Greenway Health, LLC v. johnny leed
Claim Number: FA1904001838389
Complainant is Greenway Health, LLC (“Complainant”), represented by J. Coy Stull of Carlton Fields, P.A., Florida, USA. Respondent is johnny leed (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <portalforpatirnts.com>, <portalforpatoents.com>, <myhealthhrecord.com>, <myhealthrecprd.com>, <myhealthrecoord.com>, <myhealthrexord.com>, <myhralthrecord.com>, <myhealthrecorrd.com>, <myhealthreccord.com>, and <myhealthrecotd.com>, registered with NameSilo, LLC.
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.
Hon. Karl V. Fink (Ret.) as Panelist
Complainant submitted a Complaint to the Forum electronically on April 11, 2019; the Forum received payment on April 11, 2019.
On April 12, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <portalforpatirnts.com>, <portalforpatoents.com>, <myhealthhrecord.com>, <myhealthrecprd.com>, <myhealthrecoord.com>, <myhealthrexord.com>, <myhralthrecord.com>, <myhealthrecorrd.com>, <myhealthreccord.com>, and <myhealthrecotd.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 April 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2019 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@portalforpatirnts.com, postmaster@portalforpatoents.com, postmaster@myhealthhrecord.com, postmaster@myhealthrecprd.com, postmaster@myhealthrecoord.com, postmaster@myhealthrexord.com, postmaster@myhralthrecord.com, postmaster@myhealthrecorrd.com, postmaster@myhealthreccord.com, and postmaster@myhealthrecotd.com. Also on April 16, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the MY HEALTH RECORD mark to provide and market health information technology services, including its integrated electronic health record services. Complainant uses the PORTAL FOR PATIENTS mark to provide its electronic health record services. Complainant has common law rights in both the PORTAL FOR PATIENTS and MY HEALTH RECORD marks. Respondent’s infringing domain names are confusingly similar to one of Complainant’s marks as they each incorporate a misspelled version of the mark along with the addition of the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the infringing domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent’s websites contain links for services in direct competition with those offered by Complainant for Respondent’s commercial gain.
Respondent registered and uses the infringing domain names in bad faith. Respondent uses the domain names to divert Internet users to websites containing competing hyperlinks, thereby disrupting Complainant’s business for Respondent’s own commercial gain. Further, Respondent engaged in typosquatting by registering domain names containing slight variations of Complainant’s marks. Additionally, Respondent used a privacy service when registering the domain names. Moreover, Respondent had actual and/or constructive knowledge of Complainant’s rights in the PORTAL FOR PATIENTS and MY HEALTH RECORD marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <portalforpatirnts.com>, <portalforpatoents.com>, <myhealthhrecord.com>, <myhealthrecprd.com>, <myhealthrecoord.com>, <myhealthrexord.com>, <myhralthrecord.com>, <myhealthrecorrd.com>, <myhealthreccord.com>, and <myhealthrecotd.com> domain names.
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”).
Complainant claims it holds common law rights in the PORTAL FOR PATIENTS and MY HEALTH RECORD marks and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Regarding the PORTAL FOR PATIENTS mark, Complainant provides the following in support of its argument: (1) Complainant serves thousands of customers annually through its <portalforpatients.com> subdomains; (2) Complainant began using the mark in commerce in 2012 as part of its integrated electronic medical record services business; (3) Complainant has various certifications and has won various awards under the mark; and, (4) Complainant owns numerous domain names incorporating the mark. The Panel finds that Complainant does hold common law rights in the PORTAL FOR PATIENTS mark for the purposes of Policy ¶ 4(a)(i).
Complainant provides the following regarding the MY HEALTH RECORD mark : (1) Complainant generates approximately $300 million in annual revenue; (2) Complainant provides services in all fifty states; (3) Complainant serves millions of patients annually through its <myhealthrecord.com> domain name; (4) Complainant commenced its business in 2014; (5) Complainant advertises its business extensively; (6) from 2015 to 2018, the <myhealthrecord.com> website had over 2000 customers who provide healthcare services, serving over 2 million patients; and, (7) Complainant has various certifications and has won various awards. The Panel finds that Complainant does hold common law rights in the MY HEALTH RECORD mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s infringing domain names are confusingly similar to one of Complainant’s marks as they each incorporate a misspelled version of the mark along with the addition of the “.com” gTLD. Misspelling a complainant’s mark by either adding or substituting a letter while adding a gTLD generally fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). In this case, the <portalforpatirnts.com>, <portalforpatoents.com>, <myhealthrecprd.com>, <myhealthrexord.com>, <myhralthrecord.com>, and <myhealthrecotd.com> domain names each substitute a letter with a different letter and add the “.com” gTLD, while the <myhealthhrecord.com>, <myhealthrecoord.com>, <myhealthrecorrd.com>, <myhealthreccord.com> domain names each add a letter along with the “.com” gTLD. The Panel finds that the disputed domain names are confusingly similar to either the PORTAL FOR PATIENTS or MY HEALTH RECORD marks under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds that Complainant has made a prima facie case.
Complainant contends that Respondent has no rights or legitimate interests in the infringing domain names as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information includes the WHOIS information, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information identifies “johnny leed” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s websites contain links for services in direct competition with those offered by Complainant for Respondent’s commercial gain. Using a domain name to display hyperlinks to services relating to a complainant generally does not amount to any bona fide offering of goods or services or a legitimate noncommercial or fair use. See Barclays PLC v. Antwan Barnes, FA 1806411 (Forum Oct. 20, 2018) (“Using a domain name to offer links to services in direct competition with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).”). Complainant provides screenshots of the resolving webpages, all of which display links such as “Medical Billing Services” and “Electronic Medical Records.” The Panel finds that Respondent’s use of the domain names to offer competing hyperlinks fails to confer rights and legitimate interests in the domain names for the purposes of Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant claims that Respondent uses the domain names to divert Internet users to websites containing competing hyperlinks, thereby disrupting Complainant’s business for Respondent’s own commercial gain. Using a confusingly similar domain name to display competing hyperlinks for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). The Panel is reminded that Complainant provides screenshots of the resolving webpages, all of which display links such as “Medical Billing Services” and “Electronic Medical Records.” The Panel finds that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Complainant argues that Respondent engaged in typosquatting by registering domain names containing slight variations of Complainant’s marks. A finding of typosquatting, the practice of registering a domain name incorporating a mark with a common typing error, can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Here, all of the domain names either add one letter or substitute one letter for another. The Panel finds that Respondent’s changes of Complainant’s marks in the domain names further demonstrates Respondent’s bad faith under the non-exclusive Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s PORTAL FOR PATIENTS and MY HEALTH RECORD marks at the time of registering the infringing domain names. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, and actual knowledge does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel finds based on Complainant’s uncontested allegations and evidence that Respondent had actual knowledge of Complainant’s rights and registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <portalforpatirnts.com>, <portalforpatoents.com>, <myhealthhrecord.com>, <myhealthrecprd.com>, <myhealthrecoord.com>, <myhealthrexord.com>, <myhralthrecord.com>, <myhealthrecorrd.com>, <myhealthreccord.com>, and <myhealthrecotd.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: May 10, 2019
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