The domain name EchoPayments.com was challenged via the UDRP process at the Forum (NAF.)
ECHO Health, Inc. attempted to get the domain based on their registration of the mark ECHO in 2014. There was one problem with the strategy of the Complainant: The domain was registered in 2011.
Despite the Respondent’s lack of a response, this seniority in the domain’s age vs. the mark of the Complainant, gave the Respondent the upper hand. The sole panelist ordered the domain EchoPayments.com to remain with the Respondent.
In our opinion, with a response involving retaining counsel, the Respondent could have potentially won the case with a finding of RDNH.
The domain transfer was denied.
ECHO Health, Inc. v. Jack Casey / Echo Payments
Claim Number: FA2301002027491
PARTIES
Complainant is ECHO Health, Inc. (“Complainant”), USA, represented by James B. Niehaus of Frantz Ward LLP, USA. Respondent is Jack Casey / Echo Payments (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is echopayments.com, registered with Cloudflare, Inc..
PANEL
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho-Hyun Nahm, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on January 13, 2023; Forum received payment on January 13, 2023.
On January 24, 2023, Cloudflare, Inc. confirmed by e-mail to Forum that the echopayments.com domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, Inc. 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 January 25, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@echopayments.com. Also on January 25, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 21, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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
i) Complainant has been using the service mark “ECHO” since at least January 1, 2013 in connection with healthcare benefit payment services, healthcare benefit payment consolidation services, and electronic delivery of healthcare benefit payments. Complainant has rights in the ECHO marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,567,517, filed November 20, 2013 and registered July 15, 2014). The disputed domain name is confusingly similar to Complainant’s mark.
ii) Complainant has no rights or legitimate interests in the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods and services or for any legitimate or fair use. Instead, Respondent is diverting consumers for commercial gain.
iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name causes a likelihood of confusion as to the Complainant’s sponsorship of or affiliation with the resulting website.
B. Respondent
Respondent did not submit a Response.
FINDINGS
1. The disputed domain name was registered on April 4, 2011.
2. Complainant has established rights in the ECHO mark based upon registration with the USPTO (e.g., Reg. No. 4,567,517, filed November 20, 2013 and registered July 15, 2014).
3. Respondent’s registration of the disputed domain name predates Complainant’s first claimed rights in the ECHO mark.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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 Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant asserts rights in the ECHO mark (e.g. Reg. No. 4,567,517, filed November 20, 2013 and registered July 15, 2014) based upon registration with the USPTO. Registration with a governmental trademark authority is sufficient to demonstrate rights in a mark per Policy 4(a)(i). Therefore, the Panel finds that Complainant has rights in the ECHO mark per Policy ¶ 4(a)(i).
Complainant argues the echopayments.com domain name is confusingly similar to Complainant’s ECHO mark because the disputed domain name is nearly identical to one of Complainant’s distinctive registered marks with the addition of the “.com” gTLD. A disputed domain name that is nearly identical to a complainant’s mark with the addition of a gTLD may not defeat an argument of confusing similarity per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Registration and Use in Bad Faith
The Panel notes that Respondent’s registration of the disputed domain name (registered on April 4, 2011) predates Complainant’s first claimed rights in the ECHO mark (Reg. No. 4,567,517, filed November 20, 2013 and registered July 15, 2014). The Panel also notes that when a respondent’s registration of the domain name predates Complainant’s first claimed rights in its mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”). Therefore, the Panel finds that Complainant has not satisfied Policy ¶ 4(a)(iii)
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(iii), the Panel declines to analyze the other element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the echopayments.com domain name REMAIN WITH Respondent.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 22, 2023
