DECISION

 

Hackensack Meridian Health, Inc. v. Candie Deloach / Excella

Claim Number: FA2311002069039

 

PARTIES

Complainant is Hackensack Meridian Health, Inc. ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Candie Deloach / Excella ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hackemsackmeridianhealth.org>, registered with Sav.com, 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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 1, 2023; Forum received payment on November 1, 2023.

 

On November 1, 2023, Sav.com, LLC confirmed by e-mail to Forum that the <hackemsackmeridianhealth.org> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 November 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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@hackemsackmeridianhealth.org. Also on November 6, 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 November 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant is an integrated network of healthcare providers delivering healthcare in the state of New Jersey and surrounding areas.

 

Complainant has rights in HACKENSACK MERIDIAN HEALTH through its registration of such mark with the USPTO.

 

The at-issue domain name <hackemsackmeridianhealth.org> is confusingly similar to Complainant's mark because it wholly incorporates a misspelled version of the mark, differing only through replacing the mark's "n" with an "m" and the addition of the ".org" generic top-level domain ("gTLD").

 

Respondent lacks rights or legitimate interests in <hackemsackmeridianhealth.org>. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized Respondent to use the HACKENSACK MERIDIAN HEALTH mark in any way. Additionally, Respondent fails to use the at-issue domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, at all times relevant to this Complaint, the <hackemsackmeridianhealth.org> has resolved to a parked page with click-through links that direct internet users to third-party websites.

 

Respondent registered and uses the at-issue domain in bad faith. Respondent uses the domain name to host links to third parties. Presumably, Respondent commercially benefits from such links. Furthermore, Respondent had actual knowledge of Complainant's rights in the HACKENSACK MERIDIAN HEALTH mark when it registered <hackemsackmeridianhealth.org>. Respondent is engaged in typosquatting which also demonstrates bad faith. Respondent also has a pattern of registering domain names featuring third party trademarks and is attributed to registering multiple domain names utilizing.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has trademark rights in HACKENSACK MERIDIAN HEALTH.

 

Respondent registered the at-issue domain name after Complainant acquired rights in HACKENSACK MERIDIAN HEALTH.

 

Complainant's has not authorized Respondent to use Complainant's trademark.

 

Respondent uses the at-issue domain name to address a website offering links to third-parties from which Respondent commercially benefits.

 

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

The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.

 

Complainant's ownership of a USPTO trademark registration for its HACKENSACK MERIDIAN HEALTH mark establishes Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(I). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant's registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).

 

The at-issue domain name consists of Complainant's HACKENSACK MERIDIAN HEALTH trademark less its domain name impermissible spaces and with its "n" replaced by an "m" with all followed by the top level domain name ".org." The differences between <hackemsackmeridianhealth.org> and Complainant's HACKENSACK MERIDIAN HEALTH trademark are insufficient to distinguish the domain name from Complainant's trademark for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent's <hackemsackmeridianhealth.org> domain name is confusingly similar to Complainant's HACKENSACK MERIDIAN HEALTH trademark. See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) ("Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD '.com.' This is insufficient to distinguish the disputed domain names from Complainant's trademark."); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) ("The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant's prima facie showing acts conclusively.

 

Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue 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)").

 

WHOIS information for the at-issue domain name identifies the domain name's registrant as "Candie DeLoach" and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

Respondent's domain name addresses a parked webpage that displays third party links from which Respondent presumably receives commercial benefit. Using the at-issue domain in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.").

 

Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent's lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

As discussed below without being exhaustive, bad faith circumstances are present that allow the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

First, Respondent's use of the confusingly similar at-issue domain name to address a parked webpage displaying what appear to be pay-per-click links is disruptive to Complainant's business and shows that Respondent is attempting to attract internet users for commercial gain by impermissibly trading off Complainant's HACKENSACK MERIDIAN HEALTH trademark. Notably, using the domain name to host third party links demonstrates Respondent's bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).

 

Next, Respondent engages typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. In the instant case, Respondent removed the letter "n" from Complainant's trademark and replaced it with a letter "m," following all with the ".org" top-level to form the at-issue domain name. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

Next, Respondent had actual knowledge of Complainant's rights in the HACKENSACK MERIDIAN HEALTH mark when it registered <hackemsackmeridianhealth.org> as a domain name. Respondent's actual knowledge is evident from the notoriety of Complainant's mark and from Respondent's overt typosquatting as discussed above. Respondent's registration and use of the confusingly similar <hackemsackmeridianhealth.org> domain name with knowledge of Complainant's rights in HACKENSACK MERIDIAN HEALTH further shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).

 

Moreover, Respondent has lost numerous domain names through a prior adverse UDRP decision. Respondent's history thereby indicates a pattern of domain name abuse and suggests bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico,  FA 1878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).

 

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 <hackemsackmeridianhealth.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: November 29, 2023