WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Healthline Media, Inc. v. Domain Administrator, See PrivacyGuardian.org / Sanjid Rahman
Case No. D2021-1932
1. The Parties
The Complainant is Healthline Media, Inc., United States of America (“United States”), represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Sanjid Rahman, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <healthlinecbd.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2021. On June 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 21, 2021, 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 July 2, 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 amendment to the Complaint on July 4, 2021.
The Center verified that the Complaint, together with the amendment to the 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 July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent sent several emails to the Center on July 4, 2021, July 13, 2021, July 15, 2021, and July 25, 2021, which are considered below.
The Center appointed Antony Gold as the sole panelist in this matter on August 9, 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 owns and operates a number of websites which provide information about health and wellness. It publishes articles by more than 120 writers, which are reviewed by over 100 doctors, clinicians and other experts. Over 250 million people worldwide, including 90 million people in the United States, visit the Complainant’s websites each month.
The Complainant’s “Healthline” website, which uses the domain name <healthline.com>, was created in August 2004 and attracts 68 million monthly visitors. It features content on numerous subjects, including cannabidiol (the common abbreviation for which is “CBD”), which is promoted in connection with the alleviation of various health issues.
The Complainant is the owner of a number of registered trade marks for HEALTHLINE including United States Service Mark, registration number 4189310 (standard characters), in classes 35, 41, 42, and 44, registered on August 14, 2012. A stylized version of its HEALTHLINE mark is registered as United States Service Mark, registration number 5948507, in classes 41 and 44, registered on December 31, 2019.
The Respondent registered the disputed domain name on January 9, 2020. As at the time of the filing of the Complaint, it resolved to a website which comprised primarily reviews of CBD-related products such as “Best CBD Vape Pen – Our 5 Best choices” and “Best CBD Salves of 2020: Our Top Picks”. The Respondent’s website used, on its home page, a stylized form of “healthline”. This logo was very similar to the Complainant’s stylized HEALTHLINE service mark, used on its website, save that the Respondent’s logo added two graphical devices and the letters “CBD” were placed after the word “healthline”. The disputed domain name presently resolves to a parking page.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade or service mark in which it has rights. The top level domain, “.com”, is a standard registration requirement and is disregarded under the first element. The disputed domain name contains the Complainant’s HEALTHLINE trade mark in its entirety and should therefore be considered confusingly similar to it, notwithstanding that it includes the additional letters “cbd”. Moreover, the overall impression created by the disputed domain name is one of being connected to the trade marks of the Complainant, despite the differences between them; see SANOFI-AVENTIS v. Health Care Marketing Company, WIPO Case No. D2007-0475.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never assigned, granted, licensed, sold, transferred, or in any way authorized the Respondent to use its HEALTHLINE trade mark. By using the disputed domain name in connection with a website that includes the Complainant’s HEALTHLINE logo, along with articles and information about CBD, the Respondent has failed to create a bona fide offering of goods and services; see, for example, Scott and White Memorial Hospital and Scott, Sherwood, and Brindley Foundation v. Bao Shui Chen, WIPO Case No. D2009-0174. The WhoIs record does not identify the Respondent as “Healthline” or “Healthlinecbd” and, to the Complainant’s knowledge, the Respondent has never been commonly known by the disputed domain name and has never acquired any trade mark or service mark rights in it. Nor does the Respondent’s use of the disputed domain name to produce content which is the same as that which appears on the Complainant’s website comprise a legitimate noncommercial or fair use of it; see The John Hopkins Health System Corporation, The John Hopkins University v. Domain Administrator, WIPO Case No. D2008-1958.
Lastly, the Complainant says that the disputed domain was registered and is being used in bad faith. The Complainant’s mark was first registered as a trade mark almost nine years ago and is well-known. The registration of a domain name that is identical or confusingly similar to a famous or well-known trade mark by an unconnected entity can lead to a presumption of bad faith. Moreover, as the Complainant’s own domain name, <healthline.com>, was registered approximately 16 years before the Respondent’s registration of the disputed domain name, it is inconceivable that the Respondent registered it without knowledge of the Complainant’s activities. Because the disputed domain name is so obviously connected with the Complainant, the Respondent’s actions suggest opportunistic bad faith; see Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. In addition, by using the disputed domain name in connection with a website that includes the Complainant’s HEALTHLINE logo, along with articles and information about CBD, the Respondent is creating a likelihood of confusion with the Complainant’s mark which constitutes bad faith use pursuant to paragraph 4(b)(iv) of the Policy.
The Respondent did not serve a formal reply to the Complainant. However, on July 4, 2021, he sent an email to the Complainant’s representative, in response to the Complainant’s amendment to the Complaint, stating that he proposed to take down his website and asking if the Complainant was interested in purchasing the disputed domain name. Between July 13 and July 25, 2021, further emails were sent by the Respondent to the Center in which the Respondent confirmed that he had taken down his website and stated that he was not intending to use the disputed domain name in future and was not attempting to resist a transfer of it to the Complainant. Additionally, the Respondent asserted that he had not been aware, when he registered the disputed domain name, that there would be an issue with him using it, that he never received any financial benefit from it and that he did not have “any bad intention to take advantage of this”.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
Before dealing with the substantive issues, it should be explained that the Complainant’s response to the Respondent’s emails to the Center, in which he offered to surrender the disputed domain name without the necessity for a formal determination of the Complaint, was to notify the Center, by email dated July 13, 2021, that, in the light of the circumstances concerning the Respondent’s registration and use of the disputed domain name, it nonetheless wished the Complaint to be the subject of a published panel decision.
Section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) addresses the position where, as here, a respondent has informally consented to the transfer of the domain name in issue outside of the standard settlement process. It explains that, whilst many panels in these circumstances will order the remedy requested solely on the basis of the respondent’s consent, there will be circumstances in which a panel, in its discretion, may proceed to a substantive decision on the merits. One of these circumstances is if the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, which is the position here. The Panel accordingly proceeds to a full decision and considers the position by reference to the Respondent’s website before it was taken down by him following notification of the Complaint.
A. Identical or Confusingly Similar
The details the Complainant has provided of the trade marks it owns for HEALTHLINE, including the service marks in respect of which full details have been provided above, establish its rights in HEALTHLINE. As a technical requirement of registration, the generic Top Level Domain, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s HEALTHLINE mark and the disputed domain name is the additional letters “cbd”, which have been placed after the word “healthline”. This additional component does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the 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”.
The Complainant’s HEALTHLINE service mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
Whether the Respondent has been using the disputed domain name in connection with a bona fide offering of goods and services requires consideration of the nature of the website to which it has resolved and also the intention of the Respondent. In this respect, both parties’ websites feature a combination of product reviews and articles about CBD and CBD products, albeit their layout and specific content is different. The Respondent’s website has now been taken down and the Complainant has not provided screen prints of the articles themselves. However, examples of the titles for the various review articles which were posted on the Respondent’s website have been given above and content of this type usually enables the website operator to derive pay-per-click (“PPC”) income from Internet users who click on the links contained within the product reviews.
The most noteworthy feature of the Respondent’s website, for present purposes, is that it prominently featured, on the home page, a stylized “healthline CBD” logo, the “healthline” component of which was very similar to that of the Complainant’s stylized HEALTHLINE service mark. The similarities are such that they were plainly not coincidental. It is accordingly evident that, having regard also to the confusing similarity between the disputed domain name and the Complainant’s service marks, the Respondent intended that Internet users be confused into thinking that his website was owned, operated or authorized by the Complainant. He has accordingly been seeking to profit commercially from the misleading association that visitors to his website were likely to make with the Complainant. Such use does not amount to a bona fide offering of goods and services; see, for example, Labrador II, Inc. v. Viva La Pets Inc., WIPO Case No. D2016-0010 and DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne, WIPO Case No. D2018-2565. Nor does the current, inactive status of the disputed domain name amount to a bona fide offering of goods and services.
The second and third circumstances under paragraph 4(c) of the Policy are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name has been put is commercial in character and does not constitute fair use. Furthermore, the similarity between the disputed domain name and the Complainant’s mark is such as not to amount to fair use of it in that it is very likely to be associated with the Complainant. In this respect, see section 2.5.1 of the WIPO Overview 3.0; “[W]here a domain name consists of a trademark plus an additional term (at the second- or Top-Level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.
The Complainant has therefore made out a prima facie case under the second element and the burden of production shifts to the Respondent. The Respondent has not made any substantive challenge to the Complainant’s case and the Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Dealing first, with bad faith registration, the only known use to which the Respondent has put the disputed domain name following registration is to resolve to a website containing content broadly similar in nature to sections of the Complainant’s website and prominently featuring a “healthline CBD” logo very similar to the Complainant’s “healthline” logo. This points to an awareness by the Respondent of the Complainant, as at the date of registration of the disputed domain name, coupled with an intention to take unfair advantage of its confusing similarity with the Complainant’s service mark. As explained by the panel in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765; “the registration of a domain name with the knowledge of the complainant’s trade mark registration amounts to bad faith”. See also section 3.1.4 of the WIPO Overview 3.0; “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. The Panel accordingly finds the registration of the disputed domain name to have been in bad faith.
Turning to bad faith use, 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out at paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The use to which the Respondent has put the disputed domain name falls within these circumstances in that the use on the Respondent’s website of a name and logo which were confusingly similar to the Complainant’s well-known marks was likely to mislead many Internet users into believing that its website was operated by, or with the authorization n of, the Complainant. The belief of Internet users that they had found the Complainant’s website, or a website associated with it, will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s HEALTHLINE service marks. See, also, Popular Enterprises, LLC v. American Consumers First et al., WIPO Case No. D2003-0742 in which the panel held that using confusingly similar domain names to redirect Internet users away from a complainant’s website amounted to bad faith.
Accordingly, the Respondent’s conduct falls within the example of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy and the Panel therefore finds that the disputed domain name was both 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 <healthlinecbd.com> be transferred to the Complainant.
Date: August 23, 2021