DECISION

 

Texas Health Resources v. Methodist Hospitals of Dallas

Claim Number: FA1907001852814

 

PARTIES

Complainant is Texas Health Resources (“Complainant”), represented by Foley Gardere, Texas, USA.  Respondent is Methodist Hospitals of Dallas (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org>, and <texashealthmansfield.info>, registered with Network Solutions, LLC; Network Solutions, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 19, 2019; the Forum received payment on July 19, 2019.

 

On July 22, 2019, Network Solutions, LLC; Network Solutions, LLC confirmed by e-mail to the Forum that the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org>, <texashealthmansfield.info> domain names are registered with Network Solutions, LLC; Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC; Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC; Network Solutions, 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 July 26, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2019 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@texashealthmansfield.com, postmaster@texashealthmansfield.net, postmaster@texashealthmansfield.org, postmaster@texashealthmansfield.info.  Also on July 26, 2019, 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 August 16, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant operates a large, faith-based, nonprofit health system. 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 Amend. Compl. Ex. B. Respondent’s <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org> and <texashealthmansfield.info> domain names are confusingly similar, as Respondent merely adds the geographic term “mansfield” (a suburb of Dallas-Fort Worth) and either the “.com,” “.net,” “.org,” or “.info” generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark.

2.    Respondents has no rights or legitimate interests in the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org> and <texashealthmansfield.info> domain names, as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the disputed domain names to offer hyperlinks to third parties site that compete with Complainant.

3.    Finally, Respondent registered and used the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org> and <texashealthmansfield.info> domain names in bad faith, as Respondent is attempting to attract Internet users for commercial gain and to disrupt Complainant’s business. Additionally, Respondent has actual or constructive knowledge of Complainant’s right in its mark.

 

B.   Respondent

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org>, and <texashealthmansfield.info> domain names are confusingly similar to Complainant’s TEXAS HEALTH mark.

2.    Respondent does not have any rights or legitimate interests in the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org>, and <texashealthmansfield.info> domain names.

3.    Respondent registered or used the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org>, and <texashealthmansfield.info> domain names in bad faith.

 

DISCUSSION

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”).

 

Identical and/or Confusingly Similar

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 Amend. Compl. Ex. B. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the TEXAS HEALTH mark under Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org> and <texashealthmansfield.info> domain names are confusingly similar to Complainant’s mark, as Respondent merely adds the geographic term “mansfield” (a suburb of Dallas-Fort Worth) and the “.com,” “.net,” “.org,” and “.info” gTLD to Complainant’s fully incorporated mark. The addition of a geographic area and a gTLD to an otherwise recognizable mark may not be sufficient to distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds Respondent’s domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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 has no rights or legitimate interests in the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org> and <texashealthmansfield.info> domain names as Respondent is not commonly known by the disputed domain names nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018)

(“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Methodist Hospitals of Dallas/ Methodist Hospitals of Dallas” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name.  See Amend. Compl. Ex. D. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant argues Respondent fails to use the disputed domain names for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain names to offer hyperlinks to third-party sites that compete with Complainant. Using a disputed domain name to offer hyperlinks to third parties that compete with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii).”). Here, Complainant provides screen shots of the disputed domain name’s resolving webpages, all bearing a similar design presenting the user with various health and medical related hyperlinks. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and used the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org> and <texashealthmansfield.info> domain names in bad faith, as Respondent is attempting to attract Internet users for commercial gain and to disrupt Complainant’s business by offing hyperlinks to competing third parties. Registration and use of a disputed domain name to confuse the Internet user into believing an affiliation exists between respondent and complainant with offerings of hyperlinks to third parties that compete with complainant can be evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”). Here, Complainant provided screen shots of the disputed domain name’s resolving webpages, all bearing a similar design presenting the user with various health and medical related hyperlinks that compete with Complainant and presumably financially benefit Respondent. See Amend. Compl. Ex. E. Therefore, the Panel finds Respondent registered and used the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).

 

Complainant argues that Respondent had knowledge of Complainant’s rights in the TEXAS HEALTH mark at the time of registering the disputed domain names. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent operates in the same area of Texas, USA that Complainant operates. As such, the Panel determines whether Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <texashealthmansfield.com>, <texashealthmansfield.net>, <texashealthmansfield.org>, and <texashealthmansfield.info> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

August 28, 2019