Texas Health Resources v Jiang Li
Claim Number: FA1808001799862
Complainant is Texas Health Resources (“Complainant”), represented by Jason R. Fulmer of Foley & Lardner LLP, Texas, USA. Respondent is Jiang Li (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <texasshealth.org>, <teashealth.org>, <texashalth.org>, <texsahealth.org>, and <txashealth.org>, registered with Bizcn.com, Inc.; and <texashelath.org> domain name, registered with Chengdu West Dimension Digital Technology 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 7, 2018.
On August 6, 2018, Bizcn.com, Inc. confirmed by e-mail to the Forum that the <texasshealth.org>, <teashealth.org>, <texashalth.org>, <texsahealth.org>, and <txashealth.org> domain names are registered with Bizcn.com, Inc. and that Respondent is the current registrant of the names. On August 3, 2018, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <texashelath.org> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Bizcn.com, Inc. and Chengdu West Dimension Digital Technology Co., Ltd. have verified that Respondent is bound by the Bizcn.com, Inc. and Chengdu West Dimension Digital Technology Co., Ltd. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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@texasshealth.org, postmaster@teashealth.org, postmaster@texashalth.org, postmaster@texashelath.org, postmaster@texsahealth.org, and postmaster@txashealth.org. Also on August 20, 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 September 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
A. Complainant
Complainant asserts trademark rights in TEXAS HEALTH. Complainant submits that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because it has no trademark rights; is not known by the domain names; and the domain names have not been used for a bona fide purpose.
Complainant alleges that Respondent registered the disputed domain names in bad faith having targeted Complainant and then used the domain names in bad faith by redirecting Internet users to services unrelated to those offered by Complainant under the trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides healthcare services by reference to the trademark TEXAS HEALTH;
2. Complainant is the owner of, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 3,921,474, registered February 22, 2011 for the trademark TEXAS HEALTH & Design;
3. the disputed domain names were registered at various times in 2017 and resolve to webpages carrying links to various services offered in competition with those offered by Complainant under the trademark; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating its trademark.
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."
Preliminary Issue 1: Multiple Respondents
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” In these proceedings, all but one of the disputed domain names was registered to Jiang Li; the domain name <texashelath.org> was registered to jiang li.[i] The Panel is empowered to consider evidence that the domain names are commonly controlled. The Panel finds that the lack of initial capitalization of the name of the registrant in one case is trivial and observes that in all cases the registrant (a) is located in Chengdu, China and (b) has given the same contact email address. Accordingly, the Panel finds that the disputed domain names are to be treated as all owned by Respondent and so the Complaint can proceed against all of the nominated domain names.
Preliminary Issue 2: Language of Proceedings
The Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. The Panel has discretion under Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the case. Complainant alleges that Respondent is proficient in English and so the proceeding should be conducted in English based on facts that the WHOIS data for the disputed domain names is in English and the resolving websites are in English. However, the Panel is more influenced by the claim that the domain names are typosquatted iterations of Complainant’s trademark. For reasons which later follow, the Panel accepts that claim. It follows that Respondent must have an understanding of the two words which comprise the trademark which in turn demonstrates a proficiency in English. The Panel decides that the proceedings should be conducted in English.
Primary Issues
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.[ii]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[iii] The Panel notes Complainant’s USPTO trademark registration for TEXAS HEALH & Design. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”)[iv] asks at paragraph 1.10: How are trademark [registrations] with design elements or disclaimed text treated in assessing identity or confusing similarity? The consensus answer is that:
“Panel assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. … However where design elements comprise the dominant portion of the relevant mark such that they effectively overtake the textual elements in prominence, … , panels may find that the complainant’s trademark registration is insufficient by itself to support standing under the UDRP.”
The design element of the Complainant’s registered trademark is an ornamental device but the dominant feature of the mark is the expression TEXAS HEALTH and so the Panel finds that the composite mark can be treated as equivalent to a word mark registration. Further, for the purposes of comparison it is agreed that the non-distinctive gTLD, “.org”, can be disregarded[v]. The Panel finds the domain names are all confusingly similar to the trademark since they are obvious misspellings of the trademark[vi].
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vii]
The publicly available WhoIs information for the registrant in each case does not provide any evidence that Respondent might be commonly known by any of the domain names. Complainant states that there is no association between the parties. There is no evidence that Respondent has any trademark rights. The disputed domain names resolve to websites with various hyperlinks redirecting Internet users to services such as “Medical Billing Services” and “Hospital Billing System” that directly compete with Complainant’s business under the trademark. Such use does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use and so a prima facie case has been made out[viii].
The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
The Panel finds registration and use in bad faith under paragraph 4(b)(iv) of the Policy. The Panel has already found the disputed domain names confusingly similar to the trademark. Confusion as to the source, sponsorship, affiliation, or endorsement of the domain names is more likely than not. The Panel also finds that Respondent’s likely intention is commercial gain in one form or another, probably by way of pay-per-click referral fees.
The Panel finds that Complainant has satisfied the third and final element of the Policy[ix].
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <texasshealth.org>, <teashealth.org>, <texashalth.org>, <texashelath.org>, <texsahealth.org>, and <txashealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: September 14, 2018
[i] The difference being that this one registration does not use initial capital letters for the personal name of the holder.
[ii] 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.”).
[iii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”; see also, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003).
[iv] Arbitrations under the Policy are offered not just by the Forum by the other providers, including the World Intellectual Property Office (“WIPO”). In common with the Forum, WIPO panels seek to ensure that the Policy operates in a fair and predictable manner and so, in its present third iteration, WIPO publishes its Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”) which summarizes consensus panel views on a range of substantive and procedural issues.
[v] See, for example, 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) finding that the <nexcare.org> domain name incorporated complainant’s NEXCARE mark and merely added “.org.” which did not distinguish the disputed domain name from Complainant’s mark.
[vi] See, for example, Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (“Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also RetailMeNot, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1625879 (Forum Aug. 6, 2015) finding confusing similarity where respondent merely transposed the letters “a” and “t” in the RETAILMENOT mark in the disputed <reatilmenot.com> domain name.
[vii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[viii] See, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
[ix] See, for example, American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”).
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