DECISION

 

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

Claim Number: FA2501002133367

 

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 NAMES 

The domain names at issue are <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org>, registered with Sav.com, LLC.

 

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.

 

Petter Rindforth as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 3, 2025; Forum received payment on January 3, 2025.

 

On January 6, 2025, Sav.com, LLC confirmed by e-mail to Forum that the <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> domain names are registered with Sav.com, LLC and that Respondent is the current registrant of the names. 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 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2025 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@hackendackmeridianhealth.org, postmaster@hackensaxkmeridianhealth.org, postmaster@hackkensackmeridianhealth.org and postmaster@hhackensackmeridianhealth.org. Also on January 13, 2025, 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 4, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Petter Rindforth 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 has used the MERIDIAN HEALTH trademark since 1997, and since at least as early as 2016, following a merger between Hackensack University Health Network and Meridian Health, Complainant has used the trademark HACKENSACK MERIDIAN HEALTH in interstate commerce in connection with goods and services related to a full spectrum of life-enhancing care and services to create and sustain healthy, vibrant communities. Since that time, Complainant has also owned and used the official domain name, <hackensackmeridianhealth.org>.

 

Complainant is an integrated network of healthcare providers that has changed how health care is delivered in the state of New Jersey and surrounding areas. Complainant is the largest healthcare provider in New Jersey, and as such, Complainant enjoys strong recognition of its trademarks in the field of healthcare, with several high rankings for its services.

 

The disputed domain names are registered to the same Respondent, and all contain a typosquatted misspelling of Complainant's trademarks, and and its <hackensackmeridianhealth.org> domain name.

 

The disputed domain names <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> are all confusingly similar to Complainant's trademark because Respondent has incorporated the entire trademark, merely slightly misspelling it in all 4, and added the ".org" generic top level domain ("gTLD").

 

Respondent does not have rights or legitimate interests in the <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> domain names because Respondent is not commonly known by the disputed domain names and is not authorized to use Complainant's HACKENSACK MERIDIAN HEALTH trademark. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain names resolve to a parked webpage with third-party hyperlinks.

 

Respondent registered and uses the <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> domain names in bad faith because Respondent uses the disputed domain names to host pay-per-click hyperlinks. Additionally, Respondent fails to make active use of the disputed domain names since they resolve to a parked page. Furthermore, Respondent engages in typosquatting which is further evidence of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the following U.S. trademark registrations:

 

No. 2,188,836 MERIDIAN HEALTH (word), registered September 15, 1998 for services in Intl Class 42;

No. 5,441,318 HACKENSACK MERIDIAN HEALTH (word), registered April 10, 2018 for services in Intl Class 41;

No. 5,716,169 HACKENSACK MERIDIAN HEALTH (word), registered April 2, 2019 for services in Intl Class 42;

No. 5,441,320 HACKENSACK MERIDIAN HEALTH (word), registered April 10, 2018 for services in Intl Class 44;

No. 5,421,430 HACKENSACK MERIDIAN HEALTH (word), registered March 13, 2018 for services in Intl Class 45; and

No. 5,546,729 HACKENSACK MERIDIAN HEALTH (word), registered August 21, 2018 for goods in Intl Class 16.

 

The disputed domain names <hackendackmeridianhealth.org> and <hackensaxkmeridianhealth.org> were registered on January 17, 2021, and the disputed domain names <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> on January 29, 2021.

 

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 Complainant claims rights to the HACKENSACK MERIDIAN HEALTH trademark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a trademark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant's USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the HACKENSACK MERIDIAN HEALTH trademarks (e.g., Reg. No. 5,441,320, registered April 10, 2018). Therefore, the Panel finds that Complainant has rights in the HACKENSACK MERIDIAN HEALTH trademark per Policy ¶ 4(a)(i).

 

Complainant argues the disputed domain names are confusingly similar to Complainant's trademark because Respondent has incorporated the entire misspelled version of the trademark, only with minor and obvious misspellings thereof, and adding the ".org" gTLD. Misspelling a disputed domain name by, for example, replacing a single letter and adding a gTLD to a trademark may not be sufficient to differentiate the disputed domain name from the trademark under Policy ¶ 4(a)(i). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, "The domain name differs from the mark only in that the domain name substitutes the letter 'a' in the word 'steak' with the letter 'c' and adds the generic Top Level Domain ('gTLD') '.com.'  These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy."). Therefore, the Panel find that Respondent's domain names are all confusingly similar to Complainant's trademark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 does not have rights or legitimate interests in the <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> domain names because Respondent is not licensed or authorized to use Complainant's  HACKENSACK MERIDIAN HEALTH trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant's trademark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain names lists the registrant as "Candie Deloach / Excella". Therefore, the Panel find that Respondent is not commonly known by any of the disputed domain names per Policy ¶ 4(c)(ii).

 

As shown by Complainant, Respondent is not using the domain names in connection with a bona fide offering of goods or services. Rather, they resolves to a parked web pages with sponsored, click-through links. Such use can never be the base of legitimate interest.

 

Thus, the Panel find that Respondent does not provide a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

The Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent uses the domains to host pay-per-click hyperlinks on the resolving webpage. Using a disputed domain name to host parked, click-through links is evidence of bad faith per Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent's domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant's services and merely took advantage of Internet user mistakes); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant's business). As noted above, in the present case, Complainant provides screenshots showing the disputed domains resolves to a parked page with pay-per-click hyperlinks to a variety of third-parties. Further, Complainant believes that Respondent benefits commercially from these links. The Panel agrees with the Complainant's conclusion, and find that Respondent registered and uses the disputed domains in bad faith under Policy ¶ 4(b)(iv).

 

Furthermore, Complainant contends that Respondent's failure to resolve the disputed domain names to an active website also indicates Respondent's bad faith registration and use. Under Policy ¶ 4(a)(iii), failing to resolve a disputed domain name to an active website may be evidence of bad faith. See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) ("Respondent's domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.").

 

The Panel notes that there is a difference between "nonuse" and "inactive use". With inactive use, there is a site or message connected to the disputed domain name, with a message to the online audience. In this case, as described above, the disputed domains resolves to parked pages with pay-per-click hyperlinks to a variety of third-parties. That is a clear "inactive use" that still gives the audience the wrong impression of the Complainant's goods and services and related business. The Panel therefore agrees with Complainant, and find bad faith.

 

In addition, Complainant argues that Respondent has registered and uses the disputed domains in bad faith because it engages in typosquatting. Typosquatting, or capitalizing on slight misspellings between the disputed domain name and a trademark or a Complainant's actual domain name (as in this case), may be evidence of bad faith under Policy ¶ 4(a)(iii) See LifeLock, Inc. v. Adam Viener / ThunkTunk LLC, FA 1579875 (Forum Oct. 28, 2014) ("As the Panel has noted above, at the conclusion of its findings under the first Policy element under Policy ¶ 4(a)(i), the disputed domain name <lifelocl.com> differs from the LIFELOCK mark only by substituting the letter 'L' for the letter 'K' in the LOCK-portion of Complainant's registered mark. The Panel finds this behavior amounts to typosquatting, and as such the Panel finds this to be evidence of bad faith pursuant to Policy ¶ 4(a)(iii)."). Here, all disputed domain names are obvious misspellings of Complainant's HACKENSACK MERIDIAN HEALTH trademark and <hackensackmeridianhealth.org> domain, taking advantage of internet users who may attempt to reach Complainant's domain and real web site. Therefore, the panel find that Respondent registered and uses the disputed domain names in bad faith.

 

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 <hackendackmeridianhealth.org>, <hackensaxkmeridianhealth.org>, <hackkensackmeridianhealth.org> and <hhackensackmeridianhealth.org> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Petter Rindforth, Panelist

Dated: February 18, 2025