Victory for Latimer LeVay Fyock's Client Dominion Dental USA, Inc.
On November 5, 2019, a World Intellectual Property Organization (“WIPO”) Panel issued a Uniform Domain Name Dispute Resolution Policy (“UDRP”) decision in favor of Dominion Dental USA, Inc. (“Dominion”), for the domain name <dominionproviders.com>.
Dominion is a leading insurer and administrator of dental and vision benefits in the United States and currently serves nearly one million customers. Dominion discovered the registrant of <dominionproviders.com> operated a website containing malware which potentially put Dominion’s customers at risk if they were to accidently access the website instead of Dominion’s official website <dominionprovider.com>. This discovery necessitated the filing of a UDRP Complaint.
The WIPO Panel acknowledged that Dominion had sufficiently demonstrated its rights in the DOMINION trademarks with a history of use going back to 1996 and that Dominion was well-known by its DOMINION trade marks in the United States as an insurer and administrator of dental and vision benefits.
The WIPO Panel also accepted the Registrant of <dominionproviders.com> had no rights or legitimate interests in the disputed domain name, was not commonly known by the name Dominion Providers, and had not acquired any trademark or service rights in the DOMINION name or mark.
Lastly, the WIPO Panel found the <dominionproviders.com> was registered and used in bad faith writing:
At the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its DOMINION trademarks, the Complainant’s exclusive rights in those trademarks and the goodwill residing in those trademarks. The Respondent’s adoption of a domain name which differs from a domain name of the Complainant merely by the addition of an “s” to the word “provider” supports a finding that the Respondent knew of the Complainant, the Complainant’s DOMINION trademarks and the Complainants services at the time of the registration of the disputed domain name.
The Panel agrees that the addition of an “s” to the term “provider” as it appears in the Complainant’s own domain name is also likely to mislead the Complainant’s customers into believing that the disputed domain name belongs to the Complainant.
The Complainant has provided evidence (attached to the Complaint as Annex 7) that the website to which the disputed domain name resolves infects users’ computers with Malware. The Expert finds that this is not a bona fide offering of goods or services, nor is this a legitimate noncommercial or fair use.
The decision of Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., WIPO Case No. D2015-2140 noted that dissemination of malware through a predictable typo-variant is often used to steal consumer information for commercial gain and that this is evidence of bad faith. There is no question that the addition of “s” to the term “provider” is a predictable typo-variant. Further, and as also noted in the decision in Wikimedia Foundation, Inc. v. Yangmin Fang, Huli Jing Internet Holdings Ltd., ut supra., even if it is unclear whether or not the Respondent intended to manipulate the mark in question for ordinary commercial gain, the Respondent’s malicious conduct is still considered evidence of bad faith following early decisions such as Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303.
The full decision in Dominion Dental USA, Inc. v. I S, ICS INC Case No. D2019-1870 can be found here.
Dominion Dental USA, Inc. was represented in the proceeding by Latimer LeVay Fyock attorneys John L. Ambrogi and Colin T.J. O’Brien.