Hackensack Meridian Health, Inc. v. Zhichao Yang
Claim Number: FA2202001983257
Complainant is Hackensack Meridian Health, Inc. (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hackesackmeridianhealth.org>, registered with Moniker Online Services 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2022; the Forum received payment on February 4, 2022.
On February 8, 2022, Moniker Online Services LLC confirmed by e-mail to the Forum that the <hackesackmeridianhealth.org> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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@hackesackmeridianhealth.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 James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the HACKENSACK MERIDIAN HEALTH mark established by its ownership of its portfolio of trademark registrations described below and claims extensive use of the mark in its healthcare business.
Complainant contends that the disputed domain name is confusingly similar and nearly identical to Complainant’s HACKENSACK MERIDIAN HEALTH trademark, as it incorporates and contains a misspelled version of Complainant’s HACKENSACK MERIDIAN HEALTH mark.
The sole difference from Complainant’s domain name is its omission of the letter “n” in the term “HACKENSACK.” Thus the disputed domain name is a “typosquatted” version of Complainant’s mark and is likely to mislead web users. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
Complainant submits that the addition of the generic top-level domain (“gTLD”) extension <.org> cannot distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant next contends that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that its HACKENSACK MERIDIAN HEALTH mark is not a generic or descriptive term in which the Respondent might have an interest.
Complainant asserts that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s mark or any domain names incorporating Complainant’s mark.
Complainant submits that on information and belief, and pursuant to the WHOIS information for the disputed domain name, Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb.10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply).
Complaint further contends that Respondent registered the disputed domain name several years after Complainant began using its HACKENSACK MERIDIAN HEALTH mark and <hackensackmeridianhealth.org> domain name.
Complainant refers to a screen capture of the website to which the disputed domain name resolves, which, it submits, shows that Respondent has been using the disputed domain name for a website that promotes various sponsored click-through links, which direct Internet users to third-party commercial websites.
Complainant argues that such use of the disputed domain name by Respondent does not qualify as a bona fide offering of goods and services or a legitimate noncommercial or fair use, and argues that it is presumed that the registrant received compensation for each misdirected user. See, e.g., Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith because it was deliberately chosen to trade off the reputation and goodwill associated with Complainant’s marks, to cause confusion amongst Internet users and Complainant’s customers, and to prevent Complainant from owning the disputed domain name.
Specifically, Complainant submits that Respondent has registered the disputed domain name with the intent to attract and divert Internet traffic for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s marks.
It is submitted that the disputed domain name is a misspelling of Complainant’s mark and it resolves to a web page displaying various third-party commercial links. Complainant argues that such use is evidence of bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy 4(b)(iv).”)
Complainant adds that Respondent has shown a pattern of registering domain names incorporating Complainant’s mark, and adds that a “pattern of conduct” may involve multiple domain names directed against a single complainant. See Blue Cross and Blue Shield Association v. Yanli Li / Yanli, FA1708001742918 (Forum Sept. 8, 2017) (“A bad faith pattern of conduct may be found where the respondent registers many domain names unrelated to its business, infringing on famous marks and websites.”).
Complainant adds that Respondent has also engaged in a pattern of registering other well-known, third-party trademarks, thereby further demonstrating bad faith. See Abbott Laboratories v. Bilgi Gumus, FA1810001813579 (Forum Nov. 21, 2018) (“Finally, it appears that Respondent has engaged in a pattern of bad faith registration and use of domain names, as it has accumulated a string of adverse UDRP decisions…”).
A search of the Forum’s Domain Name Dispute Proceedings and Decisions online database identified 160 cases in which Zhichao Yang is the listed Respondent. See e.g., State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA1209001461251 (Forum Oct. 16, 2012); Capital One Financial Corp. v. Zhichao Yang, FA1211001473336 (Forum Jan. 9, 2013) (ordering transfer of the <wwwstatefarms.com> domain); (ordering transfer of, inter alia, <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>); ALO, LLC v. Zhichao Yang, FA2006001902202 (Forum July 31, 2020) (ordering transfer of <aloyyoga.com>).
Finally, Complainant submits that Respondent’s the use of the typosquatted domain name indicates, by its very nature, bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a network of healthcare providers and has rights in the MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH trademark and service mark for which it owns a large portfolio of trademark registrations in the United States of America including:
· United States of America registered service mark MERIDIAN HEALTH, registration number2,188,836, registered on the Principal Register on September 15, 1998 for services in international class 42;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,441,318, registered on the Principal Register, on April 10, 2018, for services in international class 41;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,716,169, registered on the Principal Register, on April 2, 2018, for services in international class 42;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,441,320, registered on the Principal Register, on April 10, 2018, for services in international class 44;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,421,430, registered on the Principal Register, on March 13, 2018, for services in international class 45;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,546,729, registered on the Principal Register, on August 21, 2018, for services in international class 16.
Complainant has an established Internet presence and owns and uses the official domain name, <hackensackmeridianhealth.org> which it registered on October 9, 2014.
The disputed domain name <hackesackmeridianhealth.org> was registered on September 23, 2019, and resolves to a website consisting only of what appears to be pay-per-click links.
There is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for the registration details for the disputed domain name. The Registrar has confirmed that Respondent, who has availed of a privacy service to conceal its identity on the published WhoIs, is the registrant of the disputed domain name.
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 provided convincing evidence that it has rights in the HACKENSACK MERIDIAN HEALTH mark, established by its ownership of the United States trademark registrations described above.
The disputed domain name <hackesackmeridianhealth.org> is almost identical to Complainant’s service mark as it merely omits the letter “n” in the geographical place name “Hackensack”.
Complainant’s HACKENSACK MERIDIAN HEALTH is clearly referenced by the disputed domain name, and it is likely that Internet users would not notice the omission of the letter “n”.
Neither does the ccTLD extension <.org> add any distinguishing character to the disputed domain name as it would most probably be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the HACKENSACK MERIDIAN HEALTH mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant’s mark is not a generic or descriptive term in which the Respondent might have an interest;
· Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s mark or any domain names incorporating Complainant’s mark;
· on information and belief, and pursuant to the WHOIS information for the disputed domain name, Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization;
· Respondent registered the disputed domain name several years after Complainant began using its HACKENSACK MERIDIAN HEALTH mark and <hackensackmeridianhealth.org> domain name;
· the screen capture of the website to which the disputed domain name resolves, which has been exhibited with the Complaint, shows that Respondent has been using the disputed domain name for a website that promote various sponsored click-through links, which direct Internet users to third-party commercial websites;
· such use of the disputed domain name by Respondent does not qualify as a bona fide offering of goods and services or a legitimate noncommercial or fair use, and argues that it is presumed that the registrant received compensation for each misdirected user;
· therefore Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making legitimate, noncommercial fair use of the disputed domain name.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name is almost identical to Complainant’s HACKENSACK MERIDIAN HEALTH mark. The element “Hackensack” is a geographical place name and the word “health” is generic, but the combination of those elements with the term “Meridian” is unique and distinctive. It follows that it is most improbable that the disputed domain name was chosen without knowledge of Complainant’s pre-existing trademark and common law rights.
The misspelling of the element “Hackensack” as “hackesack” was clearly intentional and the combination of those elements in the disputed domain name was undoubtedly deliberately chosen and registered to trade off and take predatory advantage of the reputation and goodwill associated with Complainant’s marks, to cause confusion amongst Internet users and misdirect Complainant’s potential customers.
The screen capture of the webpage to which the disputed domain name resolves shows that Respondent’s webpage displays various third-party commercial links, from which Respondent, on the balance of probabilities, is generating pay-per-click revenue and profiting from its unauthorized use of Complainant’s mark which constitutes bad faith use.
The misspelling of Complainant’s mark in the disputed domain name is clearly an act of typosquatting to confuse, attract and misdirect Internet traffic intended for Complainant which is in itself evidence of bad faith registration and use.
Additionally the evidence shows that Respondent is engaged in a pattern of registering other well-known, third-party trademarks and a search of the Forum’s Domain Name Dispute Proceedings and Decisions online database has identified 160 cases in which Zhichao Yang is the listed Respondent. See e.g., State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA1209001461251 (Forum Oct. 16, 2012); Capital One Financial Corp. v. Zhichao Yang, FA1211001473336 (Forum Jan. 9, 2013) (ordering transfer of the <wwwstatefarms.com> domain); (ordering transfer of, inter alia, <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>); ALO, LLC v. Zhichao Yang, FA2006001902202 (Forum July 31, 2020) (ordering transfer of <aloyyoga.com>). This Panel finds that such a pattern of conduct constitutes bad faith use also for the purposes of the Policy.
This Panel’s finding that the disputed domain name was registered and is being used in bad faith is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, that he has not responded to the Complaint.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <hackesackmeridianhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: March 11, 2022
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