WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sunrise Senior Living, LLC v. Whois Agent at Whois Privacy Protection Service, Inc. / Name Redacted
Case No. D2017-2071
1. The Parties
The Complainant is Sunrise Senior Living, LLC of McLean, Virginia, United States of America (“United States”), represented by McDermott Will & Emery LLP, United States.
The Respondent is Whois Agent at Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Name Redacted.1
2. The Domain Name and Registrar
The disputed domain name <sunriseseniorlivingusa.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2017. On October 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 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 October 30, 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 November 2, 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 November 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on December 19, 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 Complainant filed a Supplemental Filing on November 17, 2017.
4. Factual Background
The date of the Domain Name registration was confirmed by the Registrar to be September 19, 2017.
The Complainant provided evidence of multiple trademark registrations for the mark SUNRISE SENIOR LIVING and SUNRISE including, inter alia, United States Registrations Nos. 2850729 (registered on June 8, 2004) and 2933983 (registered on March 15, 2005) both for word marks that (although not required) predate the date of the Domain Name registration in regard to a variety of retirement home and skilled care services.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a “404” error message, as the website currently appears to be inactive.
The Complainant also provided evidence of an email soliciting information from a career applicant under the email “firstname.lastname@example.org” allegedly sent under fraudulent circumstances. The Respondent did not respond to this Complaint.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark, as well as the solicitation email correspondence from the Respondent, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties’ Contentions
The Complainant is one of the largest providers of senior living services in the United States. The Complainant operates 245 facilities throughout the United States, with additional facilities in Canada and the United Kingdom of Great Britain and Northern Ireland, employing many thousands of people. The Complainant refers to itself as SUNRISE and SUNRISE SENIOR LIVING on its website “www.sunriseseniorliving.com”, which has been visited by millions of visitors. Since at least as early as 1981, the Complainant has continually used its marks in the United States commerce for senior care services, including assisted living care, Alzheimer’s and dementia care, skilled nursing, retirement home management, patient advocacy, and related services.
The Complaint alleges that the Respondent is not making a non-commercial or fair use of the Domain Name. The Respondent is using the Domain Name to defraud persons seeking job opportunities from the Complainant. The Respondent impersonated the Complainant’s HR Manager and sent fraudulent emails to job seekers offering interviews with the Complainant. The Complainant provided evidence of an email sent by the Respondent soliciting a career applicant and appearing to look legitimate by including the name of the Complainant’s employee.
The same employee’s name was used by the Respondent to register the Domain Name, which was originally registered under a privacy service, to hide the identity of the Respondent. The Complainant alleges that the Respondent is a “faux registrant”, i.e. a registrant who mimics a complainants’ name on the WhoIs registry. As such, the Respondent has taken deliberate steps to ensure that their identity cannot be determined.
Further, although the Domain Name resolves to an error page the Complainant argues that this does not prevent a finding that the Domain Name was registered and is being used in bad faith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks SUNRISE and SUNRISE SENIOR LIVING in respect of services in the field of senior care. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the geographic term “usa” does not prevent a finding of confusing similarity. Therefore, the Domain Name <sunriseseniorlivingusa.com> could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith as a basis for phishing activity. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for SUNRISE and SUNRISE SENIOR LIVING.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the geographic term “usa” to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark and if anything, enhances it to suggest the offer of the Complainant’s services in the United States. See, Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” This is also consistent with section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Jurisprudential Overview 3.0”), which states:
“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. “
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name <sunriseseniorlivingusa.com> and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
The Complainant filed a Supplemental Filing on November 17, 2017. The Panel in its discretion allows the Supplemental Filing which consists of an affidavit by the Complainant’s employee – whose name was used by the Respondent – to confirm that the Respondent has fraudulently used this individual’s identity when registering the Domain Name. The Panel finds that this behavior also supports the Panel’s finding concerning the third element below.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the evidence of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademarks and uses it in bad faith for deceptive purposes. The Panel finds that the solicitation email sent by the Respondent fraudulently uses the name of the Complainant’s employee and constitutes phishing, and that the Respondent’s use of the same employee’s name in order to register the Domain Name constitutes bad faith.
The Panel agrees with the Complainant that the Respondent was acting in bad faith as a ”faux registrant”. Such deception has been found as a contributing factor of bad faith (see, e.g. Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO. WIPO Case No. D2000-0138).
The Panel also agrees with the Complainant’s argument that even though the Domain Name resolves to an inactive page, this does not preclude a finding of registration and use in bad faith where: “…it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). This is also consistent with section 3.3 of the WIPO Overview 3.0, which states:
“From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the evidence of the phishing email as well as the “faux registrantion”, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, 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 Domain Name, <sunriseseniorlivingusa.com> be transferred to the Complainant.
Ellen B Shankman
Date: December 26, 2017
1 As it appears, the Respondent has fraudulently used the identity of one of Complainant’s employees when registering the Disputed Domain Name. The Panel has decided that no purpose can be served by including the named Respondent in this Decision, and has therefore redacted Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.