WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Synchrony Financial v. Registration Private, DomainsByProxy, LLC / Mark Fotohabadi, Agency for Dispute Resolution

Case No. D2019-1499

1. The Parties

The Complainant is Synchrony Financial, United States of America (“United States”), represented by Reed Smith LLP, United States.

The Respondent is Registration Private, DomainsByProxy, LLC / Mark Fotohabadi, Agency for Dispute Resolution, United States.

2. The Domain Name and Registrar

The disputed domain name <medicalcarecredit.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 27, 2019, 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 the Complainant on July 2, 2019, 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 July 7, 2019.

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 the Respondent of the Complaint, and the proceedings commenced on July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent of its default on July 30, 2019. That same day, the Center received an email communication from the Respondent stating that was awaiting a reply to an attempt to settle the dispute and asking for an extension. On July 31, 2019, the Center received an email communication from the Complainant indicating that it had rejected the Respondent’s settlement proposal, as well as an email from the Respondent acknowledging that development and requesting an extension. The Center acknowledged these communications and stated that it could only bring then to the Panel’s attention, as they came after the specified due date for a Response. There have been no further communications from the Respondent.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 12, 2019. 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 financial services corporation established under the law of the State of Delaware, United States, and headquartered in Stamford, Connecticut, United States. The company’s stock is publicly traded on the New York Stock Exchange. With consumer financing programs and partners in many sectors, including healthcare, the Complainant financed nearly USD 141 billion in purchases in 2018. One of the Complainant’s sales platforms is “CareCredit”, managed since 1994 by CareCredit, LLC. CareCredit provides consumer financing for medical, dental, vision, audiology, veterinary, personal care, and cosmetic procedures and services, with more than 11 million cardholders and 220,000 healthcare providers and specialized retailers across the United States. CareCredit receivables amounted to USD 9.5 billion in 2018. The Complaint attaches evidence establishing that the CareCredit program has received extensive publicity, media recognition, and awards, and that it has achieved prominence in the field of consumer medical financing over the past 25 years. The Complainant operates a website for the program at “www.carecredit.com”, and it also uses fourteen other domain names incorporating the string “carecredit” to direct consumers or healthcare providers to information about the program, such as <carecreditprovider.com> and <healthcarecreditbusiness.com>. The Complainant furnishes evidence that the program is also heavily advertised on social media, as well as in print advertising and on mobile apps.

The Complainant’s subsidiary Synchrony Bank holds a number of relevant trademark registrations that are licensed to affiliates and partners. These include the following:

The Domain Name was created on May 9, 2018 and initially registered in the name of a domain privacy service, which has expressed no interest in the Domain Name in this proceeding. The Registrar has identified the registrant as the Respondent Mark Fotohabadi of the organization Agency for Dispute Resolution in Beverly Hills, California, United States.

The Respondent’s communications with the Center, described above, came from Mr. Fotohabadi in his capacity as “Co-Founder & Principal” of the “Agency for Dispute Resolution (ADR)”, using an email in the domain <agencydr.com>. The website at “www.agencydr.com” advertises the services of Agency for Dispute Resolution Inc. (“ADR”) in providing neutrals to resolve disputes by arbitration and mediation in many United States locations and internationally. The headquarters address is shown in Beverly Hills, California, and Mr. Fotohabadi is listed as the Managing Principal. According to the online database of the California Secretary of State, ADR was incorporated as a California domestic stock company in January 2010, but the company’s current status is shown as “suspended”.

The Domain Name resolves to a website (the “Respondent’s website”) headed “Healthcare Financing”, followed by these words:

“We provide healthcare financing of up to $10,000 for different credit levels. Please complete our application below and call us toll free at (800) 484-8646 if you have trouble completing the form.”

The rest of the single-page website consists of an application form to be completed and submitted online, along with postal and telephone contact details in Irvine, California, United States. A design logo without words appears on the page, but the name of the website operator does not. However, the fine print at the bottom of the page indicates that “[a]ll loans are made by A10 Medical Group, and/or through our lending partners”. The online database of the California Secretary of State lists A10 Medical Group as a California domestic stock company of which Mr. Fotohabadi is a principal.

Thus, it is evident that Mr. Fotohabadi has an interest in the commercial activities of the Respondent’s website advertising medical loans. It is not obvious why ADR, a firm providing the services of mediators and arbitrators, would be involved. However, as both Mr. Fotohabadi and his organization ADR are named in the registration data and correspondence with the Center, they are referred to hereafter collectively as the “Respondent”.

The Complainant sent the Respondent a cease-and-desist letter in September 2018 demanding transfer of the Domain Name. The Complainant reports that the Respondent did not follow through on promises to take down references to “carecredit” and demanded at least USD 15,000 to transfer the Domain Name, the amount presumably in excess of its out-of-pocket costs.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its CARECREDIT mark, which the Respondent uses without permission and without other rights or legitimate interests. The Respondent is known by different names (ADR and A10 Medical Group) and cannot be said to be making a bona fide commercial use of the Domain Name by exploiting the Complainant’s well-known marks

The Complainant concludes that the Domain Name was registered and has been used in bad faith, in an effort to misdirect Internet users for commercial gain and extort and excessive purchase

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the 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 domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant indisputably holds registered CARECREDIT standard character trademarks. The Domain Name incorporates this mark in its entirety and adds the dictionary word “medical”. The addition of descriptive terms to a trademark generally does not avoid confusion (see WIPO Overview 3.0, section 1.8), and this is particularly true in these circumstances, where the trademark is used for the Complainant’s medical care credit program and the Complainant itself uses domain names similarly comprised of the trademark and descriptive terms. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id., section 1.7.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s CARECREDIT mark for Policy purposes and concludes that the Complainant has established the first element of the Complaint.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, a lack of permissive use, and actual use of the Domain Name to advertise competing consumer medical financing services. This shifts the burden to the Respondent.

The Respondent has not asserted relevant trademark rights and is known by other names (ADR and A10 Medical Group), not a name corresponding to the Domain Name. While the Respondent may be using the Domain Name in connection with a lawful business, this does not necessarily establish that it is a legitimate fair use of the Domain Name where there is a false impression of association with the trademark holder. See WIPO Overview 3.0, section 2.5bis. Here, the Domain Name incorporating the Complainant’s well-known trademark only heightens confusion by adding the term “medical”, which is consistent with the Complainant’s offerings and some of its own domain names and advertising. The Respondent uses the Domain Name to offer a competing consumer credit service on a website that is not labelled with the Respondent’s name, simply repeating the Domain Name in an email address at the top of the page. This tends to perpetuate confusion as to source or affiliation, along with the facts that the Domain Name was registered using a domain privacy service and there is no disclaimer of affiliation with the Complainant on the website. The website does not even identify the website operator in copyright or privacy terms or a legal statement of terms of use. Such misleading and exploitative conduct by a direct competitor cannot be considered legitimate fair use of a domain name incorporating a competitor’s mark in connection with a bona fide offering of goods or services, within the meaning of the Policy, paragraph 4(c)(i).

The Panel finds that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested by the Complainant (in which “you” refers to the registrant of the domain name):

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or …

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Complainant cites paragraph 4(b)(i) because the Respondent mentioned a figure of “at least” USD 15,000 when the Complainant demanded the transfer of the Domain Name. However, the Complainant initiated these discussions some six months after the Domain Name registration, when the Respondent was already using the Domain Name for the Respondent’s website selling consumer medical financing. Thus, it is not clear that the Respondent initially acquired the Domain Name “primarily” for the purpose of selling it to the Complainant for an excessive price.

However, the Panel finds paragraph 4(b)(iv) apposite here. While the Respondent might claim an interest in the dictionary sense of the string comprising the Domain Name, it is difficult to believe that the Respondent was not aware of the heavily advertised CARECREDIT brand in exactly the field that the Respondent was entering. “Care Credit” is not the name of a company or brand connected with the Respondent, and there are many other relevant generic or descriptive terms it could have used in a domain name, such “medical loans” or “medical financing”. As detailed above in the discussion of rights and legitimate interests, the Domain Name implies association with the Complainant, while the Respondent’s website goes to great lengths to obscure its source and affiliation. The logical inference is that the Respondent meant to mislead Internet users for commercial gain.

The Panel finds that the Respondent registered and used the Domain Name in bad faith within the meaning of the Policy and concludes that the Complainant has established the third element of the Complaint.

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, <medicalcarecredit.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: August 26, 2019