DECISION

 

Hackensack Meridian Health, Inc. v. Quan Zhongjun / Juanita Co.

Claim Number: FA2308002059058

 

PARTIES

Complainant is Hackensack Meridian Health, Inc. ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Quan Zhongjun / Juanita Co. ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <hackensuckmeridianhealth.org>, <hickensackmeridianhealth.org>, <hackinsackmeridianhealth.org>, <hackonsackmeridianhealth.org> and <hackensackmiridianhealth.org>, registered with Cosmotown, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 25, 2023; Forum received payment on August 25, 2023.

 

On August 28, 2023, Cosmotown, Inc. confirmed by e-mail to Forum that the <hackensuckmeridianhealth.org>, <hickensackmeridianhealth.org>, <hackinsackmeridianhealth.org>, <hackonsackmeridianhealth.org>, and <hackensackmiridianhealth.org> domain names are registered with Cosmotown, Inc. and that Respondent is the current registrant of the names. Cosmotown, Inc. has verified that Respondent is bound by the Cosmotown, Inc. 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 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2023 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@hackensuckmeridianhealth.org, postmaster@hickensackmeridianhealth.org, postmaster@hackinsackmeridianhealth.org, postmaster@hackonsackmeridianhealth.org, postmaster@hackensackmiridianhealth.org. Also on September 1, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On September 22, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the HACKENSACK MERIDIAN HEALTH trademark and service mark established by its ownership of the portfolio of trademark and service mark registrations described below.

 

Furthermore Complainant claims rights in the mark established by extensive use in providing services as an integrated network of healthcare providers through an array of hospitals, ambulatory care centers, fitness and wellness centers, home health services, rehab centers, and skilled nursing centers and has grown to become the largest healthcare provider in New Jersey,

 

Complainat submits that the disputed domain names are nearly identical, and confusingly similar to Complainant's HACKENSACK MERIDIAN HEALTH trademark, as well as Complainant's official domain, <hackensackmeridianhealth.org>.

 

Complainant adds that the generic Top-Level Domain ("gTLD") extensions <.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 next alleges that Respondent has no rights or legitimate interests in respect of the domain names, arguing that Complainant's marks are not generic or descriptive terms in which Respondent might have an interest and 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 their respective registration certificates.

 

Complainant adds that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant's mark or any domain names incorporating the mark. See Lockheed Martin Corporation v. Zhichao Yang, FA 1714221 (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.").

 

The Registrar's response to Forum's Domain Name Dispute Verification Request, as shown in the record, confirms that Respondent is not commonly known by the disputed domain names either as a business, individual or other organization. See Policy 4(c)(ii); see also 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 submits that Respondent registered the disputed domain names nearly seven years after Complainant began using its HACKENSACK MERIDIAN HEALTH mark and <hackensackmeridianhealth.org> domain name. Charles Jourdan Holding AG v. AAIM, WIPO Case 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 further alleges 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. Rather, as shown in the screen captures exhibited in an annex to the Complaint, one of the disputed domain names resolves to Complainant's own website and the others have resolved to parked pages with sponsored, click-through links, redirected to third-party websites. 

 

Complainant argues that using a domain name to offer links to competitive or unrelated services generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use." See Rush University Medical Center v. Nazar Grushchak, FA 1768684 (Forum Feb. 20, 2018) (finding no legitimate interest in rush.health domain name and transferring domain name).

 

Further, Complainant submits that using a domain name to redirect users to a complainant's own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) ("The Panel finds that using Complainant's mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant's actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .").

 

In conclusion, Complainant argues that it appears that Respondent has chosen the disputed domain names to trade off the reputation and goodwill associated with Complainant's mark, to misleadingly divert Internet traffic from Complainant's website, and to prevent Complainant from owning the disputed domain names, and so Respondent clearly has no legitimate rights or interest in respect of the disputed domain names, in view of Complainant's prior rights in the mark and the facts and analysis set forth above.

 

Complainant next alleges that the disputed domain names were registered and are being used in bad faith as one of them resolves to Complainant's own website and the others resolve to parked pages with sponsored, click-through links, redirected to third-party websites.

 

Complainant submits that internet users looking for information about Complainant and its goods andservices may encounter the disputed domain names and be redirected to third-party commercial websites not authorized or sponsored by Complainant. Even those who eventually find their way to Complainant's website through Respondent's link thereto will first be diverted through Respondent's website over which Complainant has no control. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) ("The Panel finds that Respondent's registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant's own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).").

 

Thus, Respondent has registered the disputed domain names with the intent to attract and divert Internet users to the corresponding websites for its own benefit and commercial gain by creating a likelihood of confusion with Complainant's Marks. See Policy 4(b)(iv); Google LLC v. Nanci Nette / Name Management Group / Nette, Nanci, FA 1970614 (Forum Dec. 7, 2021) ("The Panel recalls Complainant's screenshots of the disputed domain names' resolving websites, which offered pay-per-click links and/or redirects to unrelated third-parties. See Amend. Compl. Ex. H. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).").

 

It may be presumed that Respondent commercially benefits from the use of such third-party links through the accrual of click-through fees provides additional evidence of Respondent's bad faith registration and use of the disputed domain names. See Star Management Services, LLC v. Foot Focus Specialities, FA 1055130 (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 submits that Respondent's failure to use the disputed domain names for any legitimate purpose shows its bad faith registration and use of the same. Numerous UDRP panels have found that a failure to attempt to develop or use a domain name which contains an established trademark is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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).

 

Complainant adds that Respondent registered and is using the disputed domain names in bad faith as evidenced by Respondent's actual knowledge of Complainant's mark at the time of registration, and actual knowledge of a complainant's mark prior to registration can support a finding that a respondent registered a domain name in bad faith." 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 further argues that Respondent knew of Complainant's marks as evidenced by (1) the widespread fame associated with Complainant's mark, (2) Respondent's use of typosquatted versions of Complainant's mark, and (3) the fact that one of the links Respondent included at the website resulting from the <HackensackMiridianHealth.org> disputed domain name redirects to Complainant's website. See McGuireWoods LLP v. Josef Sarshar, FA 2019546 (Forum Dec. 8, 2022) ("Respondent copied [complainant's mark] verbatim into the Domain Name except for an intentional misspelling of the mark, which in and of itself evidences familiarity with the mark. Registering a confusingly similar domain name with actual knowledge of a complainant's rights in its mark is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).").

 

Respondent has registered five (5) domain names incorporating Complainant's marks, which suggests a pattern of conduct and provides clear evidence of bad faith registration.. 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; Thompson & Company of Tampa, Inc. v. Andrew Luthi, FA 1440472 (Forum May 30, 2012) (finding bad faith from multiple registrations containing complainant's marks).

 

Complainant adds that Respondent also has a pattern of registering well-known, third-party trademarks and a search of Forum's Domain Name Dispute Proceedings and Decisions online database identified six (6) cases in which Quan Zhongjun is the listed Respondent, all of which resulted in transfer of the disputed domains. See, e.g., Parchment LLC v. Quan Zhongjun / Juanita Co., FA 2035483 (Forum Apr. 7, 2023) (ordering transfer of the <parchmeng.com> domain). Similarly, a search of the World Intellectual Property Organization's Panel Decisions reveals five (5) additional complaints directed at Respondent and for which the domains were ordered transferred. See, e.g., Averitt Express, Inc. v. Quan Zhongjun, Juanita Co., D2022-3110 (WIPO Oct. 13, 2022) (ordering the transfer of the <averittespress.com> domain and stating, "the Respondent appears to be engaged in a pattern of abusive registration having registered other domain names comprising of other third parties' trademarks"). Accordingly, Respondent has demonstrated a clear pattern of bad faith conduct.

 

Finally, Complainant submits that the use of typosquatted domain names indicates, by its very nature, bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) ("Respondent's registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii)."

 

Given the well-known status of Complainant's mark and its use of the official domain name <hackensackmeridianhealth.org>, Complainant argues that there is no reason for Respondent to have registered the disputed domain names other than to trade off of the reputation and goodwill of Complainant's mark.

 

Finally Complainant alleges that Respondent's registration of the disputed domain names also violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is an integrated network of healthcare providers and is the owner of the HACKENSACK MERIDIAN HEALTH trademark and service mark for which it owns the following portfolio of registrations:

·       United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,546,729, registered on the Principal Register, on August 21, 2018, for services in international class 16.

·       United States of America registered service mark HACKENSACK MERIDIAN HEALTH, registration number 5,716,169, registered on the Principal Register, on April 2, 2018, for services in international class 42;

·       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;

·       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;

·       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 services in international class 45;

·       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.

 

Complainant has an established Internet presence and owns and uses the official domain name, <hackensackmeridianhealth.org> which it registered on October 9, 2014.

 

Each of the disputed domain names <HackensuckMeridianHealth.org>, <HickensackMeridianHealth.org>, <HackinsackMeridianHealth.org>, <HackonsackMeridianHealth.org>, <HackensackMiridianHealth.org> were registered on August 8, 2023. One of them, <HackensackMiridianHealth.org> resolves to Complainant's own website.

 

The others resolve to web pages with pay-per-click links to third party websites.

 

There is no information available about Respondent, except for that provided in the Complaint as amended, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registrations of the disputed domain names for the purposes of this proceeding.

 

The Registrar has confirmed to Forum, that Respondent, who availed of privacy facility to conceal its name on the published WhoIs, is the registrant of the disputed domain names.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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

A.       Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the HACKENSACK MERIDIAN HEALTH mark, established by the ownership with its wholly owned subsidiary of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in providing services as an integrated network of healthcare providers.

 

B.       Confusing Similarity

The disputed domain names each consists of a misspelling of Complainant's HACKENSACK MERIDIAN HEALTH mark in its entirety in combination with the gTLD extension <.org>.

 

Complainant's HACKENSACK MERIDIAN HEALTH mark is clearly recognizable as being referenced within the disputed domain names

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity as the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration,

 

This Panel finds therefore that the disputed domain names and each of them is confusingly similar to the HACKENSACK MERIDIAN HEALTH mark, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that

·       Complainant's marks are not generic or descriptive terms in which Respondent might have an interest and Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its mark in connection with the goods and services named in its registration certificates;

·       Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant's mark or any domain names incorporating the mark which constitutes prima facie evidence that Respondent lacks any rights or legitimate interests in the disputed domain names;

·       the Registrar's response to the Forum's Domain Name Dispute Verification Request as shown in th record confirms that Respondent is not commonly known by the disputed domain names either as a business, individual or other organization;

·       Respondent registered the disputed domain names nearly seven years after Complainant began using its HACKENSACK MERIDIAN HEALTH mark and <hackensackmeridianhealth.org> domain name;

·       Respondent is not using the disputed domain names in connection with a bona fide offering of goods or serviced rather as shown in the screen captures exhibited in an annex to the Complaint, the disputed domain names have resolved to parked pages with sponsored, click-through links, redirected to third-party websites and for one of the disputed domain names resolves to Complainant's website;

·       using a domain name to offer links to competitive or unrelated services generally does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use;

·       using a domain name to redirect users to a complainant's own website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);

·       Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and Respondent is not making legitimate, noncommercial fair use of the disputed domain names;

·       Respondent has chosen the disputed domain names to trade off the reputation and goodwill associated with Complainant's mark, to misleadingly divert Internet traffic from Complainant's website, and to prevent Complainant from owning 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 the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced clear and convincing, uncontested evidence that it has trademark and service mark rights in the HACKENSACK MERIDIAN HEALTH mark which long predate disputed domain names on August 8, 2023.

 

Significantly all of the disputed domain names are misspellings of Complainant's mark and each of them were registered on the same date.

They are all held by the same registrant and one of them resolves to Complainant's own website.

 

The combination of the three elements "HACKENSACK", "MERIDIAN", and "HEALTH" could hardly be more distinctive and it is most improbable that the disputed domain names which are a series of misspellings of Complainant's mark were chosen and registered without knowledge of Complainant.

 

This Panel finds therefore that on the balance of probabilities the registrant of the disputed domain name was consciously engaged in typosquatting when the disputed domain names were registered, and each of the disputed domain names was registered in bad faith with Complainant in mind to take predatory advantage of Complainant's goodwill and reputation in the mark.

 

The screen captures of the website to which the disputed domain name resolves which has been exhibited in evidence in an annex to the Complaint, show that one of the disputed domain names resolves to Complainant's own website and the others resolved to web pages with pay-per-click links to third party websites. Such use of the disputed domain names constitutes use in bad faith for the purposes of the Policy.

 

Furthermore Respondent's bad faith in use of the disputed domain names is evidenced by the fact that Respondent is engaged in typosquatting by using the disputed domain names that are conscious misspellings of Complainant's mark to attract, confuse and lure Internet users to Respondent's webpages for profit.

 

Additionally, Complainant has shown that Respondent is engaged in a pattern of registering well known trademarks as domain names and has been the unsuccessful Respondent in a number of complaints under the Policy.

 

As this Panel has found that each of the disputed domain names was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy paragraph 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 <hackensuckmeridianhealth.org>, <hickensackmeridianhealth.org>, <hackinsackmeridianhealth.org>, <hackonsackmeridianhealth.org>, and <hackensackmiridianhealth.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

James Bridgeman SC, Panelist

Dated: September 24, 2023