DECISION

 

Hackensack Meridian Health, Inc. v. taeho kim / Dzone Inc

Claim Number: FA2401002078460

 

PARTIES

Complainant is Hackensack Meridian Health, Inc. ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is taeho kim / Dzone Inc ("Respondent"), South Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hackensackums.com>, registered with Sav.com, LLC.

 

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 January 9, 2024; Forum received payment on January 9, 2024.

 

On January 10, 2024, Sav.com, LLC confirmed by e-mail to Forum that the <hackensackums.com> 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 January 12, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2024 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@hackensackums.com. Also on January 12, 2024, 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 February 2, 2024, 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 <hackensackums.com> domain name is confusingly similar to Complainant's HACKENSACKUMC and related marks.

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

3.       Respondent registered and uses the <hackensackums.com> 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 <hackensackums.com> domain name on December 27, 2021, and uses it for pay-per-click links.

 

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 in the HACKENSACK UNIVERSITY MEDICAL CENTER and HACKENSACKUMC (containing the abbreviation "umc" for "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. 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 March 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 <hackensackums.com> domain name is a slightly misspelled version of Complainant's HACKENSACKUMC mark and simply adds the ".com" gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). 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.") Therefore, the Panel finds that Respondent's <hackensackums.com> 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 argues that Respondent lacks rights and legitimate interest in the <hackensackums.com> domain name as Respondent is not commonly known by the disputed domain name and is not authorized to use the HACKENSACKUMC mark. The WHOIS information for the disputed domain name lists the registrant as "taeho kim / Dzone Inc". 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. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); 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 argues that Respondent fails to use the <hackensackums.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to a webpage that offers pay-per-click links to third parties. Using a disputed domain name to offer pay-per-click links 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 CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) ("The Panel finds that Respondent's use of the <cheepcaribbean.com> name to promote links in competition with Complainant's travel agency services does not fall within Policy ¶ 4(c)(i)'s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).").  Complainant provides a screenshot of the webpage at <hackensackums.com> showing pay-per-click links to third parties such as "Healthcare Careers". 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).

 

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

 

Registration and Use in Bad Faith

Complainant argues that Respondent registered and used the <hackensackums.com> domain name in bad faith by using it to resolve to a webpage that offers pay-per-click links to third parties. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA 1557007 (Forum June 6, 2014) ("Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant's competitors from which Respondent is presumed to obtain some commercial benefit."). 

 

Complainant also argues that Respondent engages in typosquatting by slightly misspelling the HACKENSACKUMC mark in the disputed domain name. Typosquatting is the practice of incorporating a mark and adding small typographical errors, which is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant's mark with small typographical errors introduced therein). The Panel finds that Respondent has engaged in typosquatting, showing bad faith under Policy ¶ 4(a)(iii).

 

Complainant also claims that Respondent has been involved in previous adverse UDRP decisions, which can establish a pattern of bad faith under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Complainant shows that Respondent has lost several UDRP proceedings. See, e.g., HM Revenue and Customs v. Privacy Protection / taeho kim, Dzone Inc, D2022-1662 (WIPO Aug. 11, 2022) (transferring the disputed domain name, which resolved to a parked page with pay-per-click links, to Complainant); Comerica Incorporated v. Dzone Inc., Taeho Kim/Whois Privacy Services Pty Ltd., D2011-0895 (WIPO July 27, 2011) (finding registration and use in bad faith and transferring disputed domain name <wwwcomerica.net> to Complainant). Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith under Policy ¶ 4(b)(ii).

 

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 <hackensackums.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: February 3, 2024