WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The British United Provident Association Limited (“Bupa”) v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2018-1117
1. The Parties
Complainant is The British United Provident Association Limited (“Bupa”) of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Lewis Silkin LLP, UK.
Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <myviewbupa.com> 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 May 17, 2018. On May 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 4, 2018, including a witness statement of […] of Complainant’s representative that factually supplements the original Complaint.
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 Respondent of the Complaint, and the proceedings commenced on June 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 26, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2018.
The Center appointed Timothy D. Casey as the sole panelist in this matter on July 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
Complainant is an international provider of hospitals, health clinics, health centers and insurance services throughout the UK, Australia, Asia, North, Central and South America, Africa and the Middle East. Complainant was founded in 1947, insured 5,100,000 individuals as of 2015, and generated worldwide revenue of GBP 12.2 billion as of 2017. Complainant first protected the BUPA trademark in 1986 in numerous classes and now has trademarks registered in over 100 countries (the “BUPA Trademarks”), including Panama trademark registrations Nos. 120357 and 120358 in classes 44 and 36, both registered on April 3, 2002. Complainant also has approximately 900 related domain names and branded online tools, such as “BUPA Finder,” which was accessed over 2,700,000 times in the 12 months up to May 23, 2016. The Complaint also notes that the disputed domain name substantially corresponds to a subdomain, namely <myview.bupa.com>, utilized by Complainant.
The disputed domain name was registered May 4, 2018. To date, the disputed domain name has not resolved to a website that did feature any content other than pay-per-click advertising, including advertisements with third parties competing with Complainant’s business, and was offered for sale on Sedo for USD 500. Respondent has also been named as the respondent in at least 10 prior UDRP cases where the disputed domain name was transferred to the complainant, including at least four cases involving typosquatting, and is registrant of additional domain names that clearly typosquat other well-known trademarks.
5. Parties’ Contentions
Complainant contends that the disputed domain name, which includes BUPA in its entirety, is confusingly similar to the BUPA Trademarks, and that the addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant in terms of differentiating or distinguishing the disputed domain name from the BUPA Trademarks. Complainant further contends that the addition of the generic dictionary words “my” and “view” followed by the BUPA Trademarks does nothing to distinguish the disputed domain name from the BUPA Trademarks or to diminish confusion therewith. In furtherance of such confusion, Complainant contends that Respondent purposely designed the disputed domain name to mimic a sub-domain, <myview.bupa.com>, provided by Complainant, either to take advantage of mistypes or to create an implied affiliation with Complainant.
Complainant further contends that Respondent has not licensed the BUPA Trademarks and is not known to Complainant as an authorized licensee or user of the BUPA Trademarks, nor does Respondent have any right or legitimate interest in the disputed domain name, which was registered many years after the BUPA Trademarks were registered. The similarity between the disputed domain name and the BUPA Trademarks, according to Complainant, makes it impossible for Respondent to pretend that the disputed domain name was intended for use in the development of legitimate activities. Complainant further contends that Respondent has not demonstrated use of or preparation to use the disputed domain name in connection with a bona fide offering of goods or services, as evidenced by the pay-per-click links of Respondent’s website, some related to health insurance plans and providers, and to a link to sell the disputed domain name.
Complainant therefore asserts that Respondent’s pattern of conduct seeks to take advantage of Complainant’s established brands for its own profit and benefit.
As for evidence of registration in bad faith, Complainant contends that the disputed domain name was registered primary either for the purpose of i) selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the disputed domain name, ii) of preventing Complainant from using the disputed domain name in its own business, or iii) of disrupting Complainant’s business. By asserting Complainant’s trademark rights in Panama, Complainant also implies that Respondent must have been aware of Complainant’s BUPA Trademarks prior to registration of the disputed domain name.
With regard to Respondent’s bad faith use of the disputed domain name, Complainant contends that Respondent has intentionally attempted to attract Internet users to Respondent’s website or other on-line locations for commercial gain, by creating a likelihood of confusion with the BUPA Trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website. In addition, Complainant notes that the disputed domain name has been used to create confusion, which has been to the unfair detriment of Complainant, its customers and the general public, as well as for the intention of perpetrating misleading
e-mails or other communications.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant’s use of the BUPA Trademarks possibly as early as 1947, more than 70 years prior to registration of the disputed domain name, and Complainant’s registration of many BUPA Trademarks since 1986, are more than sufficient to establish that Complainant has trademark rights in the BUPA Trademarks.
Complainant contends that the disputed domain name incorporates the entirety of the BUPA Trademarks and is confusingly similar to the BUPA Trademarks. Complainant contends that the addition of the gTLD and generic dictionary prefix words are not sufficient to change the overall impression of the disputed domain name as being confusingly similar to Complainant’s BUPA Trademarks.
The Panel agrees and finds that the disputed domain name is confusingly similar to the BUPA Trademarks.
B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. The Panel also agrees that operation of a website including pay-per-click links, some of them associated with competitors to Complainant’s products, apparently in an effort to obtain click-through revenue, does not constitute a bona fide offering of goods or services, nor does it constitute a legitimate noncommercial or fair use. Likewise, Respondent’s offer to sell the disputed domain name for more than Respondent’s out-of-pocket costs does not constitute a legitimate use on its own.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Given i) the timing of Complainant’s first use and first registration of the BUPA Trademarks and Complainant’s use of the BUPA Trademarks in association with the noted services, ii) the typosquatting nature of the disputed domain name (in relation to Complainant’s subdomain <myview.bupa.com>) and Respondent’s prior UDRP findings of typosquatting, iii) the subsequent timing of the registration of the disputed domain name, iv) Complainant’s prior trademark rights in Panama where Respondent is located, and v) evidence of Respondent’s subsequent usage, the Panel finds that Respondent clearly knew of the BUPA Trademarks at the time of registration of the disputed domain name. Respondent’s registration of the disputed domain name was therefore in bad faith.
In addition, the Panel finds the subsequent usage of the disputed domain name, as previously described, to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <myviewbupa.com> be transferred to Complainant.
Timothy D. Casey
Date: July 24, 2018