Hackensack Meridian Health, Inc. v. Zhichao
Claim Number: FA2202001983255
Complainant is Hackensack Meridian Health, Inc. (“Complainant”), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Zhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hacensackmeridianhealth.org>, registered with Dynadot, 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 February 4, 2022; the Forum received payment on February 4, 2022.
On February 7, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <hacensackmeridianhealth.org> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 February 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@hacensackmeridianhealth.org. Also on February 14, 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 March 9, 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 an integrated network of healthcare providers that has changed how health care is delivered in the state of New Jersey. Complainant has rights in the HACKENSACK MERIDIAN HEALTH trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,441,318, registered April 10, 2018). Respondent’s <hacensackmeridianhealth.org> domain name is confusingly similar to Complainant’s HACKENSACK MERIDIAN HEALTH trademark. Respondent incorporates the trademark in its entirety and removes the first “K” and adds the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <hacensackmeridianhealth.org> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the HACKENSACK MERIDIAN HEALTH trademark in any way.
Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a webpage that offer pay-per-click links to third parties unassociated with Complainant.
Respondent registered and used the <hacensackmeridianhealth.org> domain name in bad faith as Respondent uses the disputed domain name to resolve to a webpage that offers pay-per-click links to third parties. Respondent engages in the practice of typosquatting by introducing a small typographical error in making use of the HACKENSACK MERIDIAN HEALTH trademark in the domain name. Respondent has engaged in a pattern of bad faith by being involved in multiple UDRP decisions. Respondent had actual knowledge of Complainant’s rights in the HACKENSACK MERIDIAN HEALTH trademark due to the longstanding use and fame of the trademark in commerce.
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.
Further, the Complainant is the owner of several U.S. pending applications for trademarks including the words “HACKENSACK MERIDIAN”.
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 claims to have rights in the HACKENSACK MERIDIAN HEALTH trademark through its registrations with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a trademark 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)). Here, Complainant has provided the Panel with copies of it USPTO registrations for the HACKENSACK MERIDIAN HEALTH trademark (e.g. Reg. No. 5,441,318, registered April 10, 2018). Therefore, the Panel find that Complainant has rights in the trademark per Policy ¶ 4(a)(i).
Respondent’s <hacensackmeridianhealth.org> domain name is confusingly similar to Complainant’s HACKENSACK MERIDIAN HEALTH trademark. Registration of a domain name that contains a trademark in its entirety and removes a letter and adds a gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (“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. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Complainant argues that Respondent incorporates the trademark in its entirety and removes the first “K” and adds the “.org” gTLD. Therefore, the Panel may 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 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).
Complainant argues that Respondent lacks rights or legitimate interest in the <hacensackmeridianhealth.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the HACKENSACK MERIDIAN HEALTH trademark or to register domain names using Complainant’s trademark. 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 trademark 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 name lists the registrant as “Zhichao” and there is no other evidence to suggest that Respondent was authorized to use the HACKENSACK MERIDIAN HEALTH trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name 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 uses the disputed domain name to resolve to a webpage that offer pay-per-click links to third parties unassociated with Complainant. Use of a disputed domain name to resolve to a webpage that offers pay-per-click links to third parties is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <hacensackmeridianhealth.org> domain name that shows links to products and services related to its business. The Panel agrees with the Complainant’s conclusion and find 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).
The Complainant argues that Respondent registered and used the <hacensackmeridianhealth.org> domain name in bad faith as Respondent uses the disputed domain name to resolve to a webpage that offers pay-per-click links to third parties. Use of a disputed domain name that resolves to a webpage that offers links to services and products that compete with a complainant may indeed 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.”). Here, Complainant has provided the Panel with a screenshot of Respondent’s <hacensackmeridianhealth.org> domain name that shows links to products and services related to its business. Therefore, the Panel agree and find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
The Complainant argues that Respondent engages in the practice of typosquatting by introducing a small typographical error in making use of the HACKENSACK MERIDIAN HEALTH trademark in the domain name. Typosquatting is the practice of incorporating a trademark and adding small typographical errors therein which may be evidence of bad faith 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). Here, Complainant argues that Respondent incorporates its HACKENSACK MERIDIAN HEALTH trademark in its entirety and removes the first “k” letter when incorporating it in the domain name. Therefore, the Panel agrees and find that Respondent engaged in typosquatting which is evidence of bad faith per Policy ¶ 4(a)(iii).
The Complainant argues that Respondent has been involved in previous UDRP decisions which is evidence of bad faith. Prior UDRP cases may be evidence of a Respondent’s pattern of bad faith per Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Here, Complainant has provided the Panel with previous cases where Respondent was involved in UDRP decisions, including at least 10 domain names incorporating the Complainant’s trademarks. Therefore, the panel clearly find that Respondent has engaged in a pattern of bad faith per Policy ¶ 4(b)(ii).
The Complainant argues that Respondent had knowledge of Complainant’s rights in the HACKENSACK MERIDIAN HEALTH trademark at the time of registering the <hacensackmeridianhealth.org> domain name. The Panel disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.”). The Panel instead choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge 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 the fact that Respondent impersonates Complainant to further a fraudulent scam. Based on the information and facts provided by the Complainant, the Panel find that Respondent did have actual knowledge of Complainant’s right in its trademark, and the Panel thereby find bad faith under 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 <hacensackmeridianhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 16, 2022
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