WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Benefitfocus.com, Inc. v. Oneandone Private Registration, 1&1 Internet Inc. / Maris Walter

Case No. D2020-0516

1. The Parties

Complainant is Benefitfocus.com, Inc., United States of America (the “United States” or “U.S.”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.

Respondent (collectively) is Oneandone Private Registration, 1&1 Internet Inc., United States / Maris Walter, United States.

2. The Domain Name and Registrar

The disputed domain name <benefitfocusgroup.com> (the “Domain Name”) is registered with 1&1 IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On that same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 4, 2020 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 March 5, 2020.

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 March 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2020.

The Center received two emails from Respondent on April 8, 2020 stating generally that she has spoken with the Registrar who confirmed her account was cancelled and closed and was told to ignore further messages about this dispute.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on April 8, 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.

On April 22, 2020, the Panel issued Procedural Order No. 1 (“Order No. 1”) stating in pertinent part:

“The Panel issues the present Procedural Order No. 1, to give the Respondent the opportunity to respond to the issues raised by the Complainant in its Complaint. The Panel grants the Respondent five (5) business days from the date of this Administrative Panel Order to submit a response. The Response due date is April 27, 2020.

The Panel also notes that the Parties are free to settle their dispute between themselves. In that regard, if the Respondent, Maris Walter, is willing to transfer the disputed domain name to the Complainant, the Parties should inform the Panel.”

Respondent did not file any response pursuant to Order No. 1.

4. Factual Background

Complainant provides a cloud-based benefits management platform for consumers, employers, insurance carriers, and brokers. It owns trademark registrations for the BENEFITFOCUS Mark or “the Mark” in the United States (e.g., U.S. Registration No. 5,483,411, registered on June 5, 2018, first use 2011; U.S. Registration No. 2,496,059, registered on October 9, 2001, first use 2000) and in other countries around the world. Complainant adopted and began using its BENEFITFOCUS Mark for its business in May 2000.

As of December 31, 2018, Complainant served 1,024 large employer customers and 57 insurance carrier customers. In addition, Complainant has established approximately 2,200 data exchanges with leading insurance, finance, HRIS and payroll providers. Presently, Complainant connects over 150,000 employers and more than 23 million consumers with the benefit industry’s leading brokers, carriers, and largest ERP provider. One in fourteen Americans are currently active on Complainant’s Benefitfocus Benefitsplace platform.

To establish itself on the Internet and promote and offer for sale its products and services, Complainant registered and uses the <benefitfocus.com> domain name.

Complainant sent an email to Respondent on January 30, 2020, requesting immediate transfer of the Domain Name to Complainant. Respondent did not respond to the email thus Complainant sent a follow up email to Respondent on February 7, 2020. Complainant still has not received a response from Respondent.

Respondent registered the Domain Name on October 18, 2019. The Domain Name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant has established significant fame and goodwill in its BENEFITFOCUS Mark. Through Complainant’s trademark policing program, it was discovered that Respondent registered the Domain Name on October 18, 2019, many years after Complainant first began using and registered the BENEFITFOCUS Mark. Before Respondent registered the Domain Name, Complainant obtained common law rights in the BENEFITFOCUS Mark dating back at least as early as May 15, 2000, and subsequently obtained corresponding United States federal trademark registrations for the Mark. Complainant’s trademark rights in the BENEFITFOCUS Mark are incontestable under 15 U.S.C. § 1065. Thus, the certificate of registration constitutes conclusive evidence of the validity of the Mark and of the registration of the Mark, of the registrant’s ownership of the Mark, and of the registrant’s exclusive right to use the Mark in commerce. The Domain Name wholly incorporates the BENEFITFOCUS Mark followed by the descriptive/generic suffix “group”, which is a descriptive/generic term commonly used in connection with insurance and employee benefit products and services, which is therefore directly related to the products and services associated with the BENEFITFOCUS Mark. It is well-established that adding a descriptive or generic word to a trademark in a domain name, particularly when such additional word(s) relate to the goods or services with which the trademark is used, does not avoid finding confusing similarity.

Complainant has not authorized Respondent to use the BENEFITFOCUS Mark, including as a licensee. Moreover, Respondent is not commonly known by the name “benefitfocus” or “benefitfocusgroup”.

The WhoIs information for the Domain Name indicates that Respondent, Oneandone Private Registration / 1&1 Internet Inc. / Maris Walter, is not commonly known by the Domain Name, and thus, Respondent lacks rights and legitimate interests in the Domain Name. Passive holding of a domain name incorporating a third-party’s well-known mark does not normally amount to a bona fide use; rather, it is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. Here, Respondent has not used the Domain Name for any purpose since registering it. Furthermore, when Respondent registered the Domain Name, Complainant had well established worldwide rights in the BENEFITFOCUS Mark, putting Respondent, at a minimum, on constructive notice of Complainant’s exclusive rights to the BENEFITFOCUS Mark. Accordingly, Respondent’s passive holding of the Domain Name, which corresponds to Complainant’s well-known trademark, is evidence of Respondent’s lack of a bona fide use of the Domain Name, which is further evidence of Respondent’s lack of rights or legitimate interest in the Domain Name. Respondent’s silence, in light of her opportunity to address the issue in response to Complainant’s cease and desist emails, is evidence that she lacks any rights or legitimate interests in the Domain Name.

Respondent’s use of the Domain Name constitutes bad faith because Respondent is passively holding a domain name whereby: (i) Complainant’s Mark (that is included in the Domain Name) has a strong reputation and is widely known, as evidenced by Complainant’s nearly twenty (20) continuous years of use of the trademark in the United States, as well as in multiple countries worldwide; (ii) Respondent has made no use of the Domain Name for over four (4) months since registering the Domain Name on October 18, 2019; and (iii) Respondent has failed to provide any response, substantive or otherwise, to any of Complainant’s pre-complaint communications. Also, Respondent failed to respond to Complainant’s cease and desist emails and it used privacy services.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel concludes that Complainant has rights in the BENEFITFOCUS Mark by virtue of the United States trademark registrations cited above.

The Domain Name incorporates in its entirety Complainant’s BENEFITFOCUS Mark. Where a domain name incorporates complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105. Adding the word “group” and the generic Top-Level Domain (“gTLD”) “.com” after the Mark does not prevent a finding of confusion similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307 (holding that it is a well-established principle that descriptive or generic additions to a trademark, and particularly those that designate the goods or services with which the mark is used, do not avoid confusing similarity of domain names and trademarks); see also section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”) Here, the addition of “group”, a widely-used descriptive term in the health insurance and employee benefits industry, does not prevent a finding of confusing similarity.

With regard to the gTLD “.com” in the Domain Name, it is common practice under the Policy to disregard gTLDs such as the “.com”, “.net” and “.org” for the purposes of determining confusing similarity under paragraph 4(a)(i) of the Policy. See, e.g., Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184.

For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

On the record evidence, it is uncontested that Respondent has no rights or legitimate interests in the BENEFITFOCUS Mark.

Complainant maintains that Respondent has no relationship with Complainant authorizing it to use Complainant’s Mark (e.g., licensee). Further, there is no evidence Respondent used the BENEFITFOCUS Mark before Complainant adopted and used it many years ago.

Complainant further points out that there is no evidence Respondent has been known by the name “benefitfocus” or “benefitfocusgroup”. The WhoIs information for the Domain Name indicates that Respondent is not commonly known by the Domain Name, and thus, Respondent lacks rights and legitimate interests in the Domain Name.

Lastly, Complainant argues that Respondent’s passive holding of the Domain Name, which corresponds to Complainant’s well-known trademark, is evidence of Respondent’s lack of a bona fide use of the Domain Name, which is further evidence of Respondent’s lack of rights or legitimate interests in the Domain Name. Also, Complainant points out that Respondent’s failure to respond to Complainant’s cease and desist emails, is acknowledgement Respondent lacks rights or legitimate interests in the Domain Name.

Where, as here, Complainant has raised a prime facie presumption of Respondent’s lack of any rights or legitimate interests in the BENEFITFOCUS Mark, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent registered the Domain Name on October 18, 2019, years after Complainant began using the Mark and its trademark registration for the BENEFITFOCUS Mark issued (see U.S. Registration No. 2,496,059, registered on October 9, 2001, first use 2000). Given Complainant’s widespread and long-standing use of the Mark in and outside the United States, the Panel finds it is highly unlikely Respondent was unaware of the Mark when it registered the Domain Name. Respondent’s bad faith registration is also evidenced by the fact that the Domain Name: (1) was formed by adding the word “group” to Complainant’s well-known Mark. As indicated above, “group” is a widely-used term in the health insurance and employee benefits industry – the industry Complainant’s products and services are related to; (2) is confusingly similar to Complainant’s Mark; and (3) Respondent has not shown any legitimate use for it. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.

There is also no evidence Respondent actually used or contemplated a good faith use of the Domain Name. Respondent is passively holding a Domain Name that incorporates Complainant’s well-known BENEFITFOCUS Mark. There is no plausible reason for Respondent’s selection of a confusingly similar Domain Name in which Respondent has no rights or legitimate interests other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273 (“the incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be, in and of itself, an indication of bad faith”); Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (finding bad faith when the registration of a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). Indeed, Respondent had multiple opportunities – in response to Complainant’s cease and desist letter and in response to Order No. 1 – to set forth evidence of a good faith use, but failed to do so.

For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 Domain Name <benefitfocusgroup.com> be transferred to Complainant.

Harrie R. Samaras
Sole Panelist
Date: May 5, 2020