WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Orlando Health, Inc. v. Mei Fei

Case No. D2018-0433

1. The Parties

The Complainant is Orlando Health, Inc. of Orlando, Florida, United States of America (“United States”), represented by Mateer & Harbert P.A., United States.

The Respondent is Mei Fei of Beijing, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <orlandohealthscripts.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 February 23, 2018. On February 26, 2018, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain name. On February 27, 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 March 5, 2018, the Center sent an email to the Parties in English and Chinese regarding the language of the proceeding. On March 6, 2018, the Complainant confirmed its request that English be the language of the proceeding and filed supplementary supporting material. 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 March 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 1, 2018. On March 13, 2018, the Respondent sent an email in Chinese to the Center requesting the case file documents in Chinese. The Respondent did not file a substantive response.

On April 3, 2018, the Center notified the Parties of the commencement of the panel appointment process. The Center appointed Matthew Kennedy as the sole panelist in this matter on April 11, 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

The Complainant is a private, not-for-profit healthcare network that operates hospitals and physician practices, clinics and satellite services in central Florida in the United States. The Complainant is the registered proprietor of United States trademark registration number 4567738 for ORLANDO HEALTH, registered on July 15, 2014, with a claim of first use on October 1, 2008. Exclusive use of the word “health” is disclaimed in the registration. The registration specifies the provision of certain educational services in class 41 and certain health care and medical services in class 44. That trademark registration remains current. The Complainant has promoted its trademark, including through the sponsorship of the Orlando City Lions major league soccer team.

The Complainant has registered various domain names, including <myorlandohealthscripts.com> that it uses in connection with its official pharmacy website where its patients manage their use and purchase of prescription medications. The Complainant was previously the registrant of another domain name identical to the disputed domain name that redirected to the Complainant’s official pharmacy website and that lapsed in May 2017.

The Respondent is an individual ostensibly resident in China. His address in the Registrar’s WhoIs database appears to be an address in a town in Fujian province but is stated to be in Beijing.

The disputed domain name was registered on November 10, 2017. It resolves to a website that displays an image of the Complainant’s website. The images of the hyperlinks on the Complainant’s website are inactive. The website to which the disputed domain name resolves adds a prominent drop-down menu that displays a list of famous brand goods but the links are inactive. The website also adds two hyperlinks that redirect to other websites where users can download a pharmaceutical prescription refill mobile application not associated with the Complainant. The Respondent’s website was updated in January 2018 to reflect a change to the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s ORLANDO HEALTH trademark. The disputed domain name has integrated that trademark in its entirely, as a dominant element, with the additional descriptive word “scripts” that does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s marks in a domain name or in any other manner. The Respondent has never been commonly known by the disputed domain name. The Respondent did not have any authorization or consent to register the disputed domain name containing the Complainant’s trademark. The Respondent is not making any legitimate, non-commercial or fair use of the disputed domain name, but rather is using it to simply mislead consumers and tarnish the trademarks of the Complainant.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States. There is no evidence of any actual or contemplated good faith use of the disputed domain name; rather, the Respondent has displayed a copycat version of the Complainant’s legitimate website. The Respondent's display of a “copycat” version of the Complainant’s legitimate website is an obvious attempt to confuse consumers into believing there is an affiliation between the Complainant and the Respondent. The Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement.

B. Respondent

The Respondent did not submit a substantive response to the Complainant’s contentions.

6. Discussion and Findings

6.1 Language of the Proceeding

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the Respondent’s email address uses the English language; that the content of the website visible under the disputed domain name is in English only; and that the Complainant has identified numerous other domain names registered by the Respondent in English that resolve to websites in English, so that there is no doubt that the Respondent is able to understand that language.

The Respondent submits that he cannot read the materials submitted in English and requests that they be provided in Chinese.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English. The Respondent has registered at least four domain names in English, including the disputed domain name, all of which resolve to websites entirely in English, from which it is reasonable to conclude that the Respondent is in fact able to communicate in that language. In these circumstances, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a response in Chinese but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:

(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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has registered trademark rights in the ORLANDO HEALTH trademark.

The disputed domain name incorporates the Complainant’s trademark in its entirety as its dominant element.

The disputed domain name includes additional elements that consist of the word “scripts” and a generic Top-Level Domain (“gTLD”) suffix. The word “scripts” is a dictionary word. The mere addition of a dictionary word does not dispel confusing similarity between a domain name and a trademark for the purposes of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. A gTLD suffix such as “.com” has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhangleiWIPO Case No. D2014-0080.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or

(iii) [the Respondent is] making a legitimate non-commercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel has already found that the disputed domain name is confusingly similar to the Complainant’s ORLANDO HEALTH trademark. The Complainant submits that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s marks in a domain name or in any other manner.

The disputed domain name resolves to a website that displays an image of the Complainant’s pharmacy website, with some modifications. The website is presented as the Complainant’s official pharmacy website, when in fact it is not. These facts indicate that the Respondent’s use of this disputed domain name is not in connection with a bona fide offering of goods or services.

According to the information in the Registrar’s WhoIs database, the Respondent’s name is “Mei Feng”, not “orlandohealthscripts” or even “Orlando”. There is no evidence that the Respondent has been commonly known by the disputed domain name.

The website to which the disputed domain name resolves displays hyperlinks to websites that offer a pharmaceutical prescription refill mobile application not associated with the Complainant. This is not a legitimate noncommercial or fair use.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he or she did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The third and fourth circumstances are as follows:

“(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’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 Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

The Respondent registered the disputed domain name in November 2017, years after the Complainant obtained its trademark registration. The disputed domain name wholly incorporates the Complainant’s ORLANDO HEALTH trademark and it resolves to a website that displays an image of the Complainant’s pharmacy website, including the ORLANDO HEALTH trademark. The disputed domain name was registered several months after the lapse of an identical domain name registration that was previously registered by the Complainant and redirected to the Complainant’s pharmacy website. This all gives the Panel reason to find that the Respondent was aware of the Complainant and its ORLANDO HEALTH trademark at the time that the Respondent registered the disputed domain name and that the Respondent registered the disputed domain name in bad faith.

The Respondent uses the disputed domain name in connection with a website that displays an image of the Complainant’s pharmacy website with none of its functionality but rather with active hyperlinks to websites that offer a pharmaceutical prescription refill mobile application that is not associated with the Complainant. This use is intended to generate revenue for suppliers associated with that application, if not for the Respondent personally. The Panel considers that this use of the disputed domain name intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of the products on that website as described in paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 <orlandohealthscripts.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: April 25, 2018