Mary Washington Healthcare v. Zhichao Yang
Claim Number: FA2201001979064
Complainant is Mary Washington Healthcare (“Complainant”), represented by Justin B. Perri of Blackstone Law Group LLP, New York, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mymarywashingtonhealthcare.com>, <marywashingtonhealthcarw.com>, <marywashingtonhealthcarecenter.com>, <marywashingtononhealthcare.com>, <mymarywashingtonhealth.com>, <marywashimgtonhealthcare.com>, <marrywashingtonhealthcare.com>, <mymarywashhealth.com>, and <marywashingtonheatthcare.com>, registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 4, 2022; the Forum received payment on January 4, 2022. The Complaint was received in English.
On January 6, 2022, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <mymarywashingtonhealthcare.com>, <marywashingtonhealthcarw.com>, <marywashingtonhealthcarecenter.com>, <marywashingtononhealthcare.com>, <mymarywashingtonhealth.com>, <marywashimgtonhealthcare.com>, <marrywashingtonhealthcare.com>, <mymarywashhealth.com>, and <marywashingtonheatthcare.com> domain names are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the names. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 6, 2022, 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 January 26, 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@mymarywashingtonhealthcare.com, postmaster@marywashingtonhealthcarw.com, postmaster@marywashingtonhealthcarecenter.com, postmaster@marywashingtononhealthcare.com, postmaster@mymarywashingtonhealth.com, postmaster@marywashimgtonhealthcare.com, postmaster@marrywashingtonhealthcare.com, postmaster@mymarywashhealth.com, postmaster@marywashingtonheatthcare.com. Also on January 6, 2022, 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 February 1, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), 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 including Respondent’s failure to respond, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant contends as follows:
Complainant, Mary Washington Healthcare, operates a system of hospitals and healthcare facilities.
Complainant has common law rights in the MARY WASHINGTON HEALTHCARE mark based on use of the mark in commerce since 1899.
Respondent’s <mymarywashingtonhealthcare.com>, <marywashingtonhealthcarw.com>, <marywashingtonhealthcarecenter.com>, <marywashingtononhealthcare.com>, <mymarywashingtonhealth.com>, <marywashimgtonhealthcare.com>, <marrywashingtonhealthcare.com>, <mymarywashhealth.com>, and <marywashingtonheatthcare.com> domain names are confusing similar to Complainant’s MARY WASHINGTON HEALTHCARE mark since the domain names consist of misspellings of the mark and/or add the generic terms “my” and “carecenter.”
Respondent lacks rights or legitimate interests in the at-issue domain names. Respondent is not commonly known by the domain names and Complainant has not licensed or authorized Respondent to use the MARY WASHINGTON HEALTHCARE mark. Additionally, Respondent does not use the at-issue domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use as the domains resolve to pay-per-click advertisements.
Respondent registered and uses the at-issue domain names in bad faith. Respondent engages in a pattern of bad faith registration and use. Additionally, Respondent uses the domain names to direct users to pay-per-click advertisements. Furthermore, Respondent engages in typosquatting. Finally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the MARY WASHINGTON HEALTHCARE mark based on Complainant’s prominence in the healthcare industry.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MARY WASHINGTON HEALTHCARE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the MARY WASHINGTON HEALTHCARE trademark.
Respondent uses the at-issue domain names to address a webpage that presents pay-per-click type hyperlinks some of which compete with Complainant.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant shows that it has common law trademark rights in its MARY WASHINGTON HEALTHCARE trademark basing such rights on the long and continuous usage of the mark in connection with healthcare facilities dating back to 1899. See Mary Washington Healthcare v. Carolina Rodrigues, Fundacion Comercio Electronico / Carolina Rodrigues / Fundacion Comercio Electronico, FA 19768772 (Forum Jan. 31, 2022) (“ Complainant has established its common law trademark rights to the MARY WASHINGTON HEALTHCARE mark based upon the mark’s inherently distinctive nature, derived from Complainant’s providing healthcare services since 1899.”). Common law rights are sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”).
Respondent’s at-issue domain names each contain Complainant’s MARY WASHINGTON HEALTHCARE trademark, or an overtly misspelled, or abbreviated version thereof, along with either the prefix “my” or suffix “center” with all followed by a necessary top-level, here “.com.” The differences between Respondent’s domain names and Complainant’s trademark are insufficient to distinguish any of the domain names from Complainant’s MARY WASHINGTON HEALTHCARE mark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent’s at-issue domain names are each confusingly similar to Complainant’s MARY WASHINGTON HEALTHCARE trademark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”); see also MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each 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 any at‑issue 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 at-issue domain names identifies the domain names’ registrant as “Zhichao Yang” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by any of the domain names or by Complainant’s trademark. The Panel therefore concludes that Respondent is not commonly known by the any of the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar domain names to address a webpage displaying pay-per-click links to third party advertisements some of which compete with Complainant. Respondent’s use of the confusingly similar domain names in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of each at-issue domain names under Policy ¶ 4(a)(ii).
Respondent’s at-issue domain names were each registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy regarding each of the domain names.
First, as mentioned above regarding rights and legitimate interests, Respondent uses its confusingly similar domain names to display hyperlinks related to third-parties. Doing so shows Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶¶ 4(b)(iii) and (b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Additionally, Respondent registered the at-issue domain names knowing that Complainant had trademark rights in MARY WASHINGTON HEALTHCARE. Respondent’s prior knowledge is shown by the notoriety of Complainant’s MARY WASHINGTON HEALTHCARE mark; by the display of links to Complainant’s competitors on webpage(s) addressed by the at-issue domain names; and by Respondent’s incorporation of Complainant’s trademark into numerous confusingly similar domain names. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the confusingly similar domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Next, Respondent engages in typosquatting regarding most all of the at-issue domain names. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a domain name hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse the misspelled trademark laden domain name with its target trademark, a web address, or another reference to the mark holder. Here, the at-issue domain names incorporate various misspellings of Complainant’s MARY WASHINGTON HEALTHCARE mark. Typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Sports Auth. Mich., Inc. v. Skander, FA 135598 (Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” which is evidence of bad faith registration and use).
Finally, the Panel takes note that Respondent has suffered numerous adverse UDRP decisions as a respondent. See e.g., Transamerica Corporation v. Zhichao Yang, FA2109001962452 (Forum Oct. 1, 2021); Securian Financial Group, Inc. v. Zhichao Yang / Yang Zhi Chao / Zhichao, FA2108001960750 (Forum Sept. 28, 2021); LPL Financial LLC v. Zhichao Yang, D2021-3670 (WIPO Dec. 21, 2021). Respondent’s repeated cybersquatting evidences a pattern of domain name abuse thereby showing Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mymarywashingtonhealthcare.com>, <marywashingtonhealthcarw.com>, <marywashingtonhealthcarecenter.com>, <marywashingtononhealthcare.com>, <mymarywashingtonhealth.com>, <marywashimgtonhealthcare.com>, <marrywashingtonhealthcare.com>, <mymarywashhealth.com>, and <marywashingtonheatthcare.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 2, 2022
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