WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Change Healthcare Operations, LLC v. Registration Private, Domains By Proxy, LLC / Fundacion Comercio Electronico, Carolina Rodrigues
Case No. D2020-0431
1. The Parties
The Complainant is Change Healthcare Operations, LLC, Tennessee, United States of America (“United States”), represented internally.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Fundacion Comercio Electronico, Carolina Rodrigues, Panama.
2. The Domain Names and Registrar
The disputed domain names <changehealthcareixt.com> (the first disputed domain name) and <changehealthcarecommunicator.com> (the second disputed domain name) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2020. On February 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 25, 2020, the Registrar transmitted by email to the Center its verification response:
(a) it is the Registrar for the disputed domain names;
(b) disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to both disputed domain names.
The Center sent an email communication to the Complainant on March 2, 2020 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 March 3, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on April 29, 2020. 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 based in the United States. It provides software, analytics and technology-related services to hospitals, patients, health insurance companies, government agencies, physicians and other healthcare providers there.
According to the Complaint, the Complainant’s customer base includes 5,500 hospitals, 118,000 dentists, 900,000 physicians, 600 laboratories and 33,000 pharmacies in the United States. It has facilitated some 14 billion healthcare transactions and over USD 1 trillion in claims.
The Complainant has been providing CHANGE HEALTHCARE branded web and payment portal services from its website at <changehealthcare.com> since it registered that domain name in May 2005. The Complainant provides its customers with a secure patient portal through the sub-domain <communicator.changehealthcare.com>.
The Complainant has provided evidence of seven registered trademarks in the United States. These include United States Registered Trademark No. 5,360,361, CHANGE HEALTHCARE, for a range of medical software products and services in International Classes 9, 35, 36, and 42 and which has been registered since December 19, 2017. The other registrations are also for CHANGE HEALTHCARE. They include a registration for relevant services in International Class 38, United States Registered Trademark No. 5,788,216 which was registered on June 25, 2019, and another for services in International Class 44, United States Registered Trademark No. 5,628,441, which was registered on December 11, 2018.
In March 2019, the Complainant had announced an initial public offering (“IPO”) of shares in the amount of USD 100 million. In May 2019, the amount sought to be raised was increased to USD 200 million. On June 14, 2019, the Complainant announced it was further extending its IPO to raise approximately USD 1 billion.
The Second Respondent1 registered the first disputed domain name, <changehealthcareixt.com> on June 14, 2019. This would appear to have occurred after the Complainant’s public announcement of the significant extension of its IPO. The Respondent registered the second disputed domain name, <changehealthcarecommunicator.com> on September 30, 2019.
For a period, the first disputed domain name resolved to the website of one of the Complainant’s direct competitors. Subsequently, before the Complaint was filed, the first disputed domain name resolved to a parking page which included pay-per-click (“PPC”) links to services competitive with the Complainant under headings such as “Health Exchange”, “Health Behavior Change” and “Invitation Health Choosing Change”. The second disputed domain name also resolved to a parking page with the same content as the parking page for the first disputed domain name.
5. Discussion and Findings
No response has been filed.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. The Complaint has been sent to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present her or its case. On the materials before the Panel, there do not appear to be any exceptional circumstances warranting the displacement of the rule in paragraph 14(a).
Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(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.
As both disputed domain names are registered in the name of the Respondent, joinder of both in the one proceeding is permissible: Rules paragraph 3(c). The Complaint against both disputed domain names is also based on the same trademarks. In these circumstances, there is no unfairness or prejudice to the Respondent in including both disputed domain names in the one Complaint. On the contrary, it is both sensible and efficient to deal with both disputed domain names in the one proceeding. Accordingly, there is no reason to displace the permission in paragraph 3(c) of the Rules.
The language of the registration agreements is English. No reason has been suggested as a basis for displacing the language of the administrative proceeding to a language other than English. Accordingly, as provided in paragraph 11 of the Rules, English is the language of the proceeding.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for CHANGE HEALTHCARE referred to in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Disregarding the “.com” gTLD, each disputed domain name consists of the Complainant’s trademark (with the space between the two words omitted) and, in one case, the letters “IXT” and, in the other, the word “communicator”. The addition of these elements does not avoid a finding of confusing similarity. See e.g. WIPO Overview 3.0, paragraph 1.8. As each disputed domain name contains the whole of the Complainant’s trademark, therefore, each disputed domain name is confusingly similar to the Complainant’s trademark.
Accordingly, the Panel finds that the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed 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) [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 noncommercial 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. The disputed domain names are not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
The use of the first disputed domain name to resolve directly to the website of one of the Complainant’s competitors does not qualify as an offering of goods or services in good faith under the Policy. Similarly, while the Policy does not prohibit the use of PPC links per se,the use of such links to take advantage of another person’s trademark without that person’s permission also does not qualify as a good faith offering under the Policy. That is all the more so where, as here, at least a number of the PPC links are to sites providing services in competition with the Complainant. See e.g. WIPO Overview 3.0, section 2.9.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The coincidence of the Complainant’s announcement that it was extending its IPO from USD 200 million to approximately USD 1 billion and the registration of the first disputed domain name suggests that the Respondent was indeed aware of the Complainant and its trademark when the Respondent registered the first disputed domain name.
That suggestion is reinforced by the resolution of the first disputed domain name directly to the website of one of the Complainant’s competitors.
Further, the second disputed domain name is very similar to the sub-domain used by the Complainant for its customers’ secure payments portal: <communicator.changehealth.com>.
In addition, there is no evidence that the Respondent has any personal involvement in the healthcare industry in Panama. On the contrary, the Complainant has submitted evidence that the Respondent has been the unsuccessful respondent in at least eight prior disputes under the Policy.
In these circumstances, the Panel has little difficulty in finding that the Respondent has registered and is using the disputed domain names at least in the manner proscribed by paragraph 4(b)(iv) of the Policy:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
On the record in this administrative proceeding, therefore, the Panel finds the Respondent has registered and used both disputed domain names in bad faith.
Accordingly, the Complainants have established all three requirements under 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 names <changehealthcareixt.com> and <changehealthcarecommunicator.com> be transferred to the Complainant.
Warwick A. Rothnie
Date: May 11, 2020
1 As the First Respondent is the Registrar’s privacy proxy service, the Panel will refer to the Second Respondent as the Respondent unless it is necessary to distinguish between the Respondents.