Texas Health Resources v. kang nam jong / N/A
Claim Number: FA1808001799863
Complainant is Texas Health Resources (“Complainant”), represented by Kay Lyn Schwartz of Foley & Lardner LLP, Texas, USA. Respondent is kang nam jong / N/A (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 7, 2018.
On September 12, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@texxashealth.org, postmaster@texashealyh.org, postmaster@texashesalth.org, postmaster@yexashealth.org, postmaster@rtexashealth.org. Also on September 13, 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 October 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Texas Health Resources, operates a faith-based nonprofit health system. Complainant has rights in the TEXAS HEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office ("USPTO”) (e.g., Reg. No. 3,921,474 registered Feb. 22, 2011). See Compl. Ex. B. Respondent’s <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names are confusingly similar to Complainant’s mark because Respondent includes the entire TEXAS HEALTH mark in the domain names, adds or changes letters (adds “x,” replaces “t” with “y” in “heatlh,” adds s,” replaces “t” with “y” in “Texas,” or adds “r” respectively), and adds the gTLD “.org.”
ii) Respondent lacks rights and legitimate interests in the <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names because Respondent is not commonly known by the disputed domain names and is not authorized or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users to its own website, which features advertising links.
iii) Respondent registered and uses the<texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name’s website. Respondent also engages in typosquatting. Further, Respondent had actual and/or constructive knowledge of Complainant’s rights in the TEXAS HEALTH mark prior to registering the disputed domain names.
B. Respondent
Respondent did not submit a response.
1. The <texxashealth.org>, <texashealyh.org>, <yexashealth.org>, and <rtexashealth.org> domain names were registered on June 27, 2017, and the <texashesalth.org> domain name was registered on July 19, 2017.
2. Complainant has established rights in the TEXAS HEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office ("USPTO”) (e.g., Reg. No. 3,921,474 registered Feb. 22, 2011).
3. The webpages associated with the disputed domain names feature healthcare related links.
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 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 has rights in the TEXAS HEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office ("USPTO”). Registration with the USPTO generally establishes a Complainant’s rights in a mark for purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant provides a copy of its registration with the USPTO (e.g., Reg. No. 3,921,474 registered Feb. 22, 2011). See Compl. Ex. B. Therefore, the Panel concludes that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Further, Complainant argues Respondent’s <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names are confusingly similar to Complainant’s mark because Respondent includes the entire TEXAS HEALTH mark in the domain names, adds or changes letters, and adds the gTLD “.org.” The addition and substitution of single letters may be insufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the letter ‘l’ to create a common misspelling of the word ‘bank’); see also Chegg Inc. v. Company CEO / Qulity Programming, FA 1610061 (Forum Apr. 20, 2015) (finding confusing similarity under Policy ¶ 4(a)(i) whereas “Respondent’s <chwgg.com> domain name is a simple misspelling of Complainant’s CHEGG.COM mark.”). Additionally, the addition of a TLD is irrelevant to Policy ¶ 4(a)(i) analysis. See AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Here, Respondent incorporates the TEXAS HEALTH mark in all of the domain names and either adds one letter (“x,” “s,” or “r”) in the <texxashealth.org>, <texashesalth.org>, and <rtexashealth.org> domain names, or substitutes the letter “t” for a “y” in the <yexashealth.org> and <texashealyh.org> domain names. Additionally, Respondent adds the gTLD “.org” to all of the domain names. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s TEXAS HEALTH mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that 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 does have 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 argues that Respondent lacks rights and legitimate interests in the <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names. Specifically, Complainant claims Respondent is not authorized or permitted to use Complainant’s TEXAS HEALTH mark and is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information may be used to identify the respondent per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization from complainant to use its marks may be further evidence that a respondent is not commonly known by a disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The Panel notes the WHOIS of record identifies the Respondent as “kang nam jong / N/A,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way. Accordingly, the Panel finds that the Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii).
Further, Complainant argues Respondent fails to use the <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names for a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Specifically, Complainant claims Respondent uses the disputed domain names to divert internet users to websites that feature competing advertising links. Use of a confusingly similar domain name to host competing advertisements may not be considered a bona fide offering under Policy ¶ 4(c)(i) or a legitimate or fair use under Policy ¶ 4(c)(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 provides screenshots of the webpages associated with the disputed domain names, all of which feature healthcare related links. See Compl. Ex. F. Complainant claims these links lead to webpages for third-party billings, appointments, and records services. Id. Therefore, the Panel determines that Respondent fails to use the disputed domain names for a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues Respondent registered and uses the <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names in bad faith. Specifically, Complainant claims Respondent uses the domain names to disrupt Complainant’s business and attract, for commercial gain, users to Respondent’s webpages. Use of a confusingly similar domain name to host competing advertising links may evince bad faith under Policy ¶¶ 4(b)(iii) and (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 Panel recalls that Complainant provides screenshots of the webpages associated with the disputed domain names, all of which feature healthcare related links and that Complainant claims these links lead to webpages for third-party billings, appointments, and records services. See Comp. Ex. F. Complainant asserts that Respondent likely receives click-through fees when users click on the links. Id. Therefore, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Moreover, Complainant asserts Respondent engages in typosquatting. Engaging in typosquatting may constitute bad faith per se under 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). The Panel notes that Complainant asserts all of the domain names include the TEXAS HEALTH mark in its entirety with one addition or substitution of a letter. Therefore, the Panel finds that Respondent has engaged in typosquatting, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues Respondent had actual and/or constructive knowledge of Complainant’s rights in the TEXAS HEALTH mark prior to registration of the <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names. The Panel notes that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, Complainant provides the WHOIS record for its own domain name <texashealth.org>, showing that Complainant has owned the domain for over twenty years. See Compl. Ex. C. Complainant also claims that at the time of Respondent’s registration, an Internet search of “texas health” would have returned numerous hits pertaining to Complainant’s business, but does not provide evidence for this contention. Furthermore, Complainant claims it has invested substantial sums toward advertising its business, but again provides no evidence. Nevertheless, the Panel infers, due to the manner of use of the disputed domain names by Respondent that Respondent had actual knowledge of Complainant’s rights in the TEXAS HEALTH mark at the time Respondent registered the disputed domain names, thereby supporting a finding of 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 <texxashealth.org>, <texashealyh.org>, <texashesalth.org>, <yexashealth.org>, and <rtexashealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: October 11, 2018
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