Hackensack Meridian Health, Inc. v. Zhichao Yang
Claim Number: FA2112001978875
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 NAMES
The domain names at issue are <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org>, registered with NameSilo, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2021; the Forum received payment on December 30, 2021.
On January 1, 2022, NameSilo, LLC confirmed by e-mail to the Forum that the <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> 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 January 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registrations as technical, administrative, and billing contacts, and to postmaster@hackensackmerridianhealth.org, postmaster@hackensackmetidianhealth.org. Also on January 10, 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 registrations as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2022, 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 provides a full spectrum of life-enhancing care and services to create and sustain healthy, vibrant communities. Complainant has rights in the HACKENSACK MERIDIAN HEALTH mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,441,318, Registered April 10, 2018). Respondent’s <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names are confusingly similar to Complainant’s HACKENSACK MERIDIAN HEALTH mark. Respondent misspells the mark and adds an additional letter along with the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names as Respondent is not commonly known by the disputed domain names, nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to a webpage that offers hyperlinks related and unrelated to Complainant’s business.
Respondent registered and used the <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names in bad faith as the domain names redirect internet users to a webpage that offers hyperlinks related and unrelated to Complainant’s business. Respondent has engaged in a pattern of bad faith by being subject to multiple UDRP complaints and multiple domains in this complaint. Respondent engages in the practice of typosquatting by creating a typographical error in creating the domain names. Respondent had actual knowledge of Complainant’s rights in the HACKENSACK MERIDIAN HEALTH due to the use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> 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 has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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 argues Respondent lacks rights or legitimate interest in the <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been given license or consent to use the HACKENSACK MERIDIAN HEALTH mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain names lists the registrant as “Zhichao Yang” and there is no evidence to suggest that Respondent was authorized to use the HACKENSACK MERIDIAN HEALTH mark or was commonly known by the disputed domain names. The Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain names resolve to a webpage that offers hyperlinks related and unrelated to Complainant’s business. Use of a disputed domain name to resolve to a webpage that offers hyperlinks to goods and services that compete or are unrelated to a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). 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). Complainant has provided the Panel with screenshots of Respondent’s <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names that show services related to Complainant’s business. The Panel agrees that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of either domain name.
Complainant has proved this element.
Complainant argues that Respondent registered and used the <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names in bad faith as Respondent’s domain names redirects internet users to a webpage that offers hyperlinks related and unrelated to Complainant’s business. Use of a disputed domain name that resolves to a webpage that offers services that compete against a complainant may be evidence of bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant has provided the Panel with screenshots of Respondent’s domain names that show services related to Complainant’s business. This is evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Complainant argues that Respondent has engaged in a pattern of bad faith by being subject to adverse findings in multiple UDRP complaints. Prior and current UDRP cases may be evidence that a respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore, the Panel finds bad faith under the provision.”). Complainant argues that it has submitted multiple complainants against Respondent and points out that there are two domain names subject to this complainant. This is evidence of a pattern of bad faith which is evidence of bad faith per Policy ¶ 4(b)(ii).
Complainant argues that Respondent engages in the practice of typosquatting by creating a typographical error in creating the domain names. Registration of a domain name that contains small typographical errors to a complainant’s mark constitutes typosquatting per Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein). Complainant argues that Respondent misspells the HACKENSACK MERIDIAN HEALTH mark in creating the domain names. This is evidence that Respondent has engaged in typosquatting which is evidence of bad faith per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the HACKENSACK MERIDIAN HEALTH mark at the time of registering the <hackenssackmeridianhealth.org> and <hackensackmetidianhealth.org>domain names. Actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name can 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”). To support this assertion, Complainant points to its trademark registrations along with use made of the domain names. The Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark and registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
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 <hackensackmerridianhealth.org> and <hackensackmetidianhealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
February 15, 2022
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