DECISION

 

Hackensack Meridian Health, Inc. v. Domain Administrator

Claim Number: FA2311002071720

 

PARTIES

Complainant is Hackensack Meridian Health, Inc. ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Domain Administrator ("Respondent"), Hong Kong.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <connecthackensackumc.net>, registered with Above.com Pty Ltd.

 

PANEL

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

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 18, 2023; Forum received payment on November 18, 2023.

 

On November 22, 2023, Above.com Pty Ltd. confirmed by e-mail to Forum that the <connecthackensackumc.net> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 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@connecthackensackumc.net. Also on November 27, 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 December 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin 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

1.       Respondent's <connecthackensackumc.net> domain name is confusingly similar to Complainant's HACKENSACK UNIVERSITY MEDICAL CENTER, HACKENSACKUMC AND HACKENSACK MERIDIAN HEALTH marks.

2.       Respondent does not have any rights or legitimate interests in the <connecthackensackumc.net> domain name.

3.       Respondent registered and uses the <connecthackensackumc.net> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant holds a registration for the HACKENSACK MERIDIAN HEALTH mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 5,441,320, registered April 10, 2018).  Complainant has also used the HACKENSACKUMC mark, short for HACKENSACK UNIVERSITY MEDICAL CENTER, and the <hackensackumc.org> domain name since 2011.

 

Respondent registered the <connecthackensackumc.net> domain name October 11, 2016, and fails to make an active use of the domain name.

 

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

Complainant claims rights rights in the HACKENSACKUMC and HACKENSACK UNIVERSITY MEDICAL CENTER marks through continuous use since 2011.  Complainant provides evidence showing that it has used the <hackensackumc.org> domain name since 2011, and that the HACKENSACK UNIVERSITY MEDICAL CENTER mark is used extensively in tandem with the registered HACKENSACK MERIDIAN HEALTH mark. In the absence of any assertion to the contrary, and due to Complainant's long-standing continuous use, the Panel finds that Complainant has common law rights in the HACKENSACKUMC mark. See Marquette Golf Club v. Al Perkins, FA 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."); see also Indianapolis Downs, LLC v. Philip Mazzone, FA 1244694 (Forum Mar. 11, 2009) ("Policy ¶ 4(a)(i) does not require proof of a registered trademark if Complainant can demonstrate its common law rights through secondary meaning.").

 

Respondent's <connecthackensackumc.net> domain name uses Complainant's HACKENSACKUMC mark and simply adds the word "connect" and the ".net" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.) Therefore, the Panel finds that Respondent's <connecthackensackumc.net> domain name is confusingly similar to Complainant's HACKENSACKUMC mark.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <connecthackensackumc.net> domain name as Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in its marks. The WHOIS information for the disputed domain name lists the registrant as "Domain Administrator". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also 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)").

 

Complainant contends that Respondent fails to use the <connecthackensackumc.net> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain name does not resolve to an active webpage. Complainant provides a screenshot showing that the disputed domain name resolves to a webpage that contains an error message and no content. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii). See Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum Aug. 3, 2017) ("Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain."). 

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and uses the disputed domain name in bad faith as Respondent has failed to make an active use of the domain name. The Panel agrees and finds bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) ("Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website."). 

 

The Panel finds that Complainant has satisfied 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 <connecthackensackumc.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: December 22, 2023