Texas Health Resources v. Registrant
Claim Number: FA1808001799864
Complainant is Texas Health Resources (“Complainant”), represented by Kay Lyn Schwartz of Foley & Lardner LLP, Texas, USA. Respondent is Registrant (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tezashealth.org>, <texashhealth.org>, <texasheaalth.org>, <twxashealth.org>, <texasheallth.org>, <texashealtth.org>, <texasheakth.org>, <tecashealth.org>, <teexashealth.org>, <texasheealth.org>, <texaashealth.org>, <texadhealth.org>, <texasgealth.org>, <texashealrh.org>, <texashealtg.org>, <texashealtj.org>, <texasheslth.org>, <texashralth.org>, <texashwalth.org>, <texasjealth.org>, and <trxashealth.org>, registered with Xin Net Technology Corporation.
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 Aug 13, 2018, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <tezashealth.org>, <texashhealth.org>, <texasheaalth.org>, <twxashealth.org>, <texasheallth.org>, <texashealtth.org>, <texasheakth.org>, <tecashealth.org>, <teexashealth.org>, <texasheealth.org>, <texaashealth.org>, <texadhealth.org>, <texasgealth.org>, <texashealrh.org>, <texashealtg.org>, <texashealtj.org>, <texasheslth.org>, <texashralth.org>, <texashwalth.org>, <texasjealth.org>, and <trxashealth.org> domain names are registered with Xin Net Technology Corporation and that Respondent is the current registrant of the names. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 August 21, 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@tezashealth.org, postmaster@texashhealth.org, postmaster@texasheaalth.org, postmaster@twxashealth.org, postmaster@texasheallth.org, postmaster@texashealtth.org, postmaster@texasheakth.org, postmaster@tecashealth.org, postmaster@teexashealth.org, postmaster@texasheealth.org, postmaster@texaashealth.org, postmaster@texadhealth.org, postmaster@texasgealth.org, postmaster@texashealrh.org, postmaster@texashealtg.org, postmaster@texashealtj.org, postmaster@texasheslth.org, postmaster@texashralth.org, postmaster@texashwalth.org, postmaster@texasjealth.org, and postmaster@trxashealth.org.
Also on August 21, 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 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 is one of the largest faith-based nonprofit health systems in the United States. Complainant 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. Complainant has rights in the TEXAS HEALTH mark through 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 <tezashealth.org>, <texashhealth.org>, <texasheaalth.org>, <twxashealth.org>, <texasheallth.org>, <texashealtth.org>, <texasheakth.org>, <tecashealth.org>, <teexashealth.org>, <texasheealth.org>, <texaashealth.org>, <texadhealth.org>, <texasgealth.org>, <texashealrh.org>, <texashealtg.org>, <texashealtj.org>, <texasheslth.org>, <texashralth.org>, <texashwalth.org>, <texasjealth.org>, and <trxashealth.org> domain names are identical or confusingly similar to Complainant’s mark as they either add or substitute a letter in the mark while adding the “.org” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists the registrant as “Registrant” or other similar contact information. See Compl. Ex. E. Complainant also has not authorized, licensed, or otherwise permitted Respondent to use the mark for any purpose. Further, Respondent does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain names to host parked webpages displaying pay-per-click links to various services to compete with those offered by Complainant. See Compl. Ex. F.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s marks as to the source of the competing links displayed on the website. See Compl. Ex. F. Such use of the domain names disrupts Complainant’s legitimate business. Further, Respondent engages in typosquatting by transposing letters in Complainant’s mark or adding/omitting single letters in the TEXAS HEALTH mark. Additionally, given the longstanding use of the TEXAS HEALTH mark in commerce and the goodwill generated from the use, Respondent clearly had actual knowledge of Complainant’s mark prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Respondent registered all of the disputed domain names on September 10, 2017.
2. Complainant has established rights in the TEXAS HEALTH mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,921,474, registered Feb. 22, 2011).
3. The resolving web pages associated with the disputed domain names appear to display links such as “Medical Billing Services” and “Hospital Billing System.”
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: Language of Proceeding
Complainant has alleged that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is conversant in English based upon the fact that the WHOIS data that Respondent supplied is in English, and all characters supplied are English letters. Further, Respondent’s websites are all in the English language. See Compl. Ex. F.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 claims rights in the TEXAS HEALTH mark through its registration of the mark with the USPTO (e.g. Reg. No. 3,921,474, registered Feb. 22, 2011). See Compl. Ex. B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the TEXAS HEALTH mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s disputed domain names are identical or confusingly similar to Complainant’s mark as they each either add or substitute a letter in the mark while adding the “.org” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “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 OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”); see also 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). The Panel therefore finds that the disputed domain names are confusingly similar to the 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 contends that Respondent has no rights or legitimate interests in the infringing domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Registrant” (or similar contact information) as the registrant for the domain names. See Compl. Ex. E. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the TEXAS HEALTH mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent uses the disputed domain names to resolve to websites that contain various hyperlinks redirecting users to services that directly compete with Complainant, presumably to commercially benefit from pay-per-click fees. Using a domain name to offer links to services in direct competition with a complainant generally does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 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.”). Complainant provides screenshots of the resolving web pages associated with the domain names, which appear to display links such as “Medical Billing Services” and “Hospital Billing System.” See Compl. Ex. F. Accordingly, the Panel finds that Respondent uses the domain names to offer competing hyperlinks, failing to use the domain names in such a manner as to confer rights and legitimate interests in the domain names per Policy ¶¶ 4(c)(i) and/or (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 that Respondent registered and uses the disputed domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain names to commercially benefit by offering links to competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (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 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)”). As noted above, Complainant provides screenshots of the resolving webpages associated with the domain names, which appear to display links such as “Medical Billing Services” and “Hospital Billing System.” See Compl. Ex. F. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Moreover, Complainant contends that by adding or substituting a single letter in Complainant’s TEXAS HEALTH mark, Respondent engages in typosquatting. A finding of typosquatting can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). As the Panel agrees that Respondent’s changes to the TEXAS HEALTH mark constitute typosquatting, it uses this as further evidence of bad faith by Respondent.
Lastly, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the TEXAS HEALTH mark at the time of registering the disputed domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that given the longstanding use of the TEXAS HEALTH mark in commerce and the goodwill generated from the use, Respondent clearly had actual knowledge of Complainant’s mark prior to registering the infringing domain names. The Panel agrees with Complainant and infers, due to the fame of the Complainant's mark and the manner of use of the disputed domain names by Respondent that Respondent did have actual knowledge of Complainant’s mark, demonstrating 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 <tezashealth.org>, <texashhealth.org>, <texasheaalth.org>, <twxashealth.org>, <texasheallth.org>, <texashealtth.org>, <texasheakth.org>, <tecashealth.org>, <teexashealth.org>, <texasheealth.org>, <texaashealth.org>, <texadhealth.org>, <texasgealth.org>, <texashealrh.org>, <texashealtg.org>, <texashealtj.org>, <texasheslth.org>, <texashralth.org>, <texashwalth.org>, <texasjealth.org>, and <trxashealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 17, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page