WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Quest Diagnostics Investments LLC v. Quest
Case No. D2019-1030
1. The Parties
The Complainant is Quest Diagnostics Investments LLC, United States of America (“United States”), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is Quest, Canada.
2. The Domain Name and Registrar
The disputed domain name <questdiagnostics-inc.com> is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2019. On May 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 May 7, 2019, 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 May 13, 2019.
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 March 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2019.
The Center appointed David Stone as the sole panelist in this matter on June 12, 2019. 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 operates as a subsidiary of Quest Diagnostics Incorporated, one of the leading providers of diagnostic information services. Quest Diagnostics Incorporated was incorporated in 1990 (although its predecessor companies date back to 1967) and employs around 46,000 people in its facilities in the United States, India, the United Kingdom, Mexico and Puerto Rico. Quest Diagnostics Incorporated is a component of the S&P 500 Index and is listed on the New York Stock Exchange. It had revenue of approximately USD 7,53 billion in 2018, and its business has been recognized multiple times by numerous leading trade, media, and business organizations, including Fortune and Forbes.
The Complainant owns registered trade marks in jurisdictions including Canada, the United States and the European Union. The following (the “Marks”) are relevant here:
- QUEST DIAGNOSTICS: Canadian registration number TMA736785, registered on March 24, 2009, in Nice classes 1, 5, 16, 35, 36, 38, 39, 42 and 44;
- QUEST DIAGNOSTICS: United States registration number 2365335, registered on July 4, 2000, in Nice class 42;
- QUEST DIAGNOSTICS: United States registration number 3107154, registered on June 20, 2006, in Nice classes 16, 35, 39 and 42;
- QUEST DIAGNOSTICS: European Union registration number 001952589, registered on July 18, 2002 in Nice classes 35, 39 and 42; and
- QUEST DIAGNOSTICS: European Union registration number 002402980, registered on December 3, 2004 in Nice classes 5, 10, 16 and 35.
Furthermore, Quest Diagnostics Incorporated operates its primary website at the domain “www.questdiagnostics.com”, which was registered in 1997. This site received more than 5 million visits between October 2018 and March 2019 and is ranked in the top 2,000 most popular websites in the United States.
The disputed domain name was registered in January 14, 2019. The disputed domain name was used to send fraudulent emails, and at the time of filing, it did not resolve to any active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Marks. The only difference between them is the inclusion in the disputed domain name of a hyphen, the descriptive term “inc” (meaning “incorporated”) and the Top-Level Domain (“TLD”) “.com”. However, punctuation and the TLD are not taken into account in the assessment of similarity, and the inclusion of a descriptive term does not diminish the confusing similarity caused by the presence in the disputed domain name of the entire text of each of the Marks. In fact, the inclusion of “inc” produces an association with the business name of the Complainant’s parent company, and serves to increase the confusing similarity between the disputed domain name and the Marks.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The first stated ground is that the Respondent is not commonly known by the disputed domain name. After submission of the Complaint, the Registrar identified the Respondent as “Quest”, with an address that matches that of Hilton Hotels in Toronto. No Canadian company called Quest is registered at this address, and registration of the disputed domain name using the name Quest is not proof that the Respondent is commonly known by this name. Furthermore, the Respondent email address provided by the Registrar seems to refer to an altogether different third party. There is thus no evidence that the Respondent is known by the disputed domain name, and the Complainant maintains that the Respondent has not received a licence or any other authorization to use it.
The second ground is that the Respondent is not using the disputed domain name either in connection with a bona fide offering of goods or services or for a legitimate noncommercial purpose. At present the disputed domain name does not resolve to a website, but the Complainant claims that the Respondent, in emails sharing the domain of the disputed domain name, posed as a senior member of the Complainant’s parent company in an attempt to pass itself off as the Complainant for commercial gain, and in doing so exploited the Complainant’s fame and goodwill.
Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant claims that in registering a domain name containing the text of the Marks, and in sending from the disputed domain name fraudulent emails purporting to be from an employee of the Complainant, the Respondent must have been aware of the Marks and the business of the Complainant’s parent company. This behaviour is indicative of bad faith in that it (i) demonstrates deliberate registration of a domain name using another party’s trade marks, and (ii) demonstrates use of the domain name for illicit purposes.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets out the three requirements that the Complainant must prove in order to succeed:
(i) that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The evidence of the Marks adduced by the Complainant serves to prove that it has rights in QUEST DIAGNOSTICS, particularly in Canada, where the Respondent is located. As the Complainant contends, those elements of the disputed domain name that are added to the Marks are not taken into account when assessing similarity. See Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119; sections 1.8 and 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”). The remainder of the disputed domain name is identical to the Marks, and so the Panel finds that the disputed domain name as a whole is confusingly similar to the Marks and that the condition in paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the criteria that determine whether a respondent has rights or legitimate interests in a domain name:
(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) as an individual, business or other organisation, the Respondent has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent has been making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant’s contentions satisfy the Panel that, absent evidence to the contrary, the Respondent is not known by the disputed domain name and in fact used address and email contact information drawn from unwitting third-party sources when registering the disputed domain name. Registration under the name “Quest”, which does bear some similarity to the disputed domain name, does not alone suffice to show that the Respondent is commonly known by the disputed domain name. See LEGO Juris A/S v. Kiana Seyfi, Lego, WIPO Case No. D2016-1166.
The evidence adduced by the Complainant as to the use the Respondent has made of the disputed domain name does not indicate intent by the Respondent to make a bona fide offering of goods or services or to make legitimate noncommercial or fair use of the disputed domain name. On the contrary, it indicates a clear intent to mislead recipients of the emails to believe that the Complainant is their source, a use that does not confer on the Respondent any rights or legitimate interests. See Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147; section 2.13 of the WIPO Overview 3.0.
The above suffices to make out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It falls to the Respondent to rebut this case (see section 2.1 of the WIPO Overview 3.0), and as there has been no attempt to do so the Panel concludes that the Complainant has satisfied the condition in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out the non-exhaustive criteria for bad faith. Generally, for the purposes of the Policy, bad faith constitutes registration and use of a domain name in order to:
(i) sell, rent or transfer the domain name to the trade mark owner (or a competitor thereof) for a profit;
(ii) prevent the trade mark owner from registering its trade mark in a domain name, provided that the respondent is engaged in a pattern of such conduct;
(iii) disrupt the business of a competitor; or
(iv) divert Internet traffic for commercial gain.
On the evidence put forward by the Complainant, both the registration of the disputed domain name and the use to which it has been put indicate bad faith on the part of the Respondent. Where a domain name that is confusingly similar to the marks of a third party is registered using what appears to be false contact information, and then used to send fraudulent phishing emails in the name of an employee of the owner of the marks, it is difficult to believe either that the registrant did not know of the marks or the business of their owner, or that there was any intent but to put the domain name to bad-faith use. See Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226; Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
The Panel is therefore satisfied that the Respondent registered and used the disputed domain name in bad faith to “cause confusion, mistake and deception”, and holds accordingly that the Complainant has satisfied the condition in 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 disputed domain name <questdiagnostics-inc.com> be transferred to the Complainant.
Date: June 19, 2019