WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Society of Hematology, Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-1887

1. The Parties

The Complainant is the American Society of Hematology, Inc., United States of America (“United States”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.

The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama.

2. The Domain Name and Registrar

The disputed domain name <bloodjournal.net> is registered with Media Elite Holdings Limited d/b/a Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2020. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on August 21, 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

The Complainant is a professional association founded in 1958 with over 17,000 members from nearly 100 countries working to conquer blood diseases. Since at least 1946, the Complainant and its predecessors have published a periodical journal titled Blood, which provides an international forum for articles on hematology. Since at least 1997, the Complainant made that journal available online at a website associated with the domain name <bloodjournal.org>. That website had almost five million unique visitors in 2019. More recently, the Complainant has made all its journals available on a website associated with the domain name <ashpublications.org>, to which the domain name <bloodjournal.org> now redirects.

The Complainant owns trademark registrations for BLOOD in multiple jurisdictions, including United States trademark registration number 4,069,976, registered on December 13, 2011 (with a claim of first use in commerce on January 1, 1976), specifying journals concerning the field of hematology in class 16; and United States trademark registration number 5,285,047, registered on September 12, 2017 (with a claim of first use in commerce on April 18, 2012), specifying electronic downloadable publications in the nature of a journal in the field of medicine and hematology, and other goods and services in classes 9 and 41. Those trademark registrations remain current.

The Respondent is a privacy service based in Panama. The Registrar did not identify any underlying registrant.

The disputed domain name was registered on April 30, 2020. It formerly resolved to a webpage that invited Internet users to install an Internet browser extension that would change their user default search settings to a sponsored (i.e., advertisement-supported) search engine. The use of the disputed domain name has since changed; it resolved to a news magazine website during this proceeding.

5. Parties’ Contentions

A. Complainant

The disputed domain name is confusingly similar to the Complainant’s BLOOD mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has not authorized the Respondent to use the BLOOD mark. The Respondent is not a licensee of that mark. The Respondent is not commonly known by the name “Blood” or “Blood Journal”. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.

The disputed domain name has been registered and is being used in bad faith. Registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith registration and use. The Respondent registered the disputed domain name in order to create user confusion in order to drive Internet traffic to the disputed domain name. The Respondent knew of and specifically targeted the Complainant’s BLOOD mark in bad faith when registering the disputed domain name as evidenced by the fact that the disputed domain name is virtually identical to the Complainant’s <bloodjournal.org> domain name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:

(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

Based on the evidence submitted, the Panel finds that the Complainant has rights in the BLOOD mark.

The disputed domain name wholly incorporates the BLOOD mark as its initial element. It also includes the dictionary word “journal”. However, the Panel does not consider that element (a mere dictionary word) capable of distinguishing the disputed domain name from the trademark for the purposes of the first element of the Policy. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110. The trademark remains clearly recognizable within the disputed domain name.

The only other additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix (“.net”), which is a technical requirement of domain name registration. A gTLD suffix is disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy unless it has some impact beyond its technical function, which is not the case here.

Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(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.

The Respondent formerly used the disputed domain name to resolve to a webpage that invited Internet users to install an Internet browser extension that would change their user default search settings to a sponsored search engine on their devices; later, it redirected to a news magazine website. The disputed domain name wholly incorporates the Complainant’s BLOOD trademark and is almost identical to the domain name that the Complainant has used for many years in connection with its Blood journal. The Complainant submits that it has not authorized the Respondent to use the BLOOD mark and that the Respondent is not a licensee of that mark. In these circumstances, the Panel does not consider that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The name of the Respondent, as confirmed by the Registrar, is “Domain Administrator, Fundacion Privacy Services LTD”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by paragraph 4(c)(ii) of the Policy.

The disputed domain name operates for the benefit of the Respondent, or the operator of the sponsored search engine, or the operator of the news magazine website, or all of the above. None of these is a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not respond to the Complainant’s contentions.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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] web site or location or of a product or service on [the respondent’s] web site or location.”

The disputed domain name was registered in 2020, years after the Complainant obtained its trademark registrations for BLOOD. The Complainant has acquired a reputation in its BLOOD trademark through long-standing and extensive use. The disputed domain name not only incorporates the Complainant’s BLOOD trademark as its initial element, but it is also identical to the domain name that the Complainant has used for many years in connection with its Blood journal, but for the gTLD suffix. The combination of the words “blood” and “journal” does not appear to be coincidental. In view of these circumstances, the Panel considers it likely that the Respondent was aware of the Complainant and its journal and targeted its BLOOD trademark at the time that it registered the disputed domain name.

The Respondent has variously used the disputed domain name to resolve to a webpage that invited Internet users to install an Internet browser extension that would change their user default search settings to a sponsored search engine on their devices and, later, to redirect to a news magazine website. The disputed domain name appears intended to attract Internet users by creating a likelihood of confusion with the Complainant’s domain name <bloodjournal.org>, with which it is identical except for a different gTLD suffix. The disputed domain name operates for the commercial gain of the Respondent, or the operator of the sponsored search engine, or the operator of the news magazine website, or all of the above. Accordingly, the Panel finds that these circumstances fall within the terms of paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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, <bloodjournal.net> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: August 27, 2020