WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Workit Health Incorporation v. Privacy service provided by Withheld for Privacy ehf/ Marisa Johnson
Case No. D2021-3996
1. The Parties
Complainant is Workit Health Incorporation, United States of America (“United States”), internally represented, United States.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland/ Marisa Johnson, United States.
2. The Domain Name and Registrar
The disputed domain name <workithealthonline.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 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 Complainant on December 1, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on December 1, 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 Respondent of the Complaint, and the proceedings commenced on December 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 23, 2021.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 5, 2022. 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
Complainant is the owner of registration for the word and design service mark (hereinafter “trademark”) WORKIT HEALTH on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 5240311, registration dated July 11, 2017, in international class 41, covering educational services, namely, providing online courses of instruction at the post-graduate level. The design preceding the term “workit” is an infinity symbol with two small circles, each appearing above a loop of the infinity symbol.
Complainant provides counseling and clinical prescription services for treatment of substance abuse through an online portal.1
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to an ICANN Lookup report furnished by Complainant, the disputed domain name was created on October 27, 2021.
Respondent used the disputed domain name as the email domain to send a deceptive message to a prospective employee (intended to believe she was communicating with Complainant). Such email incorporated Complainant’s distinctive trademark (with design) as part of the signature block, and it referred specifically to Complainant in the subject line and text. Complainant was alerted to this deceptive practice by an individual in Latin America who noted that she had responded to a posting by Respondent on a job-search platform. According to this individual, Respondent “approach[ed] me asking to sign an NDA and asking to buy some technology gear under the name of the company and promising to be reimbursed. It’s clearly a scam.”
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant attached its trademark registration data from the USPTO Trademark Electronic Search System (TESS) to the Complaint.
Complainant argues that Respondent has no rights or legitimate interests in respect of the disputed domain name because: (1) Respondent is in no way connected to or employed by Complainant; (2) Respondent is fraudulently using Complainant’s trademark and the disputed domain name to deceive the public and cause harm, and; (3) Respondent’s intent is for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent has intentionally attempted to attract for commercial gain Internet users to Respondent’s website or other online location by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement, and; (2) Respondent is using the disputed domain name fraudulently to deceive the public and cause harm, referring to attached examples of such deception.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. Courier delivery was successfully completed to Respondent’s privacy service, but not to Respondent’s physical address in the United States because of inaccurate registration information. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark WORKIT HEALTH, including by registration at the USPTO and use in commerce. The term “workit health” forms the predominant part of Complainant’s registered trademark. The accompanying design appears alongside the word. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark WORKIT HEALTH.
In the circumstances of this proceeding, the design portion of Complainant’s trademark does not preclude direct comparison between the disputed domain name and the trademark.
Respondent registered the disputed domain name incorporating Complainant’s WORKIT HEALTH trademark, appending the term “online”. The incorporation of Complainant’s trademark readily identifiable in the disputed domain name is sufficient for a finding of confusing similarity within the meaning of the Policy. Respondent’s addition of the common term “online” (referring to presence on the Internet) does not prevent a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s WORKIT HEALTH trademark.
The Panel determines that Complainant has established rights in the trademark WORKIT HEALTH, and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5.A., and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent’s use of the disputed domain name as the domain in an email address as part of a scheme involving impersonation of Complainant to deceptively solicit information from a prospective employee, proposing also the sale of equipment to that prospective employee, does not constitute a bona fide offering of goods or services prior to notice of this dispute.
Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “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”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of email communication intended by Respondent to deceive a prospective employee of Complainant. Having used Complainant’s distinctive trademark with logo in its deceptive email communication, Respondent was manifestly aware of Complainant’s trademark when it registered the disputed domain name and undertook its deceptive course of action. Such use of Complainant’s trademark in the disputed domain name constitutes bad faith within the meaning of the Policy.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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 <workithealthonline.com> be transferred to Complainant.
Frederick M. Abbott
Date: January 17, 2022
1 Complainant did not describe its business operation in its Complaint. The text description is based on the Panel’s visit to Complainant's website. Panel visit to <workithealth.com>, January 2022.