WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Society of Hematology, Inc. v. AD Solution, Digital Agency
Case No. D2019-3001
1. The Parties
The Complainant is American Society of Hematology, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, LLP, United States.
The Respondent is AD Solution, Digital Agency, India.
2. The Domain Name and Registrar
The disputed domain name <ashconference.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 6, 2019, 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 December 9, 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 December 10, 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 December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 2, 2020.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 9, 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.
4. Factual Background
Hematology (or haematology) is the study of blood and of diseases of the blood and associated systems. The Complainant, the American Society of Hematology (“ASH”), is some 60 years old, has more than 17,000 clinical and scientific members in the United States and around the world, and fosters study, research, and education in the field of hematology. The Complainant has recently sponsored an ASH Global Research Award, which makes awards internationally. The Complainant holds meetings and conferences, including an Annual Meeting with attendances recently in the region of 25,000 or more, at which advances in hematology are presented and discussed by national and international participants.
The Complainant holds trademarks for ASH in a number of countries, including the following:
ASH, United States Patent and Trademark Office (USPTO), principal register, registered June 19, 2007, registration number 3253642, classes 16 and 35;
ASH, USPTO, principal register, registered September 25, 2018, registration number 5570785, classes 9, 16, 35, 36, 41, and 42.
The Complainant also owns the domain names <hematology.org>, <ashclinicalnews.org>, <ash-sap.org>, <ashacademy.org>, <ashondemand.org>, and <ashresearchcollaborative.org>.
The Complainant maintains an extensive website that, among other things, provides information about its conferences, including the venue, program and schedule. The website enables participants to register online and to pay the appropriate registration fees. Registrants are provided with information about a wide range of recommended hotels and may reserve accommodation through the website. They may also avail themselves of discounted air travel, car rental, and other concessions as participants in the conference.
Nothing is known about the Respondent except for such information as was provided to the Registrar at the time of registration of the disputed domain name, which was registered on October 29, 2019. The disputed domain name resolved recently to a website purportedly relating to the “ASH 2019 61st Annual Meeting & Exposition of the ASH” (which was held in December 2019), with some information about the Complainant and about the applicable convention venue, with facilities for visitors to the website to provide their personal details online and to access information headed “Registration” and “Housing”. The disputed domain name has also been used as the basis of an email address for a communication that appeared as though it came from the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has documented a trademark registration for ASH dated June 19, 2007, which it says is incontestable under United States law, and a trademark for ASH registered September 25, 2018, and says it had held the trademark ASH under common law for many years prior.
The Complainant says the disputed domain incorporates its trademark ASH, and the descriptive word “conference” is an obvious reference to the Complainant’s Annual Meeting. The additional word “conference” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant says it has not authorised the Respondent to use the Complainant’s trademark or to register or to use the disputed domain name. The Respondent is not able to prove that it has rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy. As “AD Solution, Digital Agency”, the Respondent is not commonly known by the disputed domain name. The use of the disputed domain name has been to attempt to acquire details of the name, email address, telephone, country of residence, and other information of prospective registrants of the Complainant’s Annual Meeting by the Respondent masquerading as the Complainant. Such use cannot be legitimate and the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There has been no legitimate noncommercial or fair use of the disputed domain name under the Policy.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the registration of a domain name confusingly similar to a well-known trademark by an entity having no relationship to that trademark is, in and of itself, sufficient evidence of bad faith registration and use. The Complainant says the construction of the disputed domain name, incorporating the Complainant’s trademark and the word “conference”, makes it inconceivable that the Respondent did not know about and target the Complainant at the time of registration of the disputed domain name.
The Complainant says that the disputed domain name, soon after its registration, was put to use for a website intended to obtain, for commercial gain, the personal information of potential registrants of the Complainant’s Annual Meeting. In order to attract visitors to its website, the Respondent has created confusion with the Complainant by prominent use of the Complainant’s trademark in the header of the Respondent’s website and on its homepage; also by use of the Complainant’s trademark in the copyright notice on the Respondent’s website; and by displaying the Complainant’s address and Customer Relations telephone number. The Complainant says the Respondent’s intention is to attract Internet traffic to itself by at least initial interest confusion, constituting use of the disputed domain name in bad faith.
The Complainant has cited a number of previous decisions under the Policy, including cases in which it has been the complainant, that it considers to support its position.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced copies of documentary evidence satisfactory to the Panel that it has been the holder of the trademark ASH on the principal register of the USPTO since June 19, 2007, and the holder of another trademark for ASH registered at the USPTO on September 25, 2018.
The disputed domain name is <ashconference.com>, which clearly reads as ASH, being the Complainant’s trademark, followed by the descriptive word “conference”. The disputed domain name by its incorporation of the Complainant’s trademark is found to be confusingly similar, and the additional word “conference”, pertaining to a major element of the Complainant’s activities, is found not to be distinguishing. Accordingly, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted a prima facie case to the effect that the Respondent has no connection with the Complainant, has not been permitted to use the Complainant’s trademark, and has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The Complainant’s prima facie case is uncontested by the Respondent. In particular, according to the evidence produced by the Complainant, the disputed domain name has been used by the Respondent for the purpose of “phishing”, that is, to attempt to acquire details of potential conference participants by deception, which cannot constitute a bona fide offering of goods or services under the Policy. There is no assertion by the Respondent, “AD Solution, Digital Agency”, that it is commonly known by the disputed domain name, nor is there evidence of any legitimate noncommercial or fair use of the disputed domain name under the Policy.
The Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found otherwise by the Panel.
The Complainant has produced in evidence screen captures of the website to which the disputed domain name has resolved, together with pages from the Complainant’s own website for comparison.
On the Respondent’s website, brief descriptive material about ASH is essentially identical to paragraphs appearing on the Complainant’s website. The Respondent’s website reproduces details of the dates and venue of the Complainant’s 2019 Annual Meeting, including that it is the 61st such meeting, the dates of December 7-10, 2019, and the venue of Orange County Convention Center, Orlando, Florida. The Respondent’s website also provides the Complainant’s correct Washington DC address and post code, and certain telephone and fax numbers. The Respondent’s website states, “Copyright by ASH 2019. All Rights Reserved”.
Also appearing on the Respondent’s website are options marked “Registration” and “Housing”. Under either option, readers are invited to supply their name, email address, telephone, occupation, and address, together with the number of delegates (presumably if a group). Another box provides a facility to submit a message.
The disputed domain name has also been used by the Respondent as an email address. The Complainant has produced in evidence a copy of an email sent by or on behalf of the Respondent to a prospective conference participant who had evidently provided their contact details through the Respondent’s website. The email, from “info” at the disputed domain name, is signed by “Mark” as “Registration and Housing Coordinator”. The email has the subject line “[External] Final Reminder For ASH 2019”, and commences “Dear Attendee, Greetings from ASH 2019 Congress. Thank you for giving us this opportunity to serve you! We have received your request for the upcoming 61st American Society of Hematology (ASH) Annual Meeting & Exposition will be held at the Orange County Convention Center (OCCC) in Orlando, FL, USA between December 7-10, 2019”. The email explains, twice, that the prospective participant’s registration was not successfully completed and asks for completion of the “registration from [form] attached”.
On the totality of the evidence, including the content of the Respondent’s website and the email precipitated by a prospective 2019 Annual Meeting participant’s enquiry through the Respondent’s website, the Panel finds, on the balance of probabilities, that the disputed domain name was registered and has been used for the purpose of phishing. It is not clear how much personal information was provided to the Respondent by the prospective conference participant, but the Respondent’s reply shows that it included, at a minimum, the enquirer’s email address and the fact of their interest in the 2019 Annual Meeting. The Respondent’s reply then attempted to obtain further information, as any intending conference participant might reasonably expect in order to complete their registration, which would normally include their name, official or business address, and telephone number. Furthermore, any purported registration could not have proceeded without the payment of the appropriate published registration fee, which would generally be made by the provision of credit card details or by bank transfer. An expectation by the Respondent eventually to receive money is indicated by a passage in the Respondent’s email that reads (verbatim): “If you have already paid and registered. Kindly ignore this email & do not send us the registration form.”
Thus, on the evidence and on the balance of probabilities, the Respondent is found to have registered and attempted to use the disputed domain name to obtain personal information by the deception of presenting itself as the Complainant, which it is not. The disputed domain name is found to have been used in bad faith within the terms of paragraph 4(b)(iv) of the Policy and to have been registered for the bad faith purpose for which it has been used. Accordingly the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 disputed domain name <ashconference.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: January 20, 2020
