WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accolade 2ndMd LLC v. Hallie Kubik

Case No. D2021-1162

1. The Parties

The Complainant is Accolade 2ndMd LLC, United States of America (“United States” or “U.S.”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.

The Respondent is Hallie Kubik, United States.

2. The Domain Name and Registrar

The disputed domain name <2ndmdtitle.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 16, 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 April 22, 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 April 23, 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 April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2021.

The Center appointed Lynda M. Braun as the sole panelist in this matter on May 21, 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.

4. Factual Background

Founded in 2011, the Complainant is a telemedicine solutions and services company specializing in video consults with medical experts, and medical decision support. Specifically, the Complainant automates the process of obtaining second opinions via video or telephone, which shortens the time to obtain such opinions from weeks down to mere days. The Complainant currently provides its clients with access to more than 850 nationally-recognized board-certified medical specialists in 30 specialties and 240 sub-specialties.

The Complainant owns the following registered trademarks: 2ND.MD, United States Trademark Registration No. 4,043,386, registered on October 18, 2011, in international class 44; and 2ND.MD,, United States Trademark Registration No. 4,494,352, registered on March 11, 2014, in international class 9, both of which are incontestable under 15 U.S.C. § 1065 (hereinafter referred to as the “2ND.MD Mark”).

The Disputed Domain Name was registered on April 4, 2021, and resolves to a website that contains pornographic and gambling content.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- the Disputed Domain Name is confusingly similar to the Complainant’s 2ND.MD Mark;

- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:

(i) the Disputed Domain Name is identical or confusingly similar to trademarks or service marks 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the 2ND.MD Mark.

It is uncontroverted that the Complainant has established rights in the 2ND.MD Mark based on its years of use as well as its registered, incontestable trademarks for the 2ND.MD Mark in the United States. The general consensus is that registration of a mark is prima facie evidence of validity. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. Therefore, the Panel finds that the Complainant has rights in the 2ND.MD Mark.

The Disputed Domain Name, <2ndmdtitle.com>, consists of the entirety of the 2ND.MD Mark (except for the dot between “2ND” and “MD”), followed by the term “title”, and then followed by the generic Top-Level Domain (“gTLD”) “.com”. When a domain name incorporates the entirety of a trademark, as here, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7)

In addition, as stated in section 1.8 of the WIPO Overview 3.0, “where 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”. For example, numerous UDRP decisions have reiterated that the addition of a term to a trademark does not prevent a finding of confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008‑0923.

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well-established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182, and WIPO Overview 3.0, section 1.11. Thus, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s 2ND.MD Mark.

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its 2ND.MD Mark. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name to resolve to a website that contains pornography and gambling, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. On the contrary, the Respondent is using the 2ND.MD Mark in the Disputed Domain Name to promote its website for illegitimate commercial gain. Specifically, the Respondent intentionally attempted to create a likelihood of confusion by using the Disputed Domain Name incorporating the 2ND.MD Mark to increase Internet user traffic to its pornographic and online gambling website at “www.2ndmdtitle.com”. UDRP Panels have consistently found that use of a domain name identical or confusingly similar to a trademark to attract or divert Internet traffic to a website featuring pornographic content is not a bona fide use and does not confer rights or legitimate interests in the domain name. See William Hill Organization Limited v. Netmax Multimedia, WIPO Case No. D2001-0455 (use of a domain name to associate a complainant’s trademark with pornography does not confer rights or legitimate interests); and Nintendo of America Inc. v. Baltic Consultants Limited, WIPO Case No. D2002-0449 (finding use of the domain name not bona fide, as it was for distinctly commercial purposes, namely, for marketing of pornography and gambling). Here, the Complainant provided screenshots of the website to which the Disputed Domain Name resolves as an annex to the Complaint that show the website displaying pornography and gambling.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.

The Respondent’s use of the Disputed Domain Name to offer pornographic content is a significant indicator of bad faith. See VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631; and CHRISTIAN DIOR COUTURE v. Paul Farley, WIPO Case No. D2008-0008. Such conduct is known as “pornosquatting”, the practice whereby confusion with a trademark is used to divert Internet users to a website with pornographic content. See Prada S.A. v. Roberto Baggio, WIPO Case No. D2009-1187. Here the Respondent created a Disputed Domain Name that incorporated the 2ND.MD Mark to capitalize on its renown and to have the Disputed Domain Name resolve to a pornographic and gambling website for commercial gain. The Respondent attempted to attract the Complainant’s customers to its pornographic and online gambling website by creating a likelihood of confusion with the Complainant’s 2ND.MD Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and thus generate revenue through the unauthorized use of the 2ND.MD Mark. See WIPO Overview 3.0, section 3.1 (iv). In addition, the Respondent’s registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its 2ND.MD Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).

Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 <2ndmdtitle.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: June 4, 2021