WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Allergy Partners, P.L.L.C. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo
Case No. D2021-1341
1. The Parties
The Complainant is Allergy Partners, P.L.L.C., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil.
2. The Domain Name and Registrar
The disputed domain name <allergy.partners> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 30, 2021, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) indicating the Respondent registered the disputed domain name on March 2, 2021;
(d) indicating the language of the registration agreement is English;
(e) confirming that the registration agreement included an acknowledgement that the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
The Center sent an email communication to the Complainant on May 3, 2021 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 6, 2021.
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 May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 4, 2021. 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 medical practice specializing in the treatment of allergies, asthma, and immunology in many states of the United States. The practice was initially established in 1977 in North Carolina. It adopted the name “Allergy Partners” in 1994 and since then has expanded significantly. It currently has 173 providers operating from over 125 office locations in 20 states of the United States. The Complainant also promotes its services from a website associated with the domain name <allergypartners.com>.
According to the Complaint, it has been continuously using the name and trademark ALLERGY PARTNERS for its practice since 1994.
(a) United States Registered Trademark No. 4,955,397, ALLERGY PARTNERS, which has been registered in respect of medical services in the fields of allergy, asthma and immunology in International Class 44 since May 10, 2016; and
(b) United States Registered Trademark No. 4,955,395, ALLERGY PARTNERS and sunburst design, which has been registered in respect of medical services in the fields of allergy, asthma and immunology in International Class 44 since May 10, 2016.
In both cases, there is a disclaimer of the exclusive right to use the word “allergy” apart from the mark as shown.
According to the Registrar, the Respondent registered the disputed domain name on March 2, 2021. Since about that time, it has resolved to a page which simply features pay-per-click (“PPC”) advertising links to services competitive with the Complainant’s services such as online consultations for asthma treatments.
The Complainant points out that the Respondent has been the subject of at least 12 adverse decisions under the Policy in 2020 and 2021.
5. Discussion and Findings
No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind a domain name registrant’s obligations to maintain correct and current contact details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present her or its case.
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. 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 the 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.
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 at the date the Complaint was filed 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 two registered trademarks 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. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, 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), section 1.7.
It is also usual to disregard the design elements of a trademark under the first element as such elements are generally incapable of representation in a domain name. Where the textual elements have been disclaimed in the registration or cannot fairly be described as an essential or important element of the trademark, however, different considerations may arise. See for example, WIPO Overview 3.0, section 1.10.
In the present case, both of the Complainant’s registered trademarks include disclaimers over the exclusive use of the word “allergy” alone. That is, the Complainant’s exclusive rights extend to the composite expression ALLERGY PARTNERS. That composite expression comprises the entirety of the Complainant’s Trademark No. 4,955,397 and, disregarding the sunburst device of Trademark No. 4,955,395 the relevant elements of that trademark.
Generally, in undertaking the comparison, it is permissible to disregard the Top Level Domain (“TLD”) component of a disputed domain name as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11. However, that is not an invariable rule, particularly having regard to the vast expansion of TLDs over the original generic TLDs. Thus, the TLD component can be taken into account where an overall assessment of the disputed domain name as a whole discloses the visual and aural resemblance to the Complainant’s trademark. See e.g. Plan.Net concept Spezialagentur für interactive Kommunikation GmbH v. Murat Yikilmaz, WIPO Case No. D2006-0082 and WIPO Overview 3.0, section 1.11.3.
In the present case, the disputed domain name including the TLD is identical to the Complainant’s trademark apart from the substitution of the “.” for the space. This difference is trivial and can be disregarded. In addition to not being visually or aurally significant, a space cannot be represented in a domain name.
Accordingly, the Complainant’s trademark is visually and aurally recognisable within the disputed domain name. Therefore, the Panel finds that the Complainant has established that the disputed domain name is identical with the Complainant’s trademarks and 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 name.
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. The ultimate burden of proof, however, remains with the Complainant. See, e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the ALLERGY PARTNERS mark. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived.
These factors are typically sufficient to establish the required prima facie case under the Policy.
The word “allergy” is an ordinary English word which denotes a particular physical or medical condition. The registration of such a term does not by itself confer rights or legitimate interests under the Policy in the absence of genuine use or demonstrably intended use in connection with the dictionary meaning. See, e.g., WIPO Overview 3.0, section 2.10.1. It may be questioned whether use for mere PPC advertising links qualifies as genuine use under the Policy. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 in Zerospam Security Inc. v. Internet Retail Billing, Inc., Host Master, WIPO Case No. D2009-1276 which adopted a multi-factorial assessment of legitimacy:
“(i) the respondent regularly engages in the business of registering and reselling domain names and/or using them to display advertising links; (ii) the respondent makes good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others; (iii) the domain name in question is a ‘dictionary word’ or a generic or descriptive phrase; (iv) the domain name is not identical or confusingly similar to a famous or distinctive trademark; and (v) there is no evidence that the respondent had actual knowledge of the complainant’s mark.”
To which it may be added the use must also be directed to a dictionary meaning of the term.
In the present case, there is some evidence to support a positive answer to factor (i). However, the Panel notes that evidence is of some 12 decisions under the Policy in which the Respondent has been found to have registered and used the domain names in issue in bad faith.
There is no evidence that the Respondent made any efforts, let alone good faith efforts, to avoid registering a domain name identical or confusingly similar to someone else’s trademark. On the contrary, such evidence as there is – the 12 prior UDRP decisions finding registration and use in bad faith – suggests a practice of targeting trademark owners. Thus factor (ii) is against legitimacy.
The third and fourth requirements also do not support a finding of rights or legitimate interests here. The disputed domain name in this case is not merely the dictionary word “allergy” but involves the entirety of the Complainant’s trademark ALLERGY PARTNERS. The use of that composite expression, identical to the Complainant’s trademark, for mere PPC links to services competing with the Complainant’s services does not qualify as good faith use under the Policy. See e.g. Fifth Street Capital LLC v. Fluder (aka Pierre Olivier Fluder), WIPO Case No. D2014-1747 and WIPO Overview 3.0, section 2.14.1.
Overall, 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 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. In that regard, the Panel has considered the following circumstances.
First, as discussed above, the disputed domain name is identical to the Complainant’s trademark, which is not just a dictionary word.
Secondly, on the evidence in this administrative proceeding, the Respondent had adopted the disputed domain name without any rights or legitimate interest in it.
Thirdly, the Respondent began using the disputed domain name to provide PPC links to services competing with the Complainant’s services when the Respondent registered the disputed domain name or very shortly afterwards. It may be inferred therefore that the Respondent registered the disputed domain name for the purpose for which she has in fact used it.
In the circumstances outlined above, therefore, it appears that the Respondent has targeted the Complainant’s trademark. Moreover, as the Complainant points out, the Respondent has been found in at least 12 prior UDRP cases in the last year or so to have registered and used domain names in bad faith. That is, the Respondent has engaged in a pattern of registering and using domain names in bad faith. See, e.g., WIPO Overview 3.0, section 3.1.2.
In circumstances where the Respondent has not sought to claim, let alone establish, that she has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith.
Accordingly, the Complainant has 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 name, <allergy.partners>, be transferred to the Complainant.
Warwick A. Rothnie
Date: June 20, 2021