Mary Washington Healthcare v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2112001976877
Complainant is Mary Washington Healthcare ("Complainant"), represented by Justin B. Perri of Blackstone Law Group LLP, New York, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marywashingtonhealth.com>, <marywashingtonhealthcre.com>, <martwashingtonhealthcare.com>, <marywasgingtonhealthcare.com>, <marywahingtonhealthcare.com>, <marywashington-healthcare.com>, <marywashingtohealthcare.com>, <maryeashingtonhealthcare.com>, <marywashingjealthcare.com>, <marywashigtonhealthcare.com>, <marywasingtonhealthcare.com>, <marywashingtonhospitalcenter.com>, <marywashingtonhealthcaare.com>, <maywashingtonhealthcare.com>, <marywshingtonhealthcare.com>, <wwwmarywashington.com>, <marywashngtonhealthcare.com>, <marywaashingtonhealthcare.com>, and <marywashingtonhealtcare.com> registered with Media Elite Holdings Limited.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2021; the Forum received payment on December 13, 2021.
On December 14, 2021, Media Elite Holdings Limited confirmed by email to the Forum that the <marywashingtonhealth.com>, <marywashingtonhealthcre.com>, <martwashingtonhealthcare.com>, <marywasgingtonhealthcare.com>, <marywahingtonhealthcare.com>, <marywashington-healthcare.com>, <marywashingtohealthcare.com>, <maryeashingtonhealthcare.com>, <marywashingjealthcare.com>, <marywashigtonhealthcare.com>, <marywasingtonhealthcare.com>, <marywashingtonhospitalcenter.com>, <marywashingtonhealthcaare.com>, <maywashingtonhealthcare.com>, <marywshingtonhealthcare.com>, <wwwmarywashington.com>, <marywashngtonhealthcare.com>, <marywaashingtonhealthcare.com>, and <marywashingtonhealtcare.com> domain names are registered with Media Elite Holdings Limited and that Respondent is the current registrant of the names. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 December 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@marywashingtonhealth.com, postmaster@marywashingtonhealthcre.com, postmaster@martwashingtonhealthcare.com, postmaster@marywasgingtonhealthcare.com, postmaster@marywahingtonhealthcare.com, postmaster@marywashington-healthcare.com, postmaster@marywashingtohealthcare.com, postmaster@maryeashingtonhealthcare.com, postmaster@marywashingjealthcare.com, postmaster@marywashigtonhealthcare.com, postmaster@marywasingtonhealthcare.com, postmaster@marywashingtonhospitalcenter.com, postmaster@marywashingtonhealthcaare.com, postmaster@maywashingtonhealthcare.com, postmaster@marywshingtonhealthcare.com, postmaster@wwwmarywashington.com, postmaster@marywashngtonhealthcare.com, postmaster@marywaashingtonhealthcare.com, postmaster@marywashingtonhealtcare.com. Also on December 17, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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, the Forum transmitted to the parties a Notification of Respondent Default.
On January 11, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant was established in 1899 and has grown over the years into a not-for-profit regional system of two hospitals, three emergency departments, and more than 50 healthcare facilities and wellness services. Complainant has used MARY WASHINGTON HEALTHCARE or variations thereof continuously since 1899, and has used the domain name <marywashingtonhealthcare.com> since 2009. Complainant asserts common law rights in MARY WASHINGTON HEALTHCARE, stating that this mark is recognized throughout the state of Virginia and nationally, and citing numerous awards and accreditations that Complainant has accumulated over the years. Complainant also contends that the combination of the words within its mark is inherently distinctive, noting that a Google search for "Mary Washington" yields only results for the University of Mary Washington; Mary Ball Washington (the mother of President George Washington and the person after whom Complainant was named); and Complainant itself.
Respondent registered the 19 disputed domain names, all of which correspond to slight alterations of Complainant's name and mark, between January and March 2021. Complainant characterizes the domain names as instances of typosquatting. The domain names are being used for websites composed of pay-per-click links, surveys, browser extensions, and malware, or to redirect to other such sites. Complainant states that Respondent is not commonly known by the disputed domain names, and has not been licensed or otherwise authorized to use Complainant's mark.
Complainant contends on the above grounds that each of the disputed domain names is confusingly similar to its MARY WASHINGTON HEALTHCARE mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
To prevail under the Policy, Complainant must show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights. If the claim relies upon common law rights, Complainant must present evidence that the mark has acquired secondary meaning — i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 1.3.
Complainant asserts that it has common law trademark rights in MARY WASHINGTON HEALTHCARE arising from its continuous and extensive use in connection with hospital and related services since 1899 and the widespread recognition that Complainant has achieved. The evidence provided by Complainant, at least in the absence of any challenge by Respondent, is sufficient in the view of this Panel to demonstrate common law rights in the mark for purposes of paragraph 4(a)(i) of the Policy. See Trinidad Area Health Association, d/b/a Mt. San Rafael Hospital v. Tim Beard, FA 1487054 (Forum Apr. 15, 2013) (finding common law rights in MT. SAN RAFAEL HOSPITAL based upon continuous use in connection with a hospital established in 1889); Rockdale Medical Center v. Whois Protection c/o Whois Protection Service LLC, FA 1230242 (Forum Jan. 5, 2009) (finding common law rights in ROCKDALE HOSPITAL based upon continuous use in connection with a hospital established in the 1950s).
Each of the disputed domain names incorporates the MARY WASHINGTON HEALTHCARE mark, in each case either introducing a minor typographical error or making some other minor alteration to the mark, and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Khan Academy, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1894219 (Forum May 27, 2020) (finding <khanacadeemy.com>, <kahnachdemy.com>, <kahnacademykids.org>, <khanacademhy.org>, <hkahnacademy.com>, and <kahnkids.org> confusingly similar to KHAN ACADEMY); Discover Financial Services v. Domain Administrator, Fundacion Privacy Services LTD, D2021-1514 (WIPO July 2, 2021) (finding <discoverersonaloans.com>, <discoverperoanloans.com>, <discoverstubdentloans.com>, <wwwdiscover360financial.com>, and other domain names confusingly similar to DISCOVER). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names all incorporate or correspond to Complainant's registered mark without authorization. Some of the domain names do not appear to resolve at all; others are being used for pay-per-click link pages or websites that download malware, or to redirect to other commercial websites, some of which appear to be malicious browser hijackers. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., CCL Label, Inc. v. Christopher Tancr, FA 1727564 (Forum May 24, 2017) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
The disputed domain names all correspond to Complainant's common law mark without authorization; they are registered in the name of what the Panel infers to be a privacy registration service, presumably to conceal the identity of the beneficial registrant; and they are being used to display pay-per-click links, to disseminate malware, and for similar purposes. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., WordPress Foundation v. Above.com Domain Privacy, FA 1641647 (Forum Nov. 9, 2015) (finding bad faith in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marywashingtonhealth.com>, <marywashingtonhealthcre.com>, <martwashingtonhealthcare.com>, <marywasgingtonhealthcare.com>, <marywahingtonhealthcare.com>, <marywashington-healthcare.com>, <marywashingtohealthcare.com>, <maryeashingtonhealthcare.com>, <marywashingjealthcare.com>, <marywashigtonhealthcare.com>, <marywasingtonhealthcare.com>, <marywashingtonhospitalcenter.com>, <marywashingtonhealthcaare.com>, <maywashingtonhealthcare.com>, <marywshingtonhealthcare.com>, <wwwmarywashington.com>, <marywashngtonhealthcare.com>, <marywaashingtonhealthcare.com>, and <marywashingtonhealtcare.com> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: January 13, 2022
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