, and is being used in connection with a website that offers it for sale for USD 950.

Complainant provided a copy of a demand letter that it sent to Respondent on June 1, 2018. Complainant states that it never received a response to this letter.

5. Parties' Contentions

A. Complainant

Complainant contends, in relevant part, as follows:

- The Disputed Domain Name is confusingly similar to the BENEFITFOCUS Trademark because, "when directly compared… there is no question that the Domain Name is confusingly similar to the BENEFITFOCUS trademark and identical to the BENEFITFOCUS BENEFITSPLACE trademark".

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,"Complainant has not authorized Respondent to use the BENEFITFOCUS Marks"; "Respondent is not a licensee of the BENEFITFOCUS Marks"; "Respondent is not commonly known by the name BENEFITFOCUS or BENEFITFOCUS BENEFITSPLACE"; simply advertising the Disputed Domain Name for sale "cannot provide Respondent with any rights or legitimate interests in the Domain Name for purpose of the Policy"; "Respondent's website soliciting offers to purchase the Domain Name… intentionally trades on the fame and reputation of a complainant's trademark should not be regarded as bona fide use within the meaning of paragraph 4(c)(i) of the Policy"; and, by registering the Disputed Domain Name three days after Complainant filed its intent-to-use application for BENEFITFOCUS BENEFITSPLACE, "there can be little doubt that Respondent was aware of Complainant's BENEFITFOCUS Marks when it registered the Domain Name and did so intentionally to trade on the notoriety of the BENEFITFOCUS Marks".

- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, Respondent's "opportunistic timing of the registration" of the Disputed Domain Name (three days after Complainant filed its intent-to-use application for BENEFITFOCUS BENEFITSPLACE) "constitute[s] registration and use in bad faith"; "the general offer of a disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy [paragraph] 4(b)(i)"; and "Respondent has not responded to Complainant's cease and desist letters, which is evidence outside the confines of Policy [paragraphs] 4(b)(i)-(iv) demonstrating Respondent's bad faith registration and use of the Domain Name".

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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. Policy, paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the BENEFITFOCUS Trademark.

As to whether the Disputed Domain Name is identical or confusingly similar to the BENEFITFOCUS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "benefitfocusbenefitsplace") because "[t]he applicable Top Level Domain ('TLD') 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 1.11.1.

It is obvious that the Disputed Domain Name contains the BENEFITFOCUS Trademark in its entirety and simply adds the word "benefitsplace", which is the subject of a pending trademark application filed by Complainant three days prior to creation of the Disputed Domain Name. As stated in WIPO Overview 3.0, section 1.7, "in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing".

Accordingly, the Panel finds that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia,"Complainant has not authorized Respondent to use the BENEFITFOCUS Marks"; "Respondent is not a licensee of the BENEFITFOCUS Marks"; "Respondent is not commonly known by the name BENEFITFOCUS or BENEFITFOCUS BENEFITSPLACE"; simply advertising the Disputed Domain Name for sale "cannot provide Respondent with any rights or legitimate interests in the Domain Name for purpose of the Policy"; "Respondent's website soliciting offers to purchase the Domain Name… intentionally trades on the fame and reputation of a complainant's trademark should not be regarded as bona fide use within the meaning of paragraph 4(c)(i) of the Policy"; and, by registering the Disputed Domain Name three days after Complainant filed its intent-to-use application for BENEFITFOCUS BENEFITSPLACE, "there can be little doubt that Respondent was aware of Complainant's BENEFITFOCUS Marks when it registered the Domain Name and did so intentionally to trade on the notoriety of the BENEFITFOCUS Marks".

WIPO Overview 3.0, section 2.1, states: "While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."

The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).

As set forth in section 3.2.1 of WIPO Overview 3.0, a panel may take into account the following factors, among others, when assessing whether a respondent's registration of a domain name is in bad faith: (1) "the nature of the domain name," (2) "the timing and circumstances of the registration," (3) "a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent's choice of the domain name"; and (4) "other indicia generally suggesting that the respondent had somehow targeted the complainant."

Here, the Disputed Domain Name contains a trademark that appears to be widely known and has been protected by a registration for more than 16 years; the Disputed Domain Name was created only three days after Complainant filed its intent-to-use application for BENEFITFOCUS BENEFITSPLACE; Respondent has failed to respond to Complainant's demand letter and has not submitted a Response in this proceeding; and the Disputed Domain Name is being offered for sale. These factors, collectively if not individually, are clear evidence of bad faith registration and use in this case.

Accordingly, the Panel finds that Complainant has proven the third element of the Policy.

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 <benefitfocusbenefitsplace.com> be transferred to Complainant.

Douglas M. Isenberg
Sole Panelist
Date: August 21, 2018

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