Iowa Health System d/b/a UnityPoint Health v. Xiao Xia Cao / Liu Jia Min
Claim Number: FA2010001916413
Complainant is Iowa Health System d/b/a UnityPoint Health (“Complainant”), represented by Justin B. Perri of Blackstone Law Group LLP, New York, USA. Respondent is Liu Jia Min / Xiao Xia Cao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <unitypoint.icu> and <myunitypoint.icu>, registered with DNSPod, Inc. and West263 International 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 9, 2020; the Forum received payment on October 9, 2020.
On October 12, 2020, DNSPod, Inc. and West263 International Limited confirmed by e-mail to the Forum that the <unitypoint.icu> and <myunitypoint.icu> domain names are registered with DNSPod, Inc. and West263 International Limited and that Respondent is the current registrant of the names. DNSPod, Inc. and West263 International Limited has verified that Respondent is bound by the DNSPod, Inc.; West263 International 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 October 21, 2020, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 10, 2020 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@unitypoint.icu, postmaster@myunitypoint.icu. Also on October 21, 2020, the Chinese language 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, the Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
On November 18, 2020, pursuant to UDRP Supplemental Rule 12, the Panel issued the Order for Additional Submissions to Complainant. On November 19, 2020, Complainant submitted Additional Submissions including the Amended Complaint and Exhibits demonstrating its allegations.
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.
Preliminary Issue 1: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Complainant did not submit a Chinese language complaint, but argues that the proceedings should continue in English, as Complainant would be prejudiced by the additional time and expense it would incur to translate its submissions, as well as the fact that both disputed domain names utilize English based words.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings should be conducted in English.
PRELIMINARY ISSUE 2: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the two domain names were registered within a day of one another with the exact same unique generic top-level domains (“gTLDs) added (“.icu”); both incorporate the UNITYPOINT mark associated with Complainant’s healthcare services; and both domains are directed towards the same healthcare institution, one of which <unitypoint.icu> targets UnityPoint’s primary domain name used by the public, and the other of which <myunitypoint.icu> targets UnityPoint’s primary patient portal. It is therefore, highly unlikely, that these two domain registrations concerning two mission critical UnityPoint domains would happen to be registered by uncoordinated cybersquatters within a day of each other.
The Panel finds that the disputed domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
PARTIES' CONTENTIONS
A. Complainant
i) Complainant is a healthcare system and provider of services throughout the Midwest. Complainant has rights in the UNITYPOINT and UNITYPOINT HEALTH marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,584,937, registered on August 12, 2014; Reg. 4,589,201, registered on August 19, 2014). The disputed domain names are identical or confusingly similar to Complainant’s UNITYPOINT mark as they incorporate the mark in its entirety and adds the descriptive “.icu” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its UNITYPOINT marks in the disputed domain names. Respondent does not use the disputed domain names for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain names.
iii) Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the UNITYPOINT mark. Respondent may use the disputed domain names for phishing purposes. Respondent typosquats with the disputed domain names.
B. Respondent
Respondent did not submit a response in this proceeding.
C. Complainant’s Additional Submissions
Complainant additionally submitted the Amended Complaint including exhibits supporting its allegations pursuant to the Panel’s Order for Additional Submissions. Complainant contends that Respondent is offering the <unitypoint.icu> domain name for sale for the price of 9,999 yuan, which is approximately USD1,524.
1. The <unitypoint.icu> and <myunitypoint.icu> domain names were registered on September 27 and 28, 2020, respectively.
2. Complainant has established rights in the UNITYPOINT and UNITYPOINT HEALTH marks through its registrations with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 4,584,937, registered on August 12, 2014; Reg. 4,589,201, registered on August 19, 2014).
3. The disputed domain names remain inactive.
4. Respondent is offering the <unitypoint.icu> domain name for sale for the price of 9,999 yuan, which is approximately USD1,524.
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 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”).
Complainant claims rights in the UNITYPOINT and UNITYPOINT HEALTH marks through its registrations with the USPTO (e.g. Reg. 4,584,937, registered on August 12, 2014; Reg. 4,589,201, registered on August 19, 2014). Registration with the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel finds Respondent has rights in the marks under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain names are identical or confusingly similar to Complainant’s UNITYPOINT mark, as they incorporate the mark in its entirety and/or add the generic word “my,” as well as the descriptive “.icu” gTLD. Under Policy ¶ 4(a)(i), adding the generic word “my," as well as a descriptive gTLD that describes a Complainant’s services or business are generally considered insufficient changes in differentiating a disputed domain name from the mark it incorporates. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 1, 2017) (“Appending a top-level domain that describes a complainant’s business adds to confusing similarity.”); see also BBY Solutions, Inc. v Best Buy Online / M/S Best Buy Online, FA 1620654 (Forum July 2, 2015) (“The addition of the generic word ‘my’… does not prevent a finding that the disputed domain name and mark are identical or confusingly similar.”). The disputed domain names incorporate Complainant’s UNITYPOINT mark in its entirety and add the “.icu” gTLD, which is an acronym for “intensive care unit,” a term adjacent to Complainant’s services as a hospital. Additionally, the disputed domain name <myunitypoint.icu> adds the generic word “my” to the front of the mark. Therefore, the Panel finds the disputed domain names are identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 is not commonly known by the disputed domain names, nor has Complainant authorized or licensed Respondent to use its UNITYPOINT mark in the disputed domain names. Where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (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)). The WHOIS of record identifies Respondent as “Xiao Zia Cao” and “Liu Jia Min”, and nothing in the record rebuts Complainant’s assertion that it never authorized or licensed Respondent to use its mark in the disputed domain names. Therefore, the Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use, but instead inactively holds the disputed domain name’s resolving websites. Inactively holding a disputed domain name’s resolving website is generally not considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Complainant claims that the disputed domain names do not resolve to an active website. As the Panel agrees, it finds Respondent does not use the disputed domain names for any bona fide offerings of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant argues that Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the UNITYPOINT mark. Actual knowledge is generally sufficient to demonstrate bad faith under Policy ¶ 4(a)(iii), and may be demonstrated by the notoriety of Complainant’s mark and Respondent’s registering a disputed domain name that incorporates a Complainant’s mark in its entirety. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”).
The Panel infers, due to the notoriety of Complainant’s marks and the disputed domain names incorporating Complainant’s mark in its entirety that Respondent registered the disputed domain names with actual knowledge of Complainant’s marks which constitutes bad faith registration under Policy ¶ 4(a)(iii).
Complainant contends that Respondent is currently offering the <unitypoint.icu> domain name for sale for the price of 9,999 yuan, which is approximately USD $1,524. The Panel agrees and finds that this offer for sale is in excess of estimated out-of-pocket costs and demonstrates Respondent’s bad faith registration and use of the <unitypoint.icu> domain name. See Cerner Corporation v. Eburg City, FA2009001914975 (Forum Oct. 25, 2020) (“Respondent offered to sell the disputed domain name for an amount in excess of out of pocket costs. This is sufficient to establish bad faith registration and use pursuant to Policy ¶4(b)(i)”).
The Complainant contends that the registration of the disputed domain names, followed by a passive holding of the disputed domain names, constitutes ‘use in bad faith.’ The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant ‘UnityPoint Health’ is the nation’s 13th largest non-profit health system and the fourth largest nondenominational health system in the United States of America. Through relationships with more than 315 physician clinics, 21 regional and 19 community network hospitals and home care services throughout its 9 regions. UnityPoint Health entities employ more than 30,000 employees. UnityPoint Health’s total revenue is approximately $4.1 billion. As such, Complainant’s UNITYPOINT and UNITYPOINT HEALTH marks are considered being well known; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain names constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <unitypoint.icu>, and <myunitypoint.icu> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 19, 2020
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