WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Baiada Family, Inc. v. Domain Administrator, Fundacion Privacy Services LTD

Case No. D2020-3285

1. The Parties

The Complainant is Baiada Family, Inc., United States of America (“United States” or “U.S.”), represented by Winterfeldt IP Group PLLC, United States.

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

2. The Domain Names and Registrar

The disputed domain names <bayadaokta.com> and <educationbayada.com> (the “Domain Names”) are registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020 with respect to the disputed domain name <bayadaokta.com>. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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.

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 December 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 29, 2020. On December 22, 2020, the Complainant filed an amended Complaint, seeking to include the disputed domain name <educationbayada.com> to the ongoing proceeding.

The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2020.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on January 7, 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.

On January 11, 2021, the Panel instructed the Center to request a registrar verification and notify the amended Complaint against the Respondent in respect of the disputed domain name <educationbayada.com>, as it had been added to the Complaint after the notification of the Complaint, cf. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12. On January 11, 2021, the Center formally notified the Respondent of the Complaint in respect of the disputed domain name <educationbayada.com>. The due date for Response was set to January 31, 2021. The Respondent did not submit any response.

4. Factual Background

The Complainant exclusively licenses its BAYADA trademark to BAYADA Home Health Care. BAYADA Home Health Care is a provider of home health care support services for children and adults since in 1975. BAYADA Home Health Care services provides its services to approximately 34,450 clients on a weekly basis and employs approximately 26,000 employees worldwide. BAYADA Home Health Care Services has more than 345 offices and serves clients in 22 states and 8 countries.

The Complainant’s BAYADA trademark has been used since 1982 and registered since 1984. The Complainant owns United States Reg. No. 1,297,195 registered on September 18, 1984.

The Complainant also owns numerous domain names that include the Complainant’s trademark, for example <bayada.com> and <bayada.care>.

The disputed domain name <bayadaokta.com> was registered on November 2, 2020. The disputed domain name <educationbayada.com> was registered on December 11, 2020, two days after the original Complaint against the disputed domain name <bayadaokta.com> was notified. At the time of drafting the Decision, the Domain Names resolved to pay-per-click webpages.

5. Parties’ Contentions

A. Complainant

The Complainant provides evidence of trademark registrations, and argues that the Domain Names incorporate the Complainant’s trademark, together with the terms “okta” and “education”. The additions are not sufficient to avoid confusion between the Domain Names and the trademark.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent is not commonly known by the Domain Names. The Respondent cannot establish rights in the Domain Names as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. On the contrary, the Domain Names resolve to pay-per-click webpages that relate to services that directly compete with or capitalize on the reputation and goodwill of Complainant’s trademark.

The Complainant believes the Respondent was aware of the Complainant’s trademark. The Complainant argues that the Respondent has intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark, evident from the use of the Domain Names for

pay-per-click links. Moreover, the Domain Names are listed for sale. It is further evidence of bad faith that the Respondent registered <educationbayada.com> just two days after being notified of the original UDRP Complaint concerning<bayadaokta.com>. Finally, the Respondent’s use of a proxy service to obscure information in the WhoIs database, further points to bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark BAYADA. The test for confusing similarity involves a comparison between the trademark and the Domain Names. The Domain Names incorporate the Complainant’s trademark, with the addition of the terms “okta” and “education”. The additions do not prevent a finding of confusing similarity between the Domain Names and the trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic

Top-Level Domain (“gTLD”) “.com”; see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names, as it has not made use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering. The Respondent’s use of the Domain Names for links from pay-per-click webpages is not bona fide.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel agrees with the Complainant that it is likely that the Respondent was aware of the Complainant when the Respondent registered the Domain Names. It seems to the Panel that the Respondent has registered and used the Domain Names to attract Internet users for commercial gain, by creating confusion with the Complainant’s trademark.

In addition, the Domain Names are listed for sale. The fact that the Respondent registered <educationbayada.com> just two days after being notified of the original UDRP Complaint concerning <bayadaokta.com> further indicates bad faith. Similarly, in the context of the case, the Respondent’s use of a proxy service to conceal its identity.

For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning 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 Domain names <bayadaokta.com> and <educationbayada.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: February 3, 2021