Cardinal Health, Inc. v. 李厚昌 / lihouchang
Claim Number: FA2011001920195
Complainant is Cardinal Health, Inc. (“Complainant”), represented by Deborah A. Wilcox of Baker & Hostetler LLP, Ohio, USA. Respondent is 李厚昌 / lihouchang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cadinalhealth.com>, registered with DNSPod, Inc..
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020.
On November 12, 2020, DNSPod, Inc. confirmed by e-mail to the Forum that the <cadinalhealth.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 November 19, 2020, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 9, 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@cadinalhealth.com. Also on November 19, 2020, the Chinese 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 December 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 name be transferred from Respondent to Complainant.
PANEL NOTE: SUPPORTED LANGUAGE REQUEST
Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Therefore, pursuant to UDRP Rule 11(a) and having regard to all of the above factors the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant made the following contentions.
Complainant, Cardinal Health Inc., is a healthcare services company. Complainant has rights in the CARDINAL HEALTH mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,960,790, registered June 7, 2005). See Amend. Compl. Ex. 2. Respondent’s <cadinalhealth.com> domain name is identical or confusingly similar to Complainant’s mark because it merely misspells the CARDINAL HEALTH mark by omitting the letter “R” and adds the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <cadinalhealth.com> domain name because Respondent is not authorized, licensed, or endorsed to use Complainant’s CARDINAL HEALTH mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to a webpage that prompts the download of suspected malware.
Respondent registered and uses the <cadinalhealth.com> domain name in bad faith. Respondent has displayed a pattern of bad faith domain name registration. Further, Respondent uses the disputed domain name to spread malicious software. Additionally, Respondent’s domain name registration amounts to typosquatting in bad faith. Finally, Respondent had actual or constructive notice of Complainant’s rights in the CARDINAL HEALTH mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that is a prominent healthcare services company.
2. Complainant has established it trademark rights in the CARDINAL HEALTH mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,960,790, registered June 7, 2005).
3. Respondent registered the disputed domain name on February 11, 2019.
4. Respondent uses the domain name to redirect users to a webpage that prompts the download of suspected malware.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant asserts rights in the CARDINAL HEALTH mark based upon registration with the USPTO. Registration of a mark with the USPTO is generally sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides evidence of its registrations with the USPTO (e.g., Reg. No. 2,960,790, registered June 7, 2005). See Amend. Compl. Ex. 2. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CARDINAL HEALTH mark. Complainant argues that Respondent’s <cadinalhealth.com> domain name is identical or confusingly similar to Complainant’s CARDINAL HEALTH mark because it merely misspells the mark by omitting the letter “R” and adds the “.com” gTLD. Misspelling a mark by adding, removing, or transposing letters is generally insufficient to negate confusing similarity between a disputed domain name and a mark per Policy ¶ 4(a)(i). See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Therefore, the Panel agrees with Complainant and finds Respondent’s disputed domain name to be identical and/or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CARDINAL HEALTH mark and to use it in its domain name and merely misspelling the mark by omitting the letter “R” which does not negate confusing similarity which is otherwise present, as it is in the present case;
(b Respondent registered the disputed domain name on February 11, 2019;
(c) Respondent uses the domain name to redirect users to a webpage that prompts the download of suspected malware;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <cadinalhealth.com> domain name because Respondent is not authorized, licensed, or endorsed to use Complainant’s CARDINAL HEALTH mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “李厚昌 / lihouchang” as the registrant and no information suggests that Complainant has authorized Respondent to use the CARDINAL HEALTH mark in any way. See Amend. Compl. Supp. Ex. 6. Thus the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent fails to use the <cadinalhealth.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domain name to redirect users to a webpage that prompts the download of suspected malware. Use of a disputed domain name to disseminate malicious software is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See 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).”). Complainant provides a screenshot of the page users are redirected to when attempting to access the disputed domain. See Amend. Compl. Ex. 4. Complainant submits that the prompt to download a “security extension” at the resolving webpage suggests Respondent’s attempt to install malware. As the Panel agrees, the Pane finds that Respondent does not use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <cadinalhealth.com> domain name in bad faith based upon Respondent’s pattern of bad faith domain name registration. Evidence of previous UDRP decisions against a respondent may suggest bad faith pursuant to Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant cites two previous UDRP cases decided against Respondent and suggests that Respondent has been involved in additional cases. The Panel therefore agrees with Complainant and finds bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered and uses the <cadinalhealth.com> domain name in bad faith because Respondent uses the disputed domain name to spread malicious software. Use of a disputed domain name to download malware on visitors’ devices is evidence of bad faith per Policy ¶ 4(a)(iii). See Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). Complainant provides a screenshot of the page users are redirected to when attempting to access the disputed domain and submits that the prompt to download a “security extension” at the resolving webpage suggests Respondent’s attempt to install malware. See Amend. Compl. Ex. 4. As the Panel agrees, it finds bad faith registration and use under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits that Respondent’s <cadinalhealth.com> domain name registration amounts to typosquatting in bad faith. Typosquatting may act as independent evidence of bad faith per Policy ¶ 4(a)(iii). See Finish Line, Inc. and its subsidiary Spike’s Holdings, Inc. v. XU SHUAI WEI / XUSHUAIWEI, FA1409001577968 (Forum Oct. 9, 2014) (“The <finishlne.com> domain name is a typosquatted version of the FINISH LINE mark, which further supports a finding of bad faith under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent’s intentional misspelling of the CARDINAL HEALTH mark for use in the disputed domain name is evidence of typosquatting. As the Panel agrees that Respondent’s actions constitute typosquatting, it finds bad faith registration and use under Policy ¶ 4(a)(iii).
Fourthly, Complainant contends that Respondent had actual or constructive notice of Complainant’s rights in the CARDINAL HEALTH mark when it registered the <cadinalhealth.com> domain name. While constructive notice is insufficient evidence of bad faith, actual knowledge of a complainant’s rights in a mark suggests bad faith per Policy ¶ 4(a)(iii). 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.”); see also InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the “www” prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”). Complainant makes no specific contentions as to evidence of actual knowledge but that inference may be drawn from the evidence. As the Panel finds that actual knowledge was present, it finds bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CARDINAL HEALTH mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cadinalhealth.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 16, 2020
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