WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
North American Spine Society v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Atul Shukla
Case No. D2018-0779
1. The Parties
The Complainant is North American Spine Society of Burr Ridge, Illinois, United States of America (“United States”), represented by Polsinelli PC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / Atul Shukla of Thane, India.
2. The Domain Name and Registrar
The disputed domain name <nass-2018.org> 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 6, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2018, 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 18, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 18, 2018.
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 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2018.
The Center appointed Knud Wallberg as the sole panelist in this matter on May 22, 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 global multidisciplinary medical society whose aim inter alia is to foster the highest quality of evidence-based spine care for patients.
The Complainant has used the name “North American Spine Society” since 1985 and the acronym NASS since 2006. The Complainant is the owner of a federal registration of the trademark NASS in the United States, registration No. 4,560,206, registered on July 1, 2014.
The disputed domain name <nass-2018.org> was registered on December 16, 2017. The disputed domain name previously resolved to a website that showed a “Housing Request” form in which Internet users could request accommodations for “NASS 2018 33rd Annual Meeting of the North American Spine Society”. Following a DMCA notice from the Complainant to the host of the Respondent’s website under the disputed domain name there is currently no active website attached to the disputed domain name.
5. Parties’ Contentions
The Complainant states that the disputed domain name <nass-2018.org> is confusingly similar to its trademark NASS. The Complainant contends that the addition of the year “2018” to the term “NASS” is not sufficient to escape the finding that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Complainant contends that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not affiliated with the Complainant nor authorized by or related to the Complainant in any way. The fact that the Respondent used the disputed domain name for a website, on which it displayed content that was highly similar to the official website of the Complainant and which contained a false “Housing Request” service, does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use. For these reasons the Complainant further contends that the Respondent is not making a legitimate, noncommercial use of the disputed domain name. In addition, the Complainant claims that the Respondent has not been commonly known by the disputed domain name.
Given the distinctiveness of the Complainant’s trademarks and reputation, the Complainant further claims that the Respondent has registered the disputed domain name with full knowledge of the Complainant’s trademark NASS. The Complainant also contends that the Respondent registered and has used the disputed domain name with the intention of disrupting the business of the Complainant in relation to its annual conference in 2018.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(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 is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <nass-2018.org> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark NASS. The disputed domain name incorporates this mark in its entirety with the addition of the year “2018”. The generic Top-Level Domain extension “.org” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been using the disputed domain name (discussed below) the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case including the longstanding of use of the Complainant’s trademark, and the distinctive nature of the mark NASS, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent undoubtedly has been aware of the fact that it chose a domain name that would attract Internet users who are seeking information on the Complainant’s annual conference in a manner that would create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
As to the use of the disputed domain name the Respondent uses the disputed domain name for an apparent phishing scam to deceive potential participants to the Complainant’s annual conference to reveal their contact information and financial information by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activities. This is particularly evident in this case where the Respondent used the disputed domain name for a website, which imitated the Complainants official website inter alia by depicting the Complainant’s design mark NASS on the website. This constitutes bad faith use under the Policy, see, inter alia, National Westminster Bank plc v. Abdelilah Jadron, WIPO Case No. D2013-2232; NES Rentals Holdings, Inc. v. Domains By Proxy, LLC and Allison Mills, WIPO Case No. D2013-1812; Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849; and Accor and SoLuxury HMC v. Kelvin Osas, Ke, WIPO Case No. D2017-0692. The fact that the website was deactivated by the Respondent’s hosting provider after having received a request from the Complainant to do so, and that it still is inactive, does not alter this finding.
Noting that the disputed domain name incorporates a registered and distinctive trademark, that no Response has been filed, that the disputed domain name has been used in bad faith and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <nass-2018.org> be transferred to the Complainant.
Date: June 5, 2018