WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quest Diagnostics Investments LLC v. Wuxi Yilian LLC
Case No. D2017-2579
1. The Parties
The Complainant is Quest Diagnostics Investments LLC of Wilmington, Delaware, United States of America (“USA” or “U.S.”), represented by Baker & McKenzie, USA.
The Respondent is Wuxi Yilian LLC of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <myquestquestdiagnostics.com> is registered with Bizcn.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2017. On December 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 8, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 11, 2018. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on January 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2018.
The Center appointed Rachel Tan as the sole panelist in this matter on February 27, 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
Founded in 1967, the Complainant is a U.S. corporation providing clinical laboratory testing services around the world under the names Quest and Quest Diagnostics.
The Complainant operates a corporate website “www.questdiagnostics.com” which resolves to a portal branded “MyQuest” under the domain name <myquest.questdiagnostics.com>. This portal allows patients to obtain test results, schedule lab testing appointments, track personal heath data and contacts, in order to make decisions about their healthcare.
The Complainant is the owner of trade mark registrations for QUEST, QUEST DIAGNOSTICS and MY QUEST (jointly referred to as “QUEST Trade Marks”) in the U.S. and China, including:
U.S. Registration No. 2,365,337 QUEST in class 42, registered on July 4, 2000;
U.S. Registration No. 3,107,154 QUEST DIAGNOSTICS in classes 16, 35, 39 and 42, registered on June 20, 2006;
U.S. Registration No. 4,693,274 MYQUEST in classes 9 and 42, registered on February 24, 2015;
Chinese Registration No. 10106604 QUEST DIAGNOSTICS in class 42, registered on December 21, 2012.
The disputed domain name was registered on October 11, 2017 and resolves to a website displaying pay-per-click links.
5. Parties’ Contentions
The Complainant contends that the disputed domain name fully incorporates and is confusingly similar to the “MyQuest” website and QUEST Trade Marks. The Complainant alleges that the Respondent is engaged in typosquatting for commercial gain as the disputed domain name only slightly deviates from its <myquest.questdiagnostics.com> domain name. The disputed domain name combines two of the Complainant’s registered marks, QUEST DIAGNOSTICS and MYQUEST, and also incorporates the QUEST mark.
The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name. In particular, the Respondent is not commonly known by the disputed domain name nor owns any trade mark rights to it. The disputed domain name resolves to a website with links to various companies, including the Complainant, that purport to offer medical billing and other diagnostics services. The Respondent is not licensed, permitted or authorized by the Complainant to use the disputed domain name.
Finally, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. In particular, the Respondent had actual notice of the QUEST Trade Marks as the disputed domain name was registered well after these marks, and further, the Respondent’s website purports to link users to the Complainant’s laboratories and medical record services. The Respondent is using the disputed domain name to promote services that are identical or similar to those being offered by the Complainant. The alleged act of typosquatting by the Respondent is itself evidence of bad faith. In addition, the Respondent is engaged in the business of registering domain names in bad faith and has been the subject of numerous UDRP complaints.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of Proceeding
Initially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement is Chinese. However, the Complainant filed the Complaint in English and has requested that English be adopted as the language of the proceeding. The Respondent did not comment on the language issue. The Center proceeded to issue its case-related communications to the Parties in both English and Chinese. The Center decided to accept the Complaint as filed in English, accept a Response in either English or Chinese, and appoint a Panel familiar with both languages.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The disputed domain name is composed of English words rather than Chinese script;
(b) The Respondent is named as a respondent in numerous UDRP decisions involving domain names comprised of Latin characters or English words. The Complainant has attached examples of these UDRP decisions;
(c) The disputed domain name resolves to webpages whose content is in English, indicating a sufficient understanding of the language;
(d) There were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request;
(e) The Respondent has failed to participate in the proceeding and has been notified of its default. The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English; and
(f) Requiring the Complainant, a U.S. corporation, to submit documents in Chinese would lead to delay and cause the Complainant to incur translation expense.
6.2. Analysis of the Complaint
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant acquired trade mark rights through use and registration of the QUEST Trade Marks, which predate the registration of the disputed domain name by many years.
The disputed domain name conjoins two of the Complainant’s trade marks, MY QUEST and QUEST DIAGNOSTICS, as well as incorporates the QUEST mark in its entirety. The adoption of not one or two, but three of the QUEST Trade Marks accentuates the confusing similarity between the disputed domain name and the Complainant’s trade marks. The addition of “.com”, the generic Top Level Domain, is a standard registration requirement and as such is usually disregarded under the confusing similarity test. Consequently, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant needs to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Since the overall burden of proof rests with the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. According to the consensus view of UDRP panels, if such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such evidence, the Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See Wal-Mart Stores, Inc. v. WalMart Careers, Inc., WIPO Case No. D2012-0285.
In this case, the Complainant has established exclusive rights to the QUEST Trade Marks, whereas the Respondent appears not to own any registered or unregistered rights in “myquestquestdiagnostics”, its component elements, or variations thereof. Neither is the Respondent’s name nor its business “commonly known” by the disputed domain name.
The Complainant further asserts that the Respondent is not making bona fide commercial use of the disputed domain name which does not resolve to any active website. Rather, the sole intent of the disputed domain name is to cause confusion and redirect users of the Complainant’s websites that inadvertently mistype the domain name. In this case, the disputed domain name resolves to a website containing links to the Complainant’s websites and those of other parties offering the same or similar services. The Panel concurs with the Complainant that the Respondent is opportunistically taking advantage of the QUEST Trade Marks, for its own commercial purposes, when it diverts traffic to create confusion by using sponsored links to the Complainant’s competitors, or links to the Complainant’s own website without authorization.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the domain name, and the burden of production shifts to the Respondent. However, the Respondent has failed to provide the Panel with any evidence set forth in paragraph 4(c) of the Policy, from which the Panel might conclude the Respondent’s rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exhaustive circumstances which would constitute evidence of registration and use of a domain name in bad faith.
The Panel notes that the QUEST Trade Marks were registered in the U.S. and China many years prior to the registration of the disputed domain name. Furthermore, the Complainant has operations in China, where the Respondent is incorporated. A cursory Internet search would have disclosed the Complainant’s extensive registration and use of the QUEST Trade Marks globally. Moreover, the Respondent references and includes links to the Complainant and its website on the webpages hosted under the disputed domain name. This supports the finding that the Respondent had actual knowledge of the Complainant and its trade marks when it registered the disputed domain name.
The Complainant has submitted evidence of the Respondent being named in numerous past UDRP decisions involving domain names which were found to be identical with or similar to trade marks known to belong to third parties. This pattern of abusive trade mark registration supports the claim that by registering the disputed domain name, the Respondent intended to profit in some fashion from or otherwise exploit the Complainant’s trade marks.
The selection by the Respondent of a domain name which is virtually identical to the Complainant’s domain name, save for the omission of a “period”, is unlikely to be a coincidence. The Respondent is also using the disputed domain name for a platform which links users to companies offering services akin to those provided by the Complainant. This platform contains unauthorized links to the Complainant’s websites as well as sponsored websites of competitors unaffiliated with the Complainant. These facts lend weight to the assertion that the Respondent has sought to intentionally capture traffic from Internet users who mistype the Complainant’s domain name.
Based on the above facts, it is implausible to contemplate of any good faith use to which the disputed domain name may be put by the Respondent.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account the Respondent’s lack of rights of legitimate interests, and all the facts and circumstances of the case, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) 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 <myquestquestdiagnostics.com> be transferred to the Complainant.
Date: March 12, 2018