Hackensack Meridian Health, Inc. v. Alma Cantara
Claim Number: FA2104001941397
Complainant is Hackensack Meridian Health, Inc. (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Alma Cantara (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <hacjensackmeridianhealth.org>, <hackebsackmeridianhealth.org>, <hackenaackmeridianhealth.org>, <hackensackmeridiabhealth.org>, <hackensackmeridiangealth.org>, <hackensackmeridianhealtj.org>, <hackensackmeridianhralth.org>, <hackensackmeridianhwalth.org>, <hackensackmeridianjealth.org>, <hackensackmeridoanhealth.org>, <hackensackmeriduanhealth.org>, <hackensackmerisianhealth.org>, <hackensackmerodianhealth.org>, <hackensackmerudianhealth.org>, <hackensackmrridianhealth.org>, <hackensavkmeridianhealth.org>, <hackenssckmeridianhealth.org>, <hackrnsackmeridianhealth.org>, <hackensacjmeridianhealth.org>, <hackensackmeeidianhealth.org>, <hackensackmeridianhealrh.org>, <hackensackmeridianhealty.org>, <hackensackmeridianhealyh.org>, <hackensackmeridianheslth.org>, <hackensackmeridisnhealth.org>, <hackensackmerifianhealth.org>, and <havkensackmeridianhealth.org>, registered with Porkbun LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 13, 2021; the Forum received payment on April 13, 2021.
On April 14, 2021, Porkbun LLC confirmed by e-mail to the Forum that the <hacjensackmeridianhealth.org>, <hackebsackmeridianhealth.org>, <hackenaackmeridianhealth.org>, <hackensackmeridiabhealth.org>, <hackensackmeridiangealth.org>, <hackensackmeridianhealtj.org>, <hackensackmeridianhralth.org>, <hackensackmeridianhwalth.org>, <hackensackmeridianjealth.org>, <hackensackmeridoanhealth.org>, <hackensackmeriduanhealth.org>, <hackensackmerisianhealth.org>, <hackensackmerodianhealth.org>, <hackensackmerudianhealth.org>, <hackensackmrridianhealth.org>, <hackensavkmeridianhealth.org>, <hackenssckmeridianhealth.org>, <hackrnsackmeridianhealth.org>, <hackensacjmeridianhealth.org>, <hackensackmeeidianhealth.org>, <hackensackmeridianhealrh.org>, <hackensackmeridianhealty.org>, <hackensackmeridianhealyh.org>, <hackensackmeridianheslth.org>, <hackensackmeridisnhealth.org>, <hackensackmerifianhealth.org>, and <havkensackmeridianhealth.org> domain names are registered with Porkbun LLC and that Respondent is the current registrant of the names. Porkbun LLC has verified that Respondent is bound by the Porkbun 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 April 20, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2021 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@hacjensackmeridianhealth.org, postmaster@hackebsackmeridianhealth.org, postmaster@hackenaackmeridianhealth.org, postmaster@hackensackmeridiabhealth.org, postmaster@hackensackmeridiangealth.org, postmaster@hackensackmeridianhealtj.org, postmaster@hackensackmeridianhralth.org, postmaster@hackensackmeridianhwalth.org, postmaster@hackensackmeridianjealth.org, postmaster@hackensackmeridoanhealth.org, postmaster@hackensackmeriduanhealth.org, postmaster@hackensackmerisianhealth.org, postmaster@hackensackmerodianhealth.org, postmaster@hackensackmerudianhealth.org, postmaster@hackensackmrridianhealth.org, postmaster@hackensavkmeridianhealth.org, postmaster@hackenssckmeridianhealth.org, postmaster@hackrnsackmeridianhealth.org, postmaster@hackensacjmeridianhealth.org, postmaster@hackensackmeeidianhealth.org, postmaster@hackensackmeridianhealrh.org, postmaster@hackensackmeridianhealty.org, postmaster@hackensackmeridianhealyh.org, postmaster@hackensackmeridianheslth.org, postmaster@hackensackmeridisnhealth.org, postmaster@hackensackmerifianhealth.org, and postmaster@havkensackmeridianhealth.org. Also on April 20, 2021, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Hackensack Meridian Health, Inc., operates an integrated healthcare network which services New Jersey and surrounding areas.
Complainant has rights in the HACKENSACK MERIDIAN HEALTH mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <hacjensackmeridianhealth.org>, <hackebsackmeridianhealth.org>, <hackenaackmeridianhealth.org>, <hackensackmeridiabhealth.org>, <hackensackmeridiangealth.org>, <hackensackmeridianhealtj.org>, <hackensackmeridianhralth.org>, <hackensackmeridianhwalth.org>, <hackensackmeridianjealth.org>, <hackensackmeridoanhealth.org>, <hackensackmeriduanhealth.org>, <hackensackmerisianhealth.org>, <hackensackmerodianhealth.org>, <hackensackmerudianhealth.org>, <hackensackmrridianhealth.org>, <hackensavkmeridianhealth.org>, <hackenssckmeridianhealth.org>, <hackrnsackmeridianhealth.org>, <hackensacjmeridianhealth.org>, <hackensackmeeidianhealth.org>, <hackensackmeridianhealrh.org>, <hackensackmeridianhealty.org>, <hackensackmeridianhealyh.org>, <hackensackmeridianheslth.org>, <hackensackmeridisnhealth.org>, <hackensackmerifianhealth.org>, and <havkensackmeridianhealth.org> domain names are identical or confusingly similar to Complainant’s HACKENSACK MERIDIAN HEALTH mark, only differing by misspelling one or more words within the mark, and adding the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the at-issue domain names as it is not commonly known by any of the domain names and is neither an authorized user or licensee of the HACKENSACK MERIDIAN HEALTH mark. Additionally, Respondent does not use any of the at-issue domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the domain names to host pay-per-click advertisements and redirect internet users to sponsored websites.
Respondent registered and uses the at-issue domain names in bad faith. Respondent uses the domain names to display pay-per-click hyperlinks to various third parties, disrupting Complainant’s business and presumably leading to commercial gain for Respondent. Respondent’s registration of 27 different infringing domain names also shows Respondent’s bad faith. The at-issue domain names are instances of typosquatting and thus further evidence of Respondent’s bad faith. Moreover, Respondent registered the at-issue domain names with actual knoweldge of Complainant’s rights in the HACKENSACK MERIDIAN HEALTH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the HACKENSACK MERIDIAN HEALTH mark.
The at-issue domain names were all registered after Complainant acquired trademark rights in its HACKENSACK MERIDIAN HEALTH mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain names all address webpages displaying hyperlinks to third parts. The links presumably generate click-through fees for Respondent’s benefit.
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”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its HACKENSACK MERIDIAN HEALTH mark with the USPTO is sufficient to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain names each contain a varied misspelling of Complainant’s HACKENSACK MERIDIAN HEALTH mark, less its spaces, with the “.org” top-level domain name appended thereto. The differences between Complainant’s mark and each at-issue domain name are insufficient to distinguish any of the domain names from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel concludes that each at-issue domain name is confusingly similar to Complainant’s HACKENSACK MERIDIAN HEALTH trademark 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.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at‑issue domain name. See 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)”).
WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Alma Cantara” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by any of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s domain names address webpages that display pay-per-click advertisements. Using the at-issue domain names to present monetized advertisements that redirect internet users to various third parties, as does Respondent, indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
The at-issue domain names were each registered and used in bad faith. As discussed below without limitation, multiple circumstances are present from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) regarding each domain name.
First, Respondent registered 27 domain names each including a confusingly similar variant of Complainant’s trademark. Respondent’s pattern of abusive domain name registration suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ (b)(ii). See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sept. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”).
Next as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain names to address webpages displaying pay-per-click links. Doing so disrupts Complainant’s business and shows Respondent’s use of Complainant’s trademark to attract internet traffic for commercial gain thereby indicating Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links).
Furthermore, each domain name in Respondent’s array of at-issue confusingly similar domain names exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the targeted trademark, or will otherwise confuse a misspelled trademark laden domain name with a targeted trademark. Here, Respondent simply rearranges, adds, and/or deletes characters in Complainant’s trademark in various immaterial ways to form the second level for each of Respondent’s at-issue domain names. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent had actual knowledge of Complainant’s rights in the HACKENSACK MERIDIAN HEALTH mark when it registered the at-issue domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s HACKENSACK MERIDIAN HEALTH trademark and from the fact that Respondent registered numerous domain names that are confusingly similar to Complainant’s trademark. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hacjensackmeridianhealth.org>, <hackebsackmeridianhealth.org>, <hackenaackmeridianhealth.org>, <hackensackmeridiabhealth.org>, <hackensackmeridiangealth.org>, <hackensackmeridianhealtj.org>, <hackensackmeridianhralth.org>, <hackensackmeridianhwalth.org>, <hackensackmeridianjealth.org>, <hackensackmeridoanhealth.org>, <hackensackmeriduanhealth.org>, <hackensackmerisianhealth.org>, <hackensackmerodianhealth.org>, <hackensackmerudianhealth.org>, <hackensackmrridianhealth.org>, <hackensavkmeridianhealth.org>, <hackenssckmeridianhealth.org>, <hackrnsackmeridianhealth.org>, <hackensacjmeridianhealth.org>, <hackensackmeeidianhealth.org>, <hackensackmeridianhealrh.org>, <hackensackmeridianhealty.org>, <hackensackmeridianhealyh.org>, <hackensackmeridianheslth.org>, <hackensackmeridisnhealth.org>, <hackensackmerifianhealth.org>, and <havkensackmeridianhealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 17, 2021
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