Iowa Health System d/b/a UnityPoint Health v. Lei Shi
Claim Number: FA2007001906048
Complainant is Iowa Health System d/b/a UnityPoint Health (“Complainant”), represented by Alexander J. Urbelis of Blackstone Law Group LLP, New York, USA. Respondent is Lei Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unitypointhealthsetlement.com>, <unitypointhealthsettelment.com>, <unitypointhealthsettement.com>, <unitypointhealthsettlment.com>, <unitypointhealthssettlement.com>, <unitypointheathsettlement.com> and <wwwunitypointhealthsettlement.com>, registered with Namesilo, Llc, Cloud Yuqu Llc, and West263 International Limited.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2020; the Forum received payment on July 27, 2020.
On July 27, 2020; July 28, 2020, Namesilo, Llc, Cloud Yuqu Llc, and West263 International Limited confirmed by e-mail to the Forum that the <unitypointhealthsetlement.com>, <unitypointhealthsettelment.com>, <unitypointhealthsettement.com>, <unitypointhealthsettlment.com>, <unitypointhealthssettlement.com>, <unitypointheathsettlement.com> and <wwwunitypointhealthsettlement.com> domain names are registered with Namesilo, Llc; Cloud Yuqu Llc; and West263 International Limited and that Respondent is the current registrant of the names. Namesilo, Llc, Cloud Yuqu Llc, and West263 International Limited have verified that Respondent is bound by the Namesilo, Llc, Cloud Yuqu Llc, and West263 International Limited registration agreements 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 3, 2020, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of August 24, 2020 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@unitypointhealthsetlement.com, postmaster@unitypointhealthsettelment.com, postmaster@unitypointhealthsettement.com, postmaster@unitypointhealthsettlment.com, postmaster@unitypointhealthssettlement.com, postmaster@unitypointheathsettlement.com, and postmaster@wwwunitypointhealthsettlement.com. Also on August 3, 2020, the Chinese and English language 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 August 26, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that all of the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant manages offers health care systems throughout the Midwestern United States.
Complainant holds a registration for the UNITYPOINT HEALTH trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,584,937, registered August 12, 2014.
Respondent registered the domain names unitypointhealthsetlement.com>, <wwwunitypointhealthsettlement.com>, <unitypointhealthsettelment.com>, <unitypointhealthsettement.com>, <unitypointhealthsettlment.com>, <unitypointhealthssettlement.com> and <unitypointheathsettlement.com> on July 14, 2020.
The domain names are confusingly similar to Complainant’s UNITYPOINT HEALTH mark.
Respondent has not been commonly known by the domain names.
Complainant has not licensed Respondent to use the UNITYPOINT HEALTH mark.
Respondent does not use the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain names to disseminate malware and to host pay-per-click hyperlinks, from the operation of which Respondent profits.
Respondent does not have rights to or legitimate interests in the domain names.
Each of the domain names is an instance of typo-squatting.
Respondent registered the domain names shortly after the publication of an announcement of the settlement of a UnityPoint Health lawsuit.
Respondent registered the domain name using a privacy shield.
Respondent knew of Complainant’s rights in the UNITYPOINT HEALTH mark when it registered the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see 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 has rights in the UNITYPOINT HEALTH trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here China). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <unitypointhealthsetlement.com>, <unitypointhealthsettelment.com>, <unitypointhealthsettement.com>, <unitypointhealthsettlment.com>, <wwwunitypointhealthsettlement.com>, <unitypointhealthssettlement.com> and <unitypointheathsettlement.com> domain names are confusingly similar to Complainant’s UNITYPOINT HEALTH mark. Each of the domain names incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of the generic term “settlement,” variously spelled, plus the generic Top Level Domain (“gTLD”) “.com,” and, in one instance, the letters “www,” the universally understood abbreviation for “world wide web.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum April 11, 2015):
Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.
See also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum January 19, 2016) (concluding that the addition of a generic term and top level domain to the trademark of another in creating a domain name is of no consequence under a Policy ¶ 4(a)(i) analysis). As to the latter point, this is because every domain name requires a gTLD or other TLD.
Further see Little League Baseball, Inc. v. Domain Manager / samirnet -domain names for sale, FA 1651999 (Forum January 18, 2016) (concluding that the addition of “www” to the mark of a UDRP complainant in framing a domain name replicates a common typing error and does not distinguish the domain name from the mark so as to avoid a finding of confusingly similarity).
Finally, as to Respondent’s deletion of the space between the terms of complainant’s mark in each of the domain names, this has no effect on our analysis because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested domain names, and that Complainant has not licensed Respondent to use the UNITYPOINT HEALTH mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “Lei Shi,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the disputed domain names so as to have acquired rights to or legitimate interests in them within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the domain names to distribute to unsuspecting Internet users, “malware,” short for “malicious software,” by which is meant software designed to cause damage to a computer or computer network. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017):
Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).
The Complaint further alleges that Respondent employs the domain names to host pay-per-click hyperlinks, from the operation of which Respondent profits. This use is likewise neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015):
Placing unrelated third[-]party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
It is plain from the evidence that Respondent uses each of the challenged domain names to distribute malware. This use of the domain names is evidence of Respondent’s bad faith in registering and using them. See, for example, Amazon Technologies, Inc. v. Timothy Mays aka Linda Haley aka Edith Barberdi, FA1617061 (Forum June 9, 2015):
… Respondent’s undenied use of the websites resolving from the contested domain names to distribute malware and other malicious downloads further illustrates its bad faith in the registration and use of those domain names.
Further to the same point, see Microsoft Corporation v. ABK / George Owens a/k/a Rohan / Rohan Suha, FA1473573 (Forum January 21, 2013) (finding that, because a respondent used a disputed domain name to facilitate the download of malicious software to the computers of the resolving website’s visitors, that respondent had registered and used the domain name in bad faith under Policy ¶ 4(a)(iii)).
It is also evident from the record before us that Respondent knew of Complainant and its rights in the UNITYPOINT HEALTH mark when it registered the contested domain names. This further demonstrates Respondent’s bad faith in registering them. See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum December 24, 2018):
The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use [of a confusingly similar domain name] under Policy¶4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that each and all of the domain names <unitypointhealthsetlement.com>, <unitypointhealthsettelment.com>, <unitypointhealthsettement.com>, <unitypointhealthsettlment.com>, <unitypointhealthssettlement.com>, <unitypointheathsettlement.com> and <wwwunitypointhealthsettlement.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 31, 2020
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