Hackensack Meridian Health, Inc. v. Zhichao Yang
Claim Number: FA2112001978872
Complainant is Hackensack Meridian Health, Inc. (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hackensackmeridiahealth.org> and <hakensackmeridianhealth.org>, registered with Moniker Online Services 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.
James Bridgeman SC, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 30, 2021; the Forum received payment on December 30, 2021.
On January 10, 2022, Moniker Online Services LLC confirmed by e-mail to the Forum that the <hackensackmeridiahealth.org> and <hakensackmeridianhealth.org> domain names are registered with Moniker Online Services LLC and that Respondent is the current registrant of the names. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 January 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2022 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@hackensackmeridiahealth.org, postmaster@hakensackmeridianhealth.org. Also on January 17, 2022, 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 February 14, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain names be transferred from Respondent to Complainant.
Complainant claims rights in the MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH trademarks and service marks, and other trademarks and service marks containing the elements “HACKENSACK MERIDIAN “or “HACKENSACK” in various forms, such as HACKENSACK UNIVERSITY MEDICAL CENTER through its ownership and use of its portfolio of trademark and service mark registrations described below in its healthcare business and at common law by extensive use.
Complainant further claims use of the MERIDIAN HEALTH trademark since 1997, and HACKENSACK MERIDIAN HEALTH since as early as 2016. It owns and uses the <hackensackmeridianhealth.org> domain name which was registered on October 19, 2014.
Complainant submits that the disputed domain names are nearly identical, and therefore confusingly similar to the MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH marks and contends that accordingly, the disputed domain names are likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the disputed domain names.
Complainant specifically submits that each of the disputed domain names contains Complainant’s identical trademark HACKENSACK MERIDIAN HEALTH, with just slight misspellings, namely the omission of the first letter ‘c’ in ‘Hackensack” (in hakensackmeridianhealth.org) and the omission of the letter ‘n’ in “Meridian,” (in hackensackmeridiahealth.org).
Complainant contends that the incorporation of its trademarks in the disputed domain names in this manner is an act of typosquatting. See Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN MARCUS mark and was a classic example of typosquatting, which was evidence that the domain name was confusingly similar to the mark).
Complainant submits that the addition of the generic Top-Level Domain (“gTLD”) extension <.org> cannot distinguish the disputed domain names from Complainant’s marks. See 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).
Complainant also argues that Internet users are therefore likely to be confused by the similarities between the disputed domain names and Complainant’s official domain name, <hackensackmeridianhealth.org>, and are highly likely to believe that the disputed domain names are affiliated with Complainant’s business and its official website.
Complainant next submits that Respondent has no rights or legitimate interests in the disputed domain names, arguing that Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its registered trademarks in connection with the goods and services named in its registration certificates.
Complainant further contends that its MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH marks have acquired secondary meaning through Complainant’s substantial, continuous, and exclusive use of the marks in connection with Complainant’s goods and services.
Complainant asserts that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s marks or any domain names that incorporate its marks. See Lockheed Martin Corporation v. Zhichao Yang, FA1701001714221 (Forum Feb. 28, 2017) (“Lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name.”).
Complainant adds that upon information and belief, Respondent is not commonly known by the disputed domain names, either as a business, individual or other organization. See Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant refers to the WhoIs information provided in an annex to the Complaint and submits that Respondent registered the disputed domain names several years after Complainant began using its HACKENSACK MERIDIAN HEALTH mark and <hackensackmeridianhealth.org> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests in a disputed domain name where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant asserts that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Nor is Respondent making legitimate, noncommercial fair use of the disputed domain names but instead, Respondent has been using each of the disputed domain names to resolve to a website that provides various sponsored clickthrough links, which direct Internet users to third-party commercial websites.
In this regard Complainant refers to screen captures of the web pages to which the disputed domain names resolve, which have been annexed to the Complaint.
Complainant submits that the screen captures show Respondent’s use of the disputed domain names to display click-through links or to redirect users to sponsored websites and contends that such use does not qualify as a bona fide offering of goods and services, and it being presumed that Respondent received compensation for each misdirected user. See Victoria’s Secret Stores Brand Management, Inc. v. Wireless Marketing Enterprises, LLC, FA0805001191372 (Forum July 2, 2008) (inferring that the use of a domain name to display links to third-party websites which earn click-through fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy).
Complainant next alleges that the disputed domain names were registered and are being used in bad faith.
Complainant re-asserts that the screen captures of Respondent’s web pages to which the disputed domain names resolve show that Respondent is using the disputed domain names to redirect Internet users to commercial websites where Respondent provides various sponsored click-through links that direct to third-party commercial websites. Accordingly, Internet users looking for information about Complainant and its goods and services may find these commercial sites not authorized or sponsored by Complainant. Thus, Respondent has registered the disputed domain names with the intent to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites, thereby diverting Internet traffic from Complainant’s website to Respondent’s websites for commercial gain. See Policy ¶ 4(b)(iv).
Complainant submits it is well established that use of a domain name in issue that incorporates a complainant’s mark or a misspelling of a complainant’s mark to resolve to a web page displaying various third-party commercial links is recognized under the Policy as evidence of bad faith registration and use. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy 4(b)(iv).”).
Complainant submits that it is presumed that Respondent commercially benefits from the use of such third-party links through the accrual of click-through fees, and submits that this constitutes additional evidence of Respondent’s bad faith registration and use of the disputed domain names. See Star Management Services, LLC v. Foot Focus Specialities, FA0708001055130 (Forum Oct. 15, 2007) (“Respondent’s previous use of the disputed domain name to operate a website to display hyperlinks to various third-party websites was for Respondent’s own commercial benefit through the accrual of click-through fees. The Panel finds that the <footfocus.com> domain name is capable of creating confusion as to Complainant’s source, sponsorship, affiliation or endorsement with the disputed domain name and corresponding website, and therefore finds bad faith registration and use under Policy ¶ 4(b)(iv).”).
Complainant adds that Respondent has shown a pattern of registering domain names incorporating Complainant’s marks and submits that a “pattern of conduct” may involve multiple domain names directed against a single complainant. See Gruner + Jahr Printing & Publishing Co., et al. v. Savior Baby, WIPO Case No. D2000-1741; Blue Cross and Blue Shield Association v. Yanli Li / Yanli, FA1708001742918 (Forum Sept. 8, 2017) (“A bad faith pattern of conduct may be found where the respondent registers many domain names unrelated to its business, infringing on famous marks and websites.”).
For example, panels have found a pattern of conduct constituting bad faith from the registration of two (2) or three (3) domain names incorporating a complainant’s mark. Caterpillar Inc. v. Wis INC, FA1912001875139 (Forum Jan. 14, 2020) (“The Respondent has registered two domain names targeting the Complainant and has been the subject of two unconnected adverse decisions under the UDRP suggesting a pattern of cybersquatting activity.”); Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / Zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant submits that Respondent has registered at least six (6) domain names incorporating Complainant’s marks, which suggests a pattern of conduct and provides clear evidence of bad faith registration.
Complainant also refers to pending UDRP Complaints Claim Nos. FA2112001978875 (hackensackmerridianhealth.org and hackensackmetidianhealth.org), FA2112001978740 (hackansackmeridianhealth.org), and FA2112001978889 (hackenssackmeridianhealth.org), where Respondent has been identified as the registrant.
Complainant adds that Respondent also has a pattern of registering other well-known, third-party trademarks, thereby further demonstrating bad faith.
A search of the Forum’s Domain Name Dispute Proceedings and Decisions online database identified 160 cases in which Zhichao Yang is the listed Respondent. See e.g., State Farm Mutual Automobile Insurance Company v. Zhichao Yang, FA1209001461251 (Forum Oct. 16, 2012); Capital One Financial Corp. v. Zhichao Yang, FA1211001473336 (Forum Jan. 9, 2013) (ordering transfer of the <wwwstatefarms.com> domain); (ordering transfer of, inter alia, <capialonecreditcard.com>, <capitalonecrad.com>, <capitlonecard.com>); ALO, LLC v. Zhichao Yang, FA2006001902202 (Forum July 31, 2020) (ordering transfer of <aloyyoga.com>). Accordingly, Respondent has demonstrated a clear pattern of bad faith conduct.
Complainant then submits that because Respondent has owned the disputed domain names for what appears to be more than two years, Respondent’s failure to use the disputed domain names for any legitimate purpose during that time frame shows its bad faith registration and use of same. Various UDRP panels have found that a failure to attempt to develop or use a domain name, which contains an established trademark, is further evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA893427 (Forum Feb. 28, 2007) (finding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Lockheed Martin Corporation v. toyosei maruyama, FA1505001620489 (Forum July 7, 2015) (“Generally speaking, failing to make an active use of a domain name to shows bad faith in use and registration Policy ¶ 4(a)(iii).”).
In conclusion, Complainant submits that Respondent’s the use of the typosquatted disputed domain names indicates, by its very nature, bad faith registration because typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii); see also K.R. USA, INC. v. SO DOMAINS, FA 180624 (Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant’s THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
Complainant ends by alleging that Respondent’s registration of the disputed domain names also violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d), et seq.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a provider of health services under HACKENSACK MERIDIAN HEALTH and MERIDIAN HEALTH service marks. for which it owns a portfolio of registrations including the following:
· United States of America registered service mark MERIDIAN HEALTH, registration number 2,188,836, registered on the Principal Register on September 15, 1998, for services in international class 42, pursuant to an application filed on December 18, 1996;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH registration number 5,441,318, registered on the Principal Register on April 10, 2018 for services in international class 41, pursuant to an application filed on October 2, 2017;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH registration number 5,716,169, registered on the Principal Register on April 2, 2019 for services in international class 42, pursuant to an application filed on October 2, 2017;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH registration number 5,441,320 registered on the Principal Register on April 10, 2018, for services in international class 44, pursuant to an application filed on April 10, 2018;
· United States of America registered service mark HACKENSACK MERIDIAN HEALTH registration number 5,421,430 registered on the Principal Register on March 13, 2018, for goods in international class 16, pursuant to an application filed on October 2, 2017.
Complainant has an established Internet presence, hosting its official website at <hackensackmeridianhealth.org> was registered on October 9, 2014 and resolves to its official website.
The record shows that the disputed domain name; and the disputed domain name <hackensackmeridiahealth.org> was registered on September 23, 2019.
The disputed domain names <hackensackmeridiahealth.org> and <hakensackmeridianhealth.org>, were registered on September 23, 2019, and September 19, 2019, respectively
Each of the disputed domain names resolve to otherwise inactive web pages that contain links to third-party websites from which, on the balance of probabilities Respondent is generating pay-per-click revenue.
There is no information available about Respondent, except for that provided in the Compliant, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name.
The Registrar has provided the name and details of Respondent, who availed of a privacy service to register each of the disputed domain names, and has confirmed that Respondent is the registrant of each of the disputed domain names.
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 has provided convincing evidence that it has rights in the MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH mark established by its ownership of the trademark and service mark registrations described above and the extensive continuous use of the mark by Complainant in its healthcare business.
Complainant’s MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH marks are clearly recognizable within each of the disputed domain names.
The letter “n” is omitted in the word “meridian” within the disputed domain name <hackensackmeridiahealth.org> and the letter “c” is omitted within the disputed domain name <hakensackmeridianhealth.org>.
Neither of these omissions distinguish either of the disputed domain names from Complainant’s marks.
These small differences are likely to go unnoticed by Internet users and for reasons given below this Panel finds that they were each specifically chosen and registered because they are confusingly similar.
In the context of this proceeding that gTLD extension <.org> would be considered by Internet users as a necessary technical requirement for a domain name and adds no distinguishing character to either of the domain names in issue.
This Panel finds therefore that each of the disputed domain names is confusingly similar to the MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH trademarks and service marks in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name alleging that:
· Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its registered trademarks in connection with the goods and services named in its registration certificates and its MERIDIAN HEALTH and HACKENSACK MERIDIAN HEALTH marks have acquired secondary meaning through Complainant’s substantial, continuous, and exclusive use of the marks in connection with Complainant’s goods and services;
· That Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s marks or any domain names incorporating the marks;
· upon information and belief, Respondent is not commonly known by the disputed domain names, either as a business, individual or other organization;
· Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services;
· the web pages to which the disputed domain names resolve, display click-through links or to redirect users to sponsored websites, as shown in the screen captures of the web pages annexed to the Complaint and such use does not qualify as a bona fide offering of goods and services;
· it may be presumed that Respondent receives compensation for each misdirected user;
· Respondent’s failure to use the disputed domain names to provide a bona fide offering of goods and services confirms that it does not have any rights or legitimate interests in the disputed domain names.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in a domain name the burden of production shifts to the respondent to prove the existence of such rights or interests.
Respondent has failed to discharge the burden of production and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name and that Complainant has satisfied the second element of the test in Policy ¶ 4(a)(ii).
The WhoIs records show that the disputed domain names <hackensackmeridiahealth.org> and <hakensackmeridianhealth.org>, were registered on September 23, 2019, and September 19, 2019, respectively and each is almost identical to Complainant’s HACKENSACK MERIDIAN HEALTH mark.
While the HACKENSACK MERIDIAN HEALTH mark contains two generic elements, the MERIDIAN element is distinctive and the combination of the distinctive and the descriptive “Hackensack” and “health” elements produces a very distinctive mark that references the geographical place name and the concept “health”.
The time-line for the registration of Complainant’s trademark registrations and registrations and the creation of the disputed domain names show that the registrations of the two disputed domain names post-date the accrual of Complainant’s trademark rights in HACKENSACK MERIDIAN HEALTH and MERIDIAN HEALTH marks.
It is implausible that when choosing and registering the two disputed domain names any registrant would have been unaware that they are each almost identical to Complainant’s mark and pre-existing domain name <hackensackmeridianhealth.org> and Complainant’s official website to which it resolves. The similarity of the disputed domain name to Complainant’s mark and its pre-existing domain name that it uses as the address of its official website are beyond coincidence.
Furthermore a comparison of the disputed domain names and Complainant’s mark leads to an inevitable conclusion that Respondent is engaged in typosquatting by omitting a single letter from Complainant’s HACKENSACK HEALTH mark to compose the disputed domain names in a manner likely to confuse Internet users.
On the balance of probabilities, this Panel finds that each of the disputed domain names was registered in bad faith in an act of typosquatting, in order to create confusion with Complainant’s mark, name and take advantage of Complainants goodwill.
This finding is supported by the uncontested evidence adduced in the annex to the Complaint which shows that each of the disputed domain names resolves to a web page with links to third party websites. On the balance of probabilities Respondent is using the disputed domain names to divert Internet traffic to generate pay-per-click revenue from these links. There is no other plausible reason as to why Respondent would arrange or allow the disputed domain names to resolve to a web location with third-party links and no other content.
This Panel finds therefore that Respondent is using each of the disputed domain names in bad faith because on the balance of probabilities, by using the disputed domain names, Respondent is intentionally attempting to confuse Internet users, in order attract, misdirect and divert Internet traffic to his web pages, for commercial gain, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of his web pages.
As this Panel has found that the disputed domain names were registered and are being used in bad faith, Complainant has succeeded in the third element of the test in 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 <hackensackmeridiahealth.org> and <hakensackmeridianhealth.org> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: February 15, 2022
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