Altera Digital Health Inc.filed a UDRP to get the domain AlteraHealths.com, a domain that was used to impersonate one of their employees. The company filed a UDRP to get the domain.
Despite this obvious abuse of the domain to facilitate phishing, the Forum panelist was adamant about not transferring it:
Complainant has failed to support its claim of common law trademark rights with evidence that its putative mark has become a distinctive identifier that consumers associate with Complainant’s goods or services. Complainant has provided the Panel with evidence of its own use of ALTERA on its website and social media pages and on physical signage. However, it is unclear in what manner Complainant is using the mark in connection with its goods and services, most of which appear to be marketed under marks other than ALTERA.
Because the ALTERA mark’s registration is pending at the USPTO, the Panelist deemed the mark to be too weak in order to justify the domain’s transfer. Shocking? Perhaps, but that’s the law.
Final decision: Deny the transfer of the domain name AlteraHealths.com to the Complainant.
The domain transfer was denied.
Altera Digital Health Inc. v. felton lewis / FEBLABREC
Claim Number: FA2408002111681
PARTIES
Complainant is Altera Digital Health Inc. (“Complainant”), United States, represented by Scott Douglass of Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., United States. Respondent is felton lewis / FEBLABREC (“Respondent”), U.S. Virgin Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is alterahealths.com, registered with HOSTINGER operations, UAB.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on August 19, 2024; Forum received payment on August 19, 2024.
On August 20, 2024, HOSTINGER operations, UAB confirmed by email to Forum that the alterahealths.com domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 21, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2024 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@alterahealths.com. Also on August 21, 2024, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On September 11, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a provider of healthcare-related IT goods and services. Complainant states that it has used the ALTERA mark in connection with such goods and services since at least as early as May 2022. Complainant has a pending application to register ALTERA with the United States Patent & Trademark Office, and asserts common law rights in ALTERA arising from use and promotion since 2022. In support thereof, Complainant states that it uses ALTERA for its software and other services, in its domain name (alterahealth.com) and website, on social media, and elsewhere; and asserts that ALTERA has become well recognized by consumers as designating Complainant as the source of its goods and services.
Respondent registered the disputed domain name alterahealths.com in June 2024. The domain name does not resolve to a website. Complainant states, with supporting evidence, that the domain name has been used to impersonate an employee of Complainant in email correspondence attempting to induce another employee to change bank payment information. Complainant states that Respondent is not commonly known by the domain name, is not a licensee of Complainant, and is not authorized to use Complainant’s mark.
Complainant contends on the above grounds that the disputed domain name alterahealths.com is confusingly similar to its ALTERA mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
The Panel finds that Complainant has not demonstrated rights in a relevant trademark.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “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.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a), and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; UDRP Perspectives on Recent Jurisprudence, §§ 0.2, 0.8 (updated Aug. 30, 2024), available at https://udrpperspectives.org/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to “produce clear evidence to support its subjective allegations”).
Identical and/or Confusingly Similar
Complainant contends that the disputed domain name alterahealths.com is confusingly similar to the ALTERA mark in which Complainant claims rights.
Complainant does not own a trademark registration; its application to register ALTERA is currently pending before the United States Patent & Trademark Office. A trademark registration is not necessary to demonstrate rights under Paragraph 4(a)(i), provided common law rights are established through proof of sufficient secondary meaning associated with the mark. See, e.g., Sysnet North America, Inc. v. Jesus Jesus, FA 2107324 (Forum Aug. 14, 2024) (declining to find common law rights in VIKINGCLOUD); Hobby Fun, LLC v. Savannah Schellenschlager-Damer / The Garden Savvy, FA 2083049 (Forum Mar. 20, 2024) (declining to find common law rights in GARDEN SAVVY); Impossible Kicks Holding Co., Inc. v. DMT Namecheap, FA 2025781 (Forum Jan. 28, 2023) (declining to find common law rights in IMPOSSIBLE KICKS).
A complainant relying on rights arising solely at common law has a fairly steep evidentiary burden under the Policy.
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
. . . .
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3. Accord UDRP Perspectives on Recent Jurisprudence, supra, §§ 1.1, 1.2, 1.3.
Use merely as a trade name is insufficient, absent evidence that the name also functions as a trademark. See, e.g., Bolton & Menk, Inc. v. Chaiming Ming, FA 1963601 (Forum Oct. 18, 2021) (declining to find common law rights in BOLTON & MENK, used by complainant for more than 70 years, where evidence of use consisted of complainant’s own letterhead and website, accompanied by vague and conclusory allegations regarding public recognition).
Complainant has failed to support its claim of common law trademark rights with evidence that its putative mark has become a distinctive identifier that consumers associate with Complainant’s goods or services. Complainant has provided the Panel with evidence of its own use of ALTERA on its website and social media pages and on physical signage. However, it is unclear in what manner Complainant is using the mark in connection with its goods and services, most of which appear to be marketed under marks other than ALTERA. Complainant has provided no information about the volume of sales under the mark, advertising expenditures, or public recognition of the mark, apart from an unsupported conclusory assertion that ALTERA is well recognized by consumers. Cf. North American Recycling & Crushing, LLC v. Bouipoi Burging, FA 2110338 (Forum Sept. 5, 2024) (evidence that annual revenues exceeding $10 million from products and services provided under a mark was “barely” sufficient to demonstrate common law rights). Nor has Complainant shared numbers of customers, website visitors, or social media followers. The fact that Respondent appears to be targeting and attempting to create confusion with Complainant is relevant but not sufficient to demonstrate the trademark rights required by Paragraph 4(a)(i) of the Policy. See, e.g., Sysnet North America, Inc. v. Jesus Jesus, supra (declining to find common law rights notwithstanding use of putative mark to impersonate complainant for fraudulent purposes); Alliant Energy Corp. v. Billy Wood, FA 1959495 (Forum Sept. 13, 2021) (same).
The Panel finds that Complainant has not proved that it has the requisite rights in a relevant mark for purposes of Paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests; Registration and Use in Bad Faith
As the Panel’s conclusion on the first element is dispositive of the present dispute, the Panel declines to address the other elements set forth in Paragraph 4(a) of the Policy. See, e.g., Sysnet North America, Inc. v. Jesus Jesus, supra (declining to address rights or legitimate interests and bad faith in similar circumstances); North American Recycling & Crushing, LLC v. Bouipoi Burging, supra (same).
DECISION
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the alterahealths.com domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: September 12, 2024
