Hackensack Meridian Health, Inc. v. Zhichao Yang
Claim Number: FA2112001978740
Complainant is Hackensack Meridian Health, Inc. (“Complainant”), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hackansackmeridianhealth.org>, registered with GoDaddy.com, 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 December 30, 2021; the Forum received payment on December 30, 2021.
On December 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hackansackmeridianhealth.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2022 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@hackansackmeridianhealth.org. Also on January 4, 2022, 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 January 31, 2022, 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 network of healthcare providers including hospitals, fitness and wellness centers, and rehab centers based in New Jersey. Complainant has rights in the HACKENSACK MERIDIAN HEALTH trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,441,318, registered Apr. 10, 2018). The <hackansackmeridianhealth.org> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark, merely misspelling it by replacing the letter “E” with the letter “A,” and added the “.org” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <hackansackmeridianhealth.org> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s HACKENSACK MERIDIAN HEALTH trademark. 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 because the disputed domain resolves to a parked webpage with third-party hyperlinks.
Respondent registered and uses the <hackansackmeridianhealth.org> domain name in bad faith because Respondent uses the disputed domain name to host pay-per-click hyperlinks. Additionally, Respondent fails to make active use of the disputed domain name since it resolves to a parked page. Furthermore, Respondent engages in typosquatting which is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 2,188,836 MERIDIAN HEALTH (word), registered September 15, 1998 for services in Intl Class 42;
No. 5,441,318 HACKENSACK MERIDIAN HEALTH (word), registered April 10, 2018 for services in Intl Class 41;
No. 5,716,169 HACKENSACK MERIDIAN HEALTH (word), registered April 2, 2019 for services in Intl Class 42;
No. 5,441,320 HACKENSACK MERIDIAN HEALTH (word), registered April 10, 2018 for services in Intl Class 44;
No. 5,421,430 HACKENSACK MERIDIAN HEALTH (word), registered March 13, 2018 for services in Intl Class 45; and
No. 5,546,729 HACKENSACK MERIDIAN HEALTH (word), registered August 21, 2018 for goods in Intl Class 16.
The disputed domain name <hackansackmeridianhealth.org> was registered on September 19, 2019.
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 asserts rights in the HACKENSACK MERIDIAN HEALTH trademark based on registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a trademark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides evidence of its registration with the USPTO for the HACKENSACK MERIDIAN HEALTH trademark (e.g., Reg. No. 5,441,318, registered Apr. 10, 2018). Therefore, the Panel find that Complainant has rights in the HACKENSACK MERIDIAN HEALTH trademark under Policy ¶ 4(a)(i).
Complainant argues the <hackansackmeridianhealth.org> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire misspelled version of the trademark, only replacing the letter “E” with the letter “A” in the trademark, and adding the “.org” gTLD. Misspelling a disputed domain name by replacing a single letter and adding a gTLD to a trademark may not be sufficient to differentiate the disputed domain name from the trademark under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark per 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 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”).
Complainant claims that Respondent does not have rights or legitimate interests in the <hackansackmeridianhealth.org> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s HACKENSACK MERIDIAN HEALTH trademark. 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 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 complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES trademark). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <hackansackmeridianhealth.org> and no information suggests that Complainant authorized Respondent to use the HACKENSACK MERIDIAN HEALTH trademark. Rather, the WHOIS information lists the registrant of the domain as “Zhichao Yang.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <hackansackmeridianhealth.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name resolves to a parked webpage with pay-per-click hyperlinks. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Here, Complainant provides a screenshot showing that Respondent hosts click-through links which redirect to third-party sites on the resolving webpage for the disputed domain name. Therefore, the Panel find that Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Complainant argues that Respondent registered and uses the <hackansackmeridianhealth.org> domain in bad faith because Respondent uses the domain to host pay-per-click hyperlinks on the resolving webpage. Using a disputed domain name to host parked, click-through links is evidence of bad faith per Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As noted above, in the present case, Complainant provides screenshots showing the disputed domain resolves to a parked page with pay-per-click hyperlinks to a variety of third-parties. Further, Complainant believes that Respondent benefits commercially from these links. The Panel agrees with the Complainant’s conclusion, and find that Respondent registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Furthermore, Complainant contends that Respondent’s failure to resolve the disputed domain name to an active website also indicates Respondent’s bad faith registration and use. Under Policy ¶ 4(a)(iii), failing to resolve a disputed domain name to an active website may be evidence of bad faith. See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”).
The Panel notes that there is a difference between “nonuse” and “inactive use”. With inactive use, there is a site or message connected to the disputed domain name, with a message to the online audience. In this case, as described above, the disputed domain resolves to a parked page with pay-per-click hyperlinks to a variety of third-parties. That is a clear “inactive use” that still gives the audience the wrong impression of the Complainant’s goods and services and related business. The Panel therefore agrees with Complainant, and find bad faith.
In addition, Complainant argues that Respondent has registered and uses the disputed domain in bad faith because it engages in typosquatting. Typosquatting, or capitalizing on slight misspellings between the disputed domain name and a mark or a Complainant’s actual domain name, may be evidence of bad faith under Policy ¶ 4(a)(iii) See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA1409001579875 (Forum Oct. 28, 2014) (“As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter ‘L’ for the letter ‘K’ in the LOCK-portion of Complainant’s registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii).”). Here, in the disputed domain name Respondent has substituted the letter “a” for the letter “e” found in both Complainant’s HACKENSACK MERIDIAN HEALTH trademark and <hackensackmeridianhealth.org> domain, taking advantage of internet users who may attempt to reach Complainant’s domain. Therefore, the panel find that Respondent registered and uses the disputed domain in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hackansackmeridianhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 4, 2022
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