American Society of Hematology, Inc. v Shahana Khatun, DOPETECH

WIPO Case No. D2024-3464

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

American Society of Hematology, Inc. v. Shahana Khatun, DOPETECH

Case No. D2024-3464

1. The Parties

The Complainant is 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 Shahana Khatun, DOPETECH, India.

2. The Domain Name and Registrar

The disputed domain name <ashconferences.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2024. On September 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 4, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Redacted for Privacy / Domains by Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 6, 2024.

The Center verified that the Complaint together with the amended 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 September 9, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2024.

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The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on October 4, 2024. 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 leading professional society based in the United States, serving both clinicians and scientists around the world in the field of hematology. The Complainant was formed in 1958 and consists of more than 18,000 members from nearly 100 countries. Since its creation, the Complainant has sponsored its annual meeting in the field of hematology.

The Complainant owns inter alia the following registrations for or including ASH:

- United States trademark registration for ASH no. 3253642 registered on June 19, 2007, in classes 16
and 35;

- United States trademark registration for ASH no. 5570785 registered on September 25, 2018, in
classes 9, 16, 35, 36, 41 and 42;

- United States trademark registration for ASH no. 6153600 registered on September 15, 2020, in class
44.

The disputed domain name was registered on August 9, 2024.

At the time of filing of the complaint, the disputed domain name resolved to a landing page featuring pay-per- click (“PPC”) links to third party websites, purportedly offering services related to “academic journal articles”, “meeting event venues” and “virtual event registration platform”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its registered trademarks as it captures the entirety of its well-known trademark ASH with the mere adjunction of a descriptive term “conferences”, which only serves to increase the confusing similarity as it is a term directly related to the Complainant’s annual meeting.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names. According to the Complainant, the Respondent has not been authorized by the Complainant to use the disputed domain name and is not commonly known by the disputed domain name. Furthermore, the Respondent has been actively misusing the ASH trademark in the disputed domain name to derive illegitimate commercial gains. Specifically, the Respondent has intentionally attempted to create a likelihood of confusion by pointing the disputed domain name to a website containing PPC links to third-party websites.

Finally, the Complainant contends that the disputed domain name was registered and used in bad faith. It considers that the Respondent’s use of ASH was aimed at taking advantage of the Complainant’s trademark notoriety and reputation. In particular, the Complainant contends that the Respondent registered and used the disputed domain name to attract for commercial gain Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. In addition, the Complainant further asserts that the Respondent also associated the disputed domain name to a mail server.

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B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i)        the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii)       the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)      the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here “conferences”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

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A respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. WIPO Overview 3.0, section 2.5.1.

In the present case, the disputed domain name carries a risk of implied affiliation with the Complainant: the disputed domain name combines the Complainant’s trademark ASH with the term “conferences”, a term referring to one important aspect of the Complainant’s activities, namely the organization of its annual conference.

Furthermore, based on the information submitted by the Complainant, the Complainant has not granted the Respondent authorization to use its trademarks within the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name. Instead, based on the evidence provided by the Complainant, it appears that the Respondent used the disputed domain name in connection with a website containing PPC links to third-party websites. Applying paragraph 4(c) of the Policy, UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark, or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9.

Finally, the Respondent did not file a Response to the Complaint. The Panel may draw from the lack of a

Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the disputed domain name was registered many years after the Complainant first registered and used its ASH trademark. Given the distinctiveness and the notoriety of the Complainant’s trademark in the field of medical conferences, it is unlikely that the Respondent registered the disputed domain name – which combine the Complainant’s trademark with the term “conferences” - without prior knowledge of the Complainant’s trademark and of its activities. Consequently, the Panel considers that the Respondent could not ignore the existence of the Complainant and of its trademark at the time of the registration of the disputed domain name, such that the disputed domain name was registered in bad faith.

In addition, the presence of PPC links to third party websites on the page to which the disputed domain and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).

name resolves supports a finding of use in bad faith. Indeed, redirecting the disputed domain name to a
webpage with PPC links related to the activity field of the Complainant suggests an intention on the part of
the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial
gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the
disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG
v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No.
The Panel finds that the Complainant has established the third element of the Policy.

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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 <ashconferences.org> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: October 21, 2024