Texas Health Resources v. Jack Anderson
Claim Number: FA2106001952301
Complainant is Texas Health Resources (“Complainant”), represented by Matthew Witsman of Foley & Lardner LLP, Texas, USA. Respondent is Jack Anderson (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texashealths.org>, registered with Wild West Domains, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 23, 2021; the Forum received payment on June 23, 2021.
On June 23, 2021, Wild West Domains, LLC confirmed by e-mail to the Forum that the <texashealths.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 June 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2021 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@texashealths.org. Also on June 25, 2021, 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 July 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
A. Complainant
The Complainant is a U.S. nonprofit health system. Complainant has rights in the TEXAS HEALTH trademark based on registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,921,474, registered Feb. 22, 2011). Respondent’s <texashealths.org> domain name is confusingly similar to Complainant’s trademark since it incorporates the trademark in its entirety, adding only a single letter (“s”), and the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <texashealths.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the TEXAS HEALTH trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent engages in a fraudulent email scheme by using the email address “info@texashealths.org” to impersonate one of Complainant’s employees and communicate with third-party vendors of Complainant. Respondent also fails to make an active use of the website under the disputed domain name.
Respondent registered and uses the <texashealths.org> domain name in bad faith because Respondent uses the domain name as an email address to impersonate Complainant’s employee in order to fraudulently solicit products from Complainant’s third-party vendors. Respondent also engages in typosquatting and fails to make an active use of the website under the disputed domain name. Moreover, Respondent had actual knowledge of Complainant’s rights in the TEXAS HEALTH trademark based on the fame of the trademark and Respondent’s use of the disputed domain name in connection with a fraudulent scheme to impersonate Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 3,921,474 TEXAS HEALTH (fig), registered on February 22, 2011 for services in Intl Class 44
- No. 3,773,835 TEXAS HEALTH RESOURCES (fig), registered on April 13, 2010 for services in Intl Class 44
- No. 5,291,195 TEXAS HEALTH HOSPITAL (fig), registered on September 19, 2017 for services in Intl Class 44
- No. 3,769,617 TEXAS HEALTH PRESBYTERIAN (fig), registered on April 6, 2010 for services in Intl Class 44
- No. 3,769,616 TEXAS HEALTH METHODIST (fig), registered on April 6, 2010 for services in Intl Class 44
- No. 4,031,790 TEXAS HEALTH ARLINGTON MEMORIAL HOSPITAL (fig), registered on September 27, 2011 for services in Intl Class 44
- No. 3,917,298 TEXAS HEALTH PHYSICIANS GROUP (fig), registered on February 8, 2011 for services in Intl Class 44
- No. 4,556,109 TEXAS HEALTH HUGULEY HOSPITAL (fig), registered on June 24, 2014 for services in Intl Class 44
- No. 4,556,109 TEXAS HEALTH RESOURCES (fig), registered on March 24, 2015 for services in Intl Class 36
- No. 5,296,566 TEXAS HEALTH NEIGHBORHOOD CARE & WELLNESS (fig), registered on September 26, 2017 for services in Intl Class 44
- No. 5,317,276 TEXAS HEALTH EMERGENCY ROOM (fig), registered on October 24, 2017 for services in Intl Class 44
The <texashealths.org> domain name was registered on April 28, 2021.
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 Complainant claims rights in the TEXAS HEALTH trademark through its registration with the USPTO (e.g., Reg. No. 3,921,474, registered Feb. 22, 2011). Registration of a trademark with a national trademark agency is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <texashealths.org> domain name is confusingly similar to Complainant’s TEXAS HEALTH trademark because it incorporates Complainant’s trademark in its entirety, adding only a single letter (“s”), and the gTLD “.org.” In previous cases, panels have found that adding a single letter along with the gTLD “.org” is insufficient to prevent confusing similarity to a trademark. See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s mark”); see also TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”). The Complainant contends further that the disputed domain name is essentially identical to Complainant’s own <texashealth.org> domain name.
The Panel notes that the Complainant has no pure word trademark registrations. However, although all cited trademarks are combined with the Complainant’s figurative part, they are all visually divided/separated so that the word part TEXAS HEALTH (etc) is dominating. Therefore, the Panel finds that the disputed domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have rights or legitimate interests in the <texashealths.org> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or authorized Respondent to use the TEXAS HEALTH trademark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a mark is further evidence that a respondent is not commonly known by the mark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “Jack Anderson” as the registrant of the domain name. Additionally, Complainant asserts that it has not licensed or authorized Respondent to use the TEXAS HEALTH trademark. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent engages in a fraudulent email scheme. Specifically, Respondent uses the email address “info@texashealths.org”, which ends with the disputed domain name, to impersonate one of Complainant’s employees and request third-party vendors of Complainant to accept purchase orders and send products. Passing off as a complainant and using a disputed domain name to send fraudulent emails can never be a bona fide offering of goods or services or legitimate noncommercial or fair use. See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the at-issue domain name to pose as Complainant’s CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer. Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)”). Here, Complainant provides screenshots of the email thread whereby Respondent uses the disputed domain name and the fraudulent email address to impersonate one of Complainant’s actual employees and to request purchase orders from a third-party vendor. Complainant contends that these activities constitute an attempt to improperly utilize the goodwill and integrity established in Complainant and its trademark. Thus, the Panel finds that Respondent is not using the domain name for 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).
Complainant also argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent has failed to make active use of the website under the disputed domain name. Instead, the website is currently inaccessible. Failure to make an active use of the website under the domain name does not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Thus, the Panel finds that Respondent is not using the domain name for 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).
The Complainant argues that Respondent registered and uses the <texashealths.org> domain name in bad faith because Respondent uses the domain name as an email address to impersonate Complainant’s employee in order to fraudulently solicit products from Complainant’s third-party vendors. Using the domain name to send fraudulent emails impersonating the complainant may indicate bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). As noted above, Complainant has provided screenshots showing that Respondent uses the disputed domain name as an email, passes itself off as one of Complainant’s employees, and communicates with third-party vendors to request purchase orders. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant contends that Respondent’s bad faith is evidenced by Respondent’s use of typosquatting. Per Policy ¶ 4(a)(iii), when a respondent introduces errors into a disputed domain name to create a likelihood of confusion, it constitutes typosquatting, which is itself evidence of bad faith. See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”). Complainant contends that Respondent added an extra “s” to Complainant’s TEXAS HEALTH trademark, which creates a likelihood of confusion with Complainant’s trademark and amounts to typosquatting. The Panel agrees with Complainant and finds bad faith per Policy ¶ 4(a)(iii).
Additionally, Complainant argues that Respondent registered and uses the <texashealths.org> domain name in bad faith because Respondent does not have an active website associated with the disputed domain name. Failure to make an active use of the website under the disputed domain name can be evidence of bad faith. See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). Complainant alleges that the disputed domain name resolves to a website that is inactive, inaccessible, and cannot be reached. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Lastly, Complaint argues that Respondent registered the <texashealths.org> domain name with actual knowledge of Complainant’s rights in the TEXAS HEALTH trademark based on the fame of the trademark and Respondent’s use of the disputed domain name in connection with a fraudulent scheme to impersonate Complainant. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of the mark as well as the respondent’s use of the disputed domain name as an email address to impersonate complainant. 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 Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant has provided evidence of Respondent’s use of the disputed domain name to impersonate Complainant. The Panel agrees that Respondent had actual knowledge of Complainant’s rights in the TEXAS HEALTH trademark, and finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texashealths.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 29, 2021
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