The Trustees of the University of Pennsylvania and its wholly-owned
operating unit, Penn Medicine v. Ryan Gray
Claim Number: FA2106001950562
Complainant is The Trustees of the University of Pennsylvania and its wholly-owned operating unit, Penn Medicine (“Complainant”), represented by W. Drew Kastner of Schnader Harrison Segal & Lewis, LLP, Pennsylvania, USA. Respondent is Ryan Gray (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mypennmedicine.me>, registered with Porkbun LLC.
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 June 10, 2021; the Forum received payment on June 10, 2021.
On June 11, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <mypennmedicine.me> domain name is registered with Porkbun LLC and that Respondent is the current registrant of the name. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 June 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 2021 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@mypennmedicine.me. Also on June 17, 2021, 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 July 13, 2021, 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 name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Panel notes that there are two Complainants in this matter: The Trustees of the University of Pennsylvania and Penn Medicine. Penn Medicine is the wholly-owned operating unit of The Trustee of the University of Pennsylvania.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it treats them all as a single entity in this proceeding. Throughout the Decision, the Complainants will be collectively referred to as “Complainant.”
A. Complainant
i) Complainant has rights in the PENN MEDICINE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,143,894, registered Mar. 17, 1998). Complainant also has common law rights in the MYPENNMEDICINE mark based upon use of the mark in connection with its electronic health portal dating back to 2008. The disputed domain name is confusingly similar to Complainant’s registered PENN MEDICINE mark and identical to Complainant’s MYPENNMEDICINE mark since it incorporates the PENN MEDICINE mark as its primary part.
ii) Respondent lacks rights and legitimate interests in the disputed domain name as Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent passes off as Complainant in order to phish for consumers’ information.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent passes off as Complainant on the website in order to phish for personal information from Complainant’s patients, including access credentials and protected health information.
B. Respondent
Respondent did not submit a response to this proceeding.
1. The disputed domain name was registered on September 3, 2020.
2. Complainant has established rights in the PENN MEDICINE mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,143,894, registered Mar. 17, 1998).
3. The disputed domain name resolves to a landing webpage on which Complainant’s MYPENNMEDICINE logo appears over forty times and Complainant’s electronic health portal is referred to extensively.
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”).
Complainant claims rights in the PENN MEDICINE mark through its registration with the USPTO (e.g., Reg. No. 2,143,894, registered Mar. 17, 1998). Registration of a mark with a national trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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”).”). Therefore, the Panel finds Complainant has rights in the PENN MEDICINE mark under Policy ¶ 4(a)(i).
Complainant also asserts rights in the MYPENNMEDICINE mark based upon common law rights. Under Policy ¶ 4(a)(i), a complainant is not required to own a registered trademark prior to the registration of the disputed domain name if the complainant can establish common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (“Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). Therefore, the Panel agrees that Complainant need not provide evidence of trademark registration to show rights in the MYPENNMEDICINE mark.
Complainant claims common law rights in the MYPENNMEDICINE mark based on its use of the mark in connection with its electronic health portal dating back to 2008. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Complainant provides a copy of the WHOIS report for the <mypennmedicine.com> domain as evidence for its registration of the domain name bearing the MYPENNMEDICINE mark on March 14, 2008. Thus, the Panel finds that Complainant has sufficiently established common law rights in the MYPENNMEDICINE mark.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s registered PENN MEDICINE mark and identical to Complainant’s MYPENNMEDICINE mark. The disputed domain name is confusingly similar to Complainant’s registered PENN MEDICINE mark because the domain name incorporates the PENN MEDICINE mark as its primary part. When a trademark is incorporated within a domain name, adding other terms does not negate confusing similarity. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s PENN MEDICINE and MYPENNMEDICINE marks 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 does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent passes off as Complainant in order to phish for consumers’ information. Use of a disputed domain name to redirect consumers to a site where a respondent passes off by using the complainant’s mark and phishes for consumers’ information does not qualify as a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot showing the disputed domain name resolves to a landing webpage on which Complainant’s MYPENNMEDICINE logo appears over forty times and Complainant’s electronic health portal is referred to extensively. Complainant contends that this constitutes an attempt to pass off and deceive Complainant’s patients. Therefore, the Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(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 name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent passes off as Complainant on the website in order to phish for personal information from Complainant’s patients, including access credentials or protected health information. Passing off as complainant in an attempt to phish for personal from complainant’s customers can be evidence of bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant provides screenshots of Respondent’s website where Respondent wrongfully declares to be the “Official Login to www.myPennMedicine....” Complainant contends that Complainant’s patients could be misled into providing their personal information. Complainant also asserts that Respondent purposefully included valid information throughout the website, such as contact phone numbers for the Penn Memory Center, to give off the appearance of legitimacy. Respondent also provides a disclaimer, but only at the very end of the website, after numerous other instances referring to Respondent’s domain as the “official login” and using Complainant’s marks. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mypennmedicine.me> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 22, 2021
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