Indiana University Health, Inc. v. Mark Davis
Claim Number: FA2202001983401
Complainant is Indiana University Health, Inc. (“Complainant”), represented by Justin B. Perri of Blackstone Law Group LLP, New York, USA. Respondent is Mark Davis (“Respondent”), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <iuhaelth.org>, registered with Wild West Domains, 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 7, 2022; the Forum received payment on February 7, 2022.
On February 8, 2022, Wild West Domains, LLC confirmed by e-mail to the Forum that the <iuhaelth.org> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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@iuhaelth.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 14, 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 IU HEALTH service mark, established through ownership of its service mark registrations set out below and through its use of the mark since 1997 in its comprehensive healthcare services in Indiana, with 16 hospitals having 36,000 employees.
Complainant alleges that the disputed domain name is confusingly similar to its IU HEALTH service mark as it contains Complainant’s mark in its entirety with only a single, commonplace misspelling of the element “health” as “haelth”. See, e.g., Duracell U.S. Operations, Inc. v. feely mac, FA2012001924346 (Forum Jan. 6, 2021) (respondent’s <darucell[.]com> domain name found to be confusingly similar to complainant’s DURACELL trademark).
Complainant further submits that the addition of the generic Top-Level Domain (“gTLD “) extension <.org> is insufficient to differentiate the disputed domain name from Complainant’s mark, arguing that generally, the addition of a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Tupelo Honey Hospitality Corporation v. King, Reggie, FA1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”)
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the WhoIs information on record demonstrates that Respondent is not commonly known by the disputed domain name. See AutoZone Parts, Inc. v. LLC Perfect Privacy / Network Solutions LLC, FA1903001834724 (Forum Apr. 16, 2019) (“WhoIs information listing a privacy service as the registrant can allow the Panel to find there is no basis to find that the Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii)”).
Complainant argues that where, as here, a registrant’s name is materially different from the domain name at issue, panels established under the Policy have consistently held that this is competent evidence that the respondent is not commonly known by the domain name. See, e.g., 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).
Furthermore, Complainant asserts that it has never entered into or consented to any form of licensing arrangement with Respondent or authorized Respondent to use the IU HEALTH trademark. See Expedia, Inc. v. Prakash Kushwaha, FA2002001884238 (Forum Mar. 19, 2020) (“there is nothing in the record that suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii)”).
Complainant contends that the disputed domain name does not resolve to any website and therefore Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor is it making a legitimate non-commercial or fair use of the disputed domain name.
Complainant submits that it has demonstrated prima facie that Respondent lacks rights or legitimate interests in respect to the disputed domains by providing evidence of trademark registration long before Respondent registered the disputed domain name. See Skechers U.S.A, Inc and Skechers U.S.A., Inc. II v. Brian Stephens, FA2002001883244 (Forum Mar. 12, 2020) (finding that the complainant made a prima facie case of no right or legitimate interests against the respondent where, as here, complainant’s mark was registered in the United States well before respondent registered the domain name at issue).
Complainant concludes that because it has made out a prima facie case, the burden of production shifts to Respondent to rebut Complainant’s contentions. See National Debt Relief, LLC v. Domain Administrator / See PrivacyGuardian.org, FA2002001882876 (Forum Mar. 20, 2020) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii), shifting the burden to respondent “to show it does have rights or legitimate interests”).
Complainant next argues that the disputed domain name was registered and is being used in bad faith, submitting that Complainant’s prominence in the healthcare industry, and Respondent’s use of Complainant’s name in the disputed domain name illustrates that Respondent is well aware of Complainant’s IU HEALTH mark. See HUGO BOSS Trademark Management GmbH & Co., KG and HUGO BOSS AG v. Dan Thurston, FA1706001734085 (Forum June 29, 2017) (“Respondent must have had actual knowledge of Complainant’s HUGO BOSS mark and business because Respondent registered the disputed domain name using an added generic term coupled with Complainant’s HUGO BOSS mark”).
Complainant refers to copy email correspondence which included an invoice, which are exhibited in an annex to the Complaint.
Complainant submits the exhibits show that Respondent established an email account using the disputed domain name from which an email was sent on January 20, 2022, falsely purporting to originate from Complainant’s Chief Operating Officer for one of its hospitals viz. Ball Memorial Hospital requesting payment for a “human right donation program.”
Complainant alleges that the e-mail and invoice attachment are fraudulent and submits that this activity is known as a “Business E-mail Compromise scam” in which Respondent requests payment for a non-existent transaction. Complainant argues such malicious activity is related to spear phishing which in itself, is evidence of bad faith for the purposes of Policy ¶ 4(b)(iv). See Swatch Group AG v. Van Cole, FA1901001827758 (Forum Feb. 25, 2019) (finding that using a mark to impersonate a complainant in connection with a fraudulent phishing scheme is indicative of bad faith registration and use).
Complainant adds that Respondent’s use of the disputed domain name to pass itself off as Complainant, to profit from Complainant’s name demonstrates bad faith registration and use of the disputed domain name. See Sysco Corporation v. Anaël Mulciba-Polycarpe, FA2002001882846 (Forum Mar. 7, 2020) (finding that the domain name “jobs-sysco.com” is clearly being used to misrepresent respondent as complainant in furtherance of a fraudulent scheme).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of services for its healthcare system in Indiana, which provides under the IU HEALTH mark and for which it owns the following United States of America service mark registrations:
· United States of America service mark IU HEALTH, registration number 3,946,277, registered on the Principal Register on October 19, 2010 for services in international class 44;
· United States of America service mark IU HEALTH (Design plus word), registration number 3946177 registered on the Principal Register on October 19, 2010, for services in international class 44;
Complainant has an established Internet presence using its domain name <iuhealth.org> which was registered on April 28, 2010.
The disputed domain name <iuhaelth.org> was registered on January 20, 2022 and has been used to create an email account from which emails are being sent, falsely purporting to emanate from one of Complainant’s employees, in a scheme requesting funds for a non-existing human rights charity fundraising program
There is no information available about Respondent, except for that which is provided in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar in response to an enquiry by the Forum for the registration details of the disputed domain name for the purposes of this proceeding.
The Registrar has confirmed that Respondent, who has availed of a proxy service to conceal his 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”).
While Complainant submits that it is the owner of the abovementioned service mark registrations for the IU HEALTH mark, the evidence adduced shows that in fact the mark are registered in the name of “The Trustees of Indiana University body politic and corporate” and there is no evidence of assignment.
The Complaint however explains that since the registration of the trademarks in 2010 Indiana University Hospital merged with two other hospitals and Complainant is the merged entity.
This Panel finds therefore that on the balance of probabilities Complainant has rights in the IU HEALTH mark.
The disputed domain name <iuhaelth.org> consists of a nonsense term “iuhaelth“ which is almost identical to Complainant’s IU HEALTH mark, with the letters “a” and “e” in the word “health” in reverse order, in combination with the generic Top Level Domain “(gTLD”) extension <.org>.
Complainant’s IU HEALTH mark is clearly identifiable in the disputed domain name, and the fact that the letters “a” and “e” are reversed is likely to be missed by the casual reader.
The gTLD extension <.org> adds does not prevent a finding of confusing similarity as Internet users would understand it to be a necessary technical requirement for a domain name registration.
This Panel finds therefore that the disputed domain name is confusingly similar to the IU 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
· the WhoIs information on record demonstrates that Respondent is not commonly known by the disputed domain name;
· where, as here, a registrant’s name is materially different from the domain name at issue, panels established under the Policy have consistently held that this is competent evidence that the respondent is not commonly known by the domain name;
· Complainant has never entered into or consented to any form of licensing arrangement with Respondent or authorized Respondent to use the IU HEALTH mark;
· the disputed domain name does not resolve to any website and therefore Respondent is not using the disputed domain name for a bona fide offering of goods or services, nor is he making a legitimate non-commercial or fair use of the disputed domain name;
· Complainant has demonstrated a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name by providing evidence that Complainant’s trademark registrations for IU HEALTH predate the registration of the disputed domain name;
· because Complainant has made out a prima facie case, the burden of production shifts to Respondent to rebut Complainant’s contentions.
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).
Complainant had a prominent position in the healthcare industry prior to the registration of the disputed domain name which is almost identical to Complainant’s mark.
The selection and registration of the disputed domain name which has no meaning or significance other than as a misspelling of Complainant’s mark leads to the finding on the balance of probabilities the disputed domain name was chosen and registered to confuse Internet users and take predatory advantage of the reputation of Complainant.
This Panel find that that on the balance of probabilities the disputed domain name was registered in bad faith in an act of typosquatting, by intentionally reversing two letters in Complainant’s service mark to create the disputed domain name.
Complainant has exhibited correspondence in an annex to the Complaint which shows that on January 20, 2022, the very day on which the disputed domain name was registered, it was used to send an email to create an email account which was used to send an email message falsely purporting to be sent by the Chief Operating Officer of one of Complainant’s hospitals to a third party to request payment of an invoice purporting to be for a donation to an annual fundraising program to fight violations of human rights.
On the balance of probabilities therefore the disputed domain name is being used in bad faith to impersonate one of Complainant’s employees to mislead and induce a third party to make a payment to a non-existent charity.
As this Panel has found that the disputed domain name was registered and is 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 <iuhaelth.org> domain name be TRANSFERRED from Respondent to Complainant.
____________________________________
James Bridgeman SC
Panelist
Dated: March 16, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page