WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AdvancedMD, Inc. v. Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante
Case No. D2017-0876
1. The Parties
The Complainant is AdvancedMD, Inc. of South Jordan, Utah, United States of America (“United States”), represented by Haug Partners LLP, United States.
The Respondent is Domain Admin, Whois protection, this company does not own this domain name s.r.o. of Prague, Czechia / Hulmiho Ukolen, Poste restante of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <loginadvancedmd.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2017. On May 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2017, 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 May 5, 2017, 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 May 8, 2017.
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 May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2017.
The Center appointed Marilena Comanescu as the sole panelist in this matter on June 8, 2017. 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 language of the proceeding is English.
4. Factual Background
The Complainant, a company specialized in computerized database management for healthcare practices, has based its Complaint on its United States trademark registrations such as the United States trademark Registration No. 3039850 filed on October 21, 2002 and registered on January 10, 2006 for ADVANCEDMD (standard character mark), covering services in classes 35 and 42. The Complainant’s main website is available at “www.advancedmd.com” and its employees access it using the link “www.login.advancedmd.com”.
According to the Complainant, the Respondent holds other domain names involving third-party trademarks, such as <citibankcredit.com> or <mymarlboro.com>.
According to its powers, also mentioned under paragraph 4.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel noted that the Respondent Hulmiho Ukolen was involved in more than twenty other UDRP proceedings involving third-party marks and most of these cases being decided in the favor of the complainants. See, for example, Giffits GmbH v. Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, WIPO Case No. D2015-0586; RE/MAX, LLC v. Privacy-Protect.org / Isaac Goldstein / Hulmiho Ukolen, Shlomo Icik, WIPO Case No. D2013-2036; Gulf DTH LDC v. WhoIs Privacy_Protection / Hulmiho Ukolen, WIPO Case No. D2015-2053; International Business Machines Corporation v. Hulmiho Ukolen, Poste restante / Whois protection, this company does not own this domain name s.r.o., WIPO Case No. D2016-0667; LEGO Juris A/S v. Hulmiho Ukolen, Poste restante / Domain Admin, Whois protection, WIPO Case No. D2016-1604.
The disputed domain name <loginadvancedmd.com> was registered on May 8, 2010 and at the time of filing the Complaint it was used to redirect Internet users to third-party websites.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name because: the disputed domain name is confusingly similar to its inherently distinctive trademark ADVANCEDMD as it incorporates it together with the descriptive terms “login” and the generic Top-Level Domain (“gTLD”) “.com”, the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith as it creates confusion for the Internet users looking for the Complainant to various third-party websites for Respondent’s pecuniary gain. Also, further evidence of Respondent’s bad faith behavior are the following circumstances: the Respondent registered the disputed domain name using a privacy shield, at the time of filing the Complaint the Respondent was offering the disputed domain name for sale for valuable consideration, namely for USD 5,250 and the fact that Respondent registered other domain names comprising third-party trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Complainant holds trademark registrations for ADVANCEDMD.
The dominant part of the disputed domain name <loginadvancedmd.com> incorporates the Complainant’s trademark ADVANCEDMD in its entirety preceded by the generic term “login”.
This Panel, in line with the majority view of previous UDRP panels, agrees that adding a merely generic, descriptive term to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under this first element of the UDRP if the trademark remains the dominant or principal component of the disputed domain name. See paragraph 1.8 of the WIPO Overview 3.0.
Further, it is well established in decisions under the UDRP that the Top-Level Domains (e.g., “.com”, “.biz”, “.net”, “.org”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. See paragraph 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name <loginadvancedmd.com> is confusingly similar to the Complainant’s trademark ADVANCEDMD, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See paragraph 2.1 of theWIPO Overview 3.0.
There is no evidence before the Panel to support the contrary and therefore the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name. The Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant’s ADVANCEDMD trademark is used since 2002 in connection with computerized database management for healthcare practices.
The disputed domain name <loginadvancedmd.com> was registered in 2010 and incorporates the ADVANCEDMD mark, together with the generic term “login”.
The Respondent was involved in several past UDRP disputes. Paragraph 4(b)(ii) of the Policy indicates that the respondent having registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct, as one circumstance as evidence of bad faith registration and use. Paragraph 3.1.2 of the WIPO Overview 3.0 explains that a pattern of conduct involves multiple UDRP cases with similar fact situations, where the respondent registered trademark-abusive domain names, even where directed at the same brand owner or corresponding to the distinct marks of individual brand owners. Here, the Respondent has been involved in at least other twenty similar UDRP cases involving third-party trademarks and most of them decided in the favor of complainants, as listed under Section 4 above.
Further, according to the Complainant, at the time of the Complaint filing the disputed domain name was used for a pay-per-click (“PPC”) website, diverting Internet users to websites operated by third parties. Thus, registering and using a domain name that reproduces a third party’s mark without authorization, using such a domain name for a parking page which promotes third parties goods and services; all such facts divert Internet users searching for the Complainant to third-party websites, dilute the value of the mark ADVANCEDMD, potentially generate unfair revenues for the Respondent and ultimately constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent registered the disputed domain name using a privacy shield and provided false contact information. Along with the other circumstances in this file, such facts corroborate bad faith. See also paragraph 3.6 of the WIPO Overview 3.0.
Further, the Respondent chose not to participate in these proceedings and has not contested any of the allegations made by the Complainant, and did not provide any evidence whatsoever of any legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the Complainant’s trademark. Such passivity of the Respondent can be considered further evidence of bad faith. See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Kabushiki Kaisha Toshiba v. Shan Computers, WIPO Case No. D2000-0325; Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.
Also, the Complainant alleges that the Respondent has registered the disputed domain name in order to resell it to the Complainant or a competitor for a valuable consideration in excess of the documented
out-of-pocket costs. Along with all the other circumstances of this case, this fact can also constitute a further evidence of bad faith, under paragraph 4(b)(i) of the Policy.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name <loginadvancedmd.com> in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <loginadvancedmd.com> be transferred to the Complainant.
Date: June 19, 2017