Texas Health Resources v. Johnny Leed / JOHNNYLEED
Claim Number: FA1802001772529
Complainant is Texas Health Resources (“Complainant”), represented by Kay Lyn Schwartz of GARDERE WYNNE SEWELL LLP, Texas, USA. Respondent is Johnny Leed / JOHNNYLEED (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <texashealthh.org>, <ttexashealth.org>, <texashealh.org>, and <teaxshealth.org>, registered with GoDaddy.com, LLC; and <texshealth.org>, registered with eNom, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 19, 2018; the Forum received payment on February 20, 2018.
On February 20, 2018, GoDaddy.com, LLC; eNom, LLC confirmed by e-mail to the Forum that the <texashealthh.org>, <ttexashealth.org>, <texashealh.org>, and <teaxshealth.org> domain names are registered with GoDaddy.com, LLC; and that the <texshealth.org> domain name is registered with eNom, LLC; and that Respondent is the current registrant of the names. GoDaddy.com, LLC and eNom, LLC have verified that Respondent is bound by the respective GoDaddy.com, LLC and eNom, LLC registration agreements 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 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 2018 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@texashealthh.org, postmaster@ttexashealth.org, postmaster@texashealh.org, postmaster@texshealth.org, postmaster@teaxshealth.org. Also on February 23, 2018, 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 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
FACTUAL AND LEGAL GROUNDS
A. THE TEXAS HEALTH TYPO-SQUATTED DOMAIN NAMES ARE IDENTICAL OR CONFUSINGLY SIMILAR TO TRADEMARKS OR SERVICE MARKS IN WHICH TEXAS HEALTH HAS RIGHTS
1. Texas Health’s Trademark Rights
Texas Health Resources (collectively “Texas Health”) is one of the largest faith-based nonprofit health systems in the United States and the largest in North Texas in terms of inpatients and outpatients. Texas Health has affiliated with numerous organizations, from all aspects of the health care industry, to better serve the more than seven (7) million in sixteen (16) counties throughout the North Texas region. Currently, Texas Health has twenty nine (29) hospital locations, including acute-care, short-stay, behavioral health, rehabilitation and transitional care facilities, that are owned, operated, or joint-ventured with Texas Health Resources. Since at least as early as 1997, Texas Health (itself, or through a related company, predecessor-in-interest or licensee) has used continuously in commerce, and is currently using, the trademark “TEXAS HEALTH RESOURCES” as well as other Texas Health-derivative marks in connection with its various services, including but not limited to Reg. No. 5291195 for TEXAS HEALTH HOSPITAL and design; Reg. No. 3921474 for TEXAS HEALTH and design; Reg. No. 3769617 for TEXAS HEALTH PRESBYTERIAN and design; Reg. No. 3769616 for TEXAS HEALTH HARRIS METHODIST and design; Reg. No. 4031790 for TEXAS HEALTH ARLINGTON MEMORIAL HOSPITAL and design; Reg. No. 3773835 for TEXAS HEALTH RESOURCES and design; Reg. No. 3917298 for TEXAS HEALTH PHYSICIAN GROUP and design; Reg. No. 4556109 for TEXAS HEALTH HUGULEY HOSPITAL and design; Reg. No. 4708464 for TEXAS HEALTH RESOURCES FOUNDATION and design; Reg. No. 5296566 for TEXAS HEALTH NEIGHBORHOOD CARE & WELLNESS and design; Reg. No. 5317276 for TEXAS HEALTH EMERGENCY ROOM and design; among others. Texas Health also is the owner of numerous domain name registrations for TEXASHEALTH.ORG and TEXASHEALTHRESOURCES.COM (the “Texas Health Websites”). The above-referenced names and marks are collectively referenced herein as the “Texas Health Marks”.
Examples of the Texas Health Marks, as well as additional information regarding Texas Health’s healthcare services, can be found on the Texas Health Websites.
Based upon the foregoing facts, Texas Health submits that it has rights in the Texas Health Marks.
2. The domain names at issue are identical or confusingly similar to the Texas Health Marks.
A domain name is, by definition, identical or confusingly similar, when the domain name incorporates Complainant’s mark, thus creating a presumption that the domain name is affiliated with Complainant.1 In this case, the domain names at issue all incorporate Texas Health’s name and mark “TEXAS HEALTH” (either the identical spelling, or a typo-squatted variety misspelling) along with the top-level domain “.ORG”. The domain, in one case, intentionally doubles the letter “H” at the end. In another instance, the domain intentionally doubles the letter “T” at the beginning. In the other instances “Texas” and/or “Health” is misspelled by omitting a letter. It should be pointed out that the domains at issue correspond to Texas Health’s “TEXASHEALTH.ORG” domain name - “TEXASHEALTH.ORG” compare with the domains at issue, TEXASHEALTHH.ORG [an extra “H” in “Health”], TTEXASHEALTH.ORG [an extra “T” in “Texas”], TEXASHEALH.ORG [eliminating the letter “T” in “Health”], TEXSHEALTH.ORG [eliminating the letter “A” in “Texas”], TEAXSHEALTH.ORG [moving the letter “X” in “Texas” from before the letter “A” to after the letter “A” (i.e., “Teaxs” instead of “Texas”).
As noted above, Texas Health submits that Respondent has maliciously engaged in “typosquatting,” preying on the tendency of the average internet user to mis-type or misspell a domain name by entering the domains at issue instead of Texas Health’s principal website “TexasHealth.org”. As will be provided in more detail below, Respondent’s selection of the domain names at issue illustrates Respondent’s bad faith, and its intentional act in registering the domain names at issue to trade on Texas Health’s rights.
In considering confusing similarity between typo-squatted domain names and a Complainant’s mark, Panels have considered the confusion which inevitably results when an Internet user falls into the typosquatter’s trap and miss-types a domain name. Texas Health submits that there exists a likelihood of confusion as a result of Respondent’s registration and use of the domain names at issue. When an Internet user intends to reach Texas Health’s “TEXASHEALTH.ORG” website, but mistakenly enters one of Respondent’s domain names ( e.g., “TEXASHEALTHH.ORG” (by including two H’s at the end of “HEALTH” instead of just one “H”), or “TTEXASHEALTH.ORG” (by including two T’s at the beginning of “TEXAS” instead of just one “T”), or eliminating the letter “T” in “Health” (and entering instead TEXASHEALH.ORG), or eliminating the letter “A” in “Texas” (and instead entering TEXSHEALTH.ORG), or transposing the letter “X” in Texas (and instead entering TEAXSHEALTH.ORG), the user is brought to Respondent’s sites. At a minimum, consumers searching the internet for information on Texas Health and its services are likely to be confused – and frustrated - when encountering Respondent’s domain names and associated websites.
Accordingly, Texas Health submits that the first element required under Rule of the ICANN Rules (and Policy ¶4(a)(i)) has been clearly established. Texas Health has substantial rights in the Texas Health Marks, and the domain names at issue are identical or confusingly similar to trademarks and service marks in which Texas Health has rights.
B. RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN THE DOMAIN NAMES AT ISSUE
Respondent does not have rights or legitimate interests in ANY of the domain names at issue as set forth in Policy 4(c).
1. Respondent has not been authorized to use the Texas Health Marks, and Respondent, itself, has no trade or service mark rights in “Texas Health” “TEXAS HEALTHH”, “TEXASHEALTHH.ORG”, “TTEXASHEALTH”, “TTEXASHEALTH.ORG”, any misspelling of “Texas Health” or any other corresponding “Texas Health” mark
Respondent is not affiliated with Texas Health, has not been authorized to use the Texas Health Marks, and Respondent itself has no trade or service mark rights in “Texas Health” or any of the Texas Health Typo-Squatted Domain Names, or for that matter any other Texas Health-derivative mark. It is well established that a party has no rights or legitimate interests in a domain name when that party has no affiliation with the corresponding mark. Nothing in the WHOIS domain name registration information suggests that Respondent is legitimately known by “Texas Health” or one of the domain names at issue. Rather, the listed Registrant in the WHOIS record for the domain name at issue is Johnny Leed.
2. Respondent’s use of the domain names does not constitute a “bona fide” offering of goods or services pursuant to Policy 4(c); Respondent’s use of the domain names is clearly commercial, and with the intent to misleadingly divert Internet consumers.
Texas Health submits that at no time before having notice of this dispute has Respondent used or made any demonstrable preparations to use any of the domain names at issue in connection with a bona fide offering of goods or services pursuant to Policy 4(c)(i).
As described above, Respondent’s domain names resolve to a website which provides various links to third-party sites, including third parties’ billings, patient appointments, benefits and medical records services, all of which are services that Complainant offers. Representative screenshots of several of the websites associated with the domain names at issue are shown in the Complaint.
Upon information and belief, Respondent is not offering any type of goods or services, but rather is running third-party advertisements and affiliate advertisements on its site. Upon information and belief, Respondent is using the domain names at issue solely to obtain “referral” fees in connection with an “affiliate” type of marketing program. In other words, Respondent is using the domain names to derive “click through” fees through web advertising programs. If a consumer “clicks through” Respondent’s website and clicks on one of the links associated with Respondent’s webpage to visit the third-party site, it is believed that Respondent derives revenue or some remuneration as a result of a user “clicking through” Respondent’s site.
It is well-settled that the practice of misdirecting internet traffic for commercial gain (which would include deriving affiliate commissions) is not a bona fide offering of goods or services under the Policy, and also is not a legitimate non-commercial or fair use of a domain name under the Policy. The Policy does not permit a Respondent to commercially benefit from the diversion of Internet users to its website by receiving affiliate marketing fees from third parties, as is the case here where Respondent is believed to receive fees when Internet users follow the links and visit third-party sites.
Even if Respondent is not receiving commission fees, its use of the domain names to direct traffic to alternative sites is not a bona fide offering of services pursuant to the Policy. It is well-established that the use of a domain name containing a Complainant’s mark for the purpose of mis-directing traffic does not establish a bona fide commercial use.
Complainant submits that Respondent registered and is using the domains solely for the purpose of diverting customers or potential customers of Texas Health to Respondent, or in an effort to disrupt the Complainant’s business, or to harass. Such conduct clearly evidences that Respondent has no rights or legitimate interests in the domain names at issue.
For these reasons, Respondent has no rights or legitimate interests in the domain names at issue. Accordingly, Complainant submits that the second element required under Rule 3 of the ICANN Rules has been met.
C. THE DOMAIN NAMES AT ISSUE WERE REGISTERED AND ARE BEING USED IN BAD FAITH.
Respondent registered and is using the domain names at issue in bad faith. Failure to make a bona fide use of the registered domain names, that contains another’s trademark, as Complainant has demonstrated above with respect to the domain names at issue, is evidence of bad faith registration and use of those domain names.
As demonstrated above, Respondent has maliciously engaged in “typosquatting” by capitalizing on the tendency of the average internet user to mistype or misspell the domain name “TEXASHEALTH.ORG” (e.g., by including an extra letter, eliminating a letter, or transposing a letter in Complainant’s “TEXAS HEALTH” mark). As this Panel is aware, typosquatting is by itself strong evidence of bad faith use and registration of domain names.
In addition, failure to make a bona fide use of a registered domain name, that contains another’s trademark, as Complainant has demonstrated above with respect to the domain name at issue, is evidence of bad faith registration and use of that domain name.
Further, intentionally trying to divert Internet users to alternative sites is evidence of bad faith. The practice of “typosquatting”, and further, diverting traffic to third party sites is evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with another’s marks as to the source of the website, which is a violation of Policy ¶4(b)(iv). Texas Health submits that Respondent registered the domain names at issue solely for the purpose of luring the unwary internet user, who mistakenly mistypes Texas Health’s domain name “TEXASHEALTH.ORG”. Texas Health submits that Respondent’s selection, registration and use of the domain names at issue was well thought out, intentional, and is per se bad faith registration and use according to Policy 4(b)(iii). When Texas Health’s consumers and potential customers seek to find information on Texas Health, and enter the domain names at issue, the consumer is instead brought to Respondent’s websites. Texas Health submits that such actions by Respondent were well thought out, and intentionally orchestrated in order to increase traffic to Respondent’s websites – all at the expense of Texas Health, its Texas Health Marks, and its goodwill. Such conduct clearly evidences that the domain names at issue were registered and are being used in bad faith.
In addition, upon information and belief, Respondent was on notice as to the existence of Complainant and its Texas Health Marks, because Complainant registered its legitimate “TexasHealth.org” domain name over two decades ago on September 7, 1997. Actual or constructive knowledge of a commonly known mark at the time of registration is evidence of bad faith.15 Given the nature of the domain names at issue, it is evident that Respondent had actual knowledge of Complainant’s Texas Health Marks and principal website, “TexasHealth.org”.
Numerous Panels have found bad faith when the facts suggest that the Respondent knew, or at least should have known, of a Complainant’s trademark prior to registering the domain names. Complainant submits that this is precisely the case here. Texas Health has been in existence since 1997, over 20 years before Respondent registered the domain names at issue. Upon information and belief, at the time Respondent registered the domain names at issue, a search of the Internet would have revealed numerous hits and information concerning Texas Health, its business and its Texas Health Marks. As previous Panels have recognized, continuous and exclusive use of a well-known mark by a Complainant, coupled with the investment of substantial sums of money in promoting the mark over time, creates a situation where Respondent should have been aware of the marks and is deemed to have constructive knowledge of those marks. Since its inception, Texas Health has promoted the Texas Health Marks and has invested substantial sums of money in connection with promoting its services under the Texas Health Marks. Respondent’s selection, use, and registration of the Texas Health Typo-Squatted Domain Names in light of its actual and/or constructive knowledge of Texas Health and the Texas Health Marks, are interpreted as bad faith.
In addition, intentionally trying to divert Internet users to alternative sites is evidence of bad faith.18 Texas Health submits that Respondent registered the domain names at issue solely as a device to solicit Texas Health customers to Respondent’s website in an effort to damage Texas Health’s business. Texas Health submits that Respondent’s selection, registration and use of the domain names at issue – which incorporates Texas Health’s name and registered trademark - was well thought out, intentional, and is per se bad faith registration and use according to Policy 4(b)(iii).
When Texas Health’s consumers and potential customers seek to find information on Texas Health, and enter the domain names at issue, the consumer is instead brought to Respondent’s website. Texas Health submits that such actions by Respondent were well thought out, and intentionally orchestrated in order to increase traffic to Respondent’s websites – all at the expense of Texas Health, its Texas Health Marks, and its goodwill. Such conduct clearly evidences that the domain names at issue were registered and are being used in bad faith.
Finally, Respondent has engaged in a pattern of registering domain names in order to prevent other trademark/service mark owners from reflecting their marks in corresponding domain names. Such conduct is also evidence of bad faith. See Policy 4(b)(ii). A search of WHOIS records shows that Respondent is the owner of - at least - additional domain names. These domain names are typo-squatted varieties of names belonging to another healthcare provider – Mayo Clinic.
These domain names registered by Respondent deprive this particular trademark owner – Mayo Clinic - from reflecting its marks in domain names. Clearly, Respondent has engaged in a pattern of registering trademark-related domain names in bad faith and such conduct is further evidence of Respondent’s registration and use of the domain name at issue in bad faith.
For these reasons, Texas Health submits that the third element required under Rule 3 of the ICANN Rules (and Policy ¶4(a)(iii)) has been met.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights to the TEXAS HEALTH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,921,474 registered Feb. 22, 2011). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant has demonstrated sufficient rights to its mark.
Complainant claims Respondent’s <texashealthh.org>, <ttexashealth.org>, <texashealh.org>, <texshealth.org>, and <teaxshealth.org> domain names are confusingly similar to its TEXAS HEALTH mark because each of them consists entirely of a slight misspelling of the mark plus the “.org” gTLD. Domain names consisting of slight misspellings of a mark are not considered distinctive from the mark for purposes of Policy ¶4(a)(i). They are confusingly similar. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (“Adding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) (finding confusing similarity while Respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in crafting the <reatilmenot.com> domain name.). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. Respondent either doubles the first or last letter in the TEXAS HEALTH mark (<texashealthh.org> and <ttexashealth.org>), omits a single letter from the mark (<texashealh.org>, <texshealth.org>), or transposes two letters in the mark (<teaxshealth.org>). The differences are truly slight. Respondent’s domain names are confusingly similar to Complainant’s TEXAS HEALTH mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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”).
Complainant claims Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the domain names. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record lists the registrant for all the domain names at issue as “Johnny Leed.” There is no obvious relationship to the disputed domain names. Respondent is not authorized to use Complainant’s TEXAS HEALTH mark. The Panel must conclude Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Respondent uses the domain names to redirect to dynamic parking pages containing third-party, competing links. This does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). Using a domain name to ultimately link to a complainant’s competitors means a respondent does not have rights or legitimate interests under Policy ¶¶4(c)(i) or (iii). See 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). Respondent’s domain names resolve to dynamic parking pages with third party links. Respondent presumably derives click through revenue from such dynamic parking pages. Respondent’s use of the domain names at issue does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Complainant claims Respondent is not using the <texashealh.org> domain name to make a bona fide offering of goods or services, or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). Respondent uses the <texashealh.org> domain name to surreptitiously distribute malware, which does not constitute a bona fide offering of goods or services, or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”). The Panel must conclude Respondent is not using the <texashealh.org> domain name in connection with a bona fide offering of goods and services, or legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in a bad faith pattern of registering domain names in order to prevent other trademark/service mark owners from reflecting their marks in corresponding domain names and this would constitute a violation of Policy ¶4(b)(ii). This section provides: “[Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct…” However, Complainant owns numerous domain name registrations for TEXASHEALTH.ORG and TEXASHEALTHRESOURCES.COM. Complainant owns TexasHealth.org. Complainant can (and does) reflect its mark in a plethora of domain names. This Panel will not find Respondent has engaged in a pattern of registering domain names in bad faith under Policy ¶4(b)(ii).
Complainant claims Respondent disrupts Complainant’s business and gains commercially in bad faith from the registration and use of the disputed domain names. Using a domain name to redirect to a dynamic parking page of pay-per-click hyperlinks constitutes finding bad faith under Policy ¶¶4(b)(iii) and 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶4(b)(iii).”); see also 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.”). The snapshots provided confirm Complainant’s claim. Respondent’s use of the domain names constitutes bad faith under Policy ¶¶4(b)(iii) and 4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the TEXAS HEALTH mark prior to registering the domain names at issue. Complainant has been in existence since 1997, over 20 years before Respondent registered the domain names at issue. Respondent seems to have a tendency to register health related domain names, given Respondent’s registration of these domain names and the Mayo Clinic domains. Respondent’s actual knowledge of Complainant’s marks seems evident even though Respondent is in China. Respondent had actual knowledge of Complainant’s rights to the TEXAS HEALTH mark before Complainant’s registration of the domain names, and registered the domain names in bad faith.
Complainant claims Respondent’s registration and use of the <texashealh.org> domain name is in bad faith under Policy ¶¶4(b)(iii) and 4(b)(iv). Attempting to install malware through domain names demonstrates bad faith under Policy ¶4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶4(b)(iv)). All of Respondent’s actions disrupt Complainant’s business presumably for Respondent’s commercial gain. Respondent’s distribution of malware demonstrates constitutes bad faith under Policy ¶¶4(b)(iii) and/or 4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <texashealthh.org>, <ttexashealth.org>, <texashealh.org>, <texshealth.org>, and <teaxshealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 29, 2018
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