Cerner Corporation v. Zhichao Yang
Claim Number: FA2106001951370
Complainant is Cerner Corporation (“Complainant”), represented by Leonard Searcy of Shook, Hardy & Bacon LLP, Missouri, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cernerhealh.com>, registered with NameSilo, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2021; the Forum received payment on June 16, 2021.
On June 17, 2021, NameSilo, LLC confirmed by e-mail to the Forum that the <cernerhealh.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 June 18, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 8, 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@cernerhealh.com. Also on June 18, 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 July 14, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells computer software and devices in the hospital and health industry. Complainant has rights in the CERNER trademark based on registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,458,174, registered Sept. 22, 1987). Respondent’s <cernerhealh.com> domain name is confusingly similar to Complainant’s trademark since it incorporates Complainant’s trademark in its entirety, adding only the misspelled descriptive word “healh” and the generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cernerhealh.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or permitted Respondent to use the CERNER trademark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use because Respondent fails to make active use of the disputed domain name except to host a parked website that displays hyperlinks to Complainant’s competitors.
Respondent registered and uses the <cernerhealh.com> domain name in bad faith because Respondent fails to make an active use of the disputed domain name. Instead, Respondent diverts Internet users who seek Complainant’s legitimate website at <cerner.com> to Respondent’s website, where Respondent hosts hyperlinks to Complainant’s competitors’ websites, presumably to collect pay-per-click fees. Moreover, Respondent had actual knowledge of Complainant’s rights in the CERNER trademark based on the global fame of the trademark, the fact that the disputed domain name contains a misspelling of “health,” the industry in which Complainant does business, and the fact that Respondent’s website contains hyperlinks related to Complainant’s business and products, which redirect users to Complainant’s actual competitors.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
- No. 1,458,174 CERNER (word), registered on September 22, 1987 for goods in Intl Class 9
- No. 1,837,060 CERNER (word), registered on May 17, 1994 for services in Intl Class 37
- No. 3,696,690 CERNER (word), registered on October 13, 2009 for goods in Intl Class 9
- No. 3,696,691 CERNER (word), registered on October 13, 2009 for goods in Intl Class 9.
The Complainant is also the owner of the following International Trademark Registration:
No. 605,592 CERNER (word), registered on August 11, 1993 for goods and services in classes 9 and 42, designating 12 countries in Europe.
The disputed domain name <cernerhealh.com> was registered on August 17, 2018.
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 Complainant claims rights in the CERNER trademark through its registration with the USPTO (e.g., Reg. No. 1,458,174, registered Sept. 22, 1987), as well as International Trademark Registration covering 12 countries / national trademark agencies. Registration of a trademark with a national trademark agency is sufficient to demonstrate rights in a trademark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Therefore, the Panel finds that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <cernerhealh.com> domain name is confusingly similar to Complainant’s CERNER trademark because it incorporates the trademark in its entirety, adding only the misspelled descriptive word “healh” and the gTLD “.com.” Adding a descriptive term, even though misspelled, that alludes to the complainant’s business and a gTLD to the complainant’s trademark does not negate confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). Complainant contends that the word “health,” which is the proper spelling of “healh," is connected to Complainant’s business in the health industry. The Panel agrees with the Complainant’s conclusion, as the added word is to be seen as describing the Complainant’s business, and therefore – if considered at all – rather add to the confusing similarity instead of the opposite. Therefore, the Panel clearly finds that the disputed domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
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 AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have rights or legitimate interests in the <cernerhealh.com> domain name, because Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or permitted Respondent to use the CERNER trademark. Under Policy ¶ 4(c)(ii), when no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a trademark is further evidence that a respondent is not commonly known by the trademark. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and… there are no Policy ¶ 4(c) circumstances from which the Panel might finds that Respondent has rights or interests in respect of the at-issue domain name.”).
Here, the WHOIS information identifies “Zhichao Yang” as the registrant of the domain name. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent has failed to make active use of the disputed domain name since its registration in 2018. Instead, the domain name resolves to a parked website that displays hyperlinks to third-parties which are Complainant’s competitors. Failure to make an active use of the domain name in an extended time period and use of the domain name to host competing hyperlinks do not constitute bona fide offerings of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (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 Respondent’s homepage, which features hyperlinks advertising multiple third parties for “Electronic Medical Records,” “Medical Billing Services,” “Patient Scheduling System,” and “Electronic Health Records,” which are the types of product offered by Complainant. Further, Complainant contends that the “Medical Billing Services” and “Electronic Medical Records” links direct users to Complainant’s competitors. Thus, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant argues that Respondent registered and uses the <cernerhealh.com> domain name in bad faith because Respondent has failed to make an active use of the disputed domain name since its registration in 2018. Instead, Respondent diverts Internet users who seek Complainant’s legitimate website at <cerner.com> to Respondent’s website, where Respondent’s host hyperlinks to Complainant’s competitors, presumably to profit from pay-per-click fees. Failure to make an active use of the disputed domain name except to host hyperlinks to the complainant’s competitors in order to collect pay-per-click fees is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose); see also Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Further, the Panel wishes to remind of the fact 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 the present case, Complainant provides a screenshot of Respondent’s website which features hyperlinks advertising products related to Complainant business, and which redirect users to Complainant’s competitor. This is indeed use, which must be considered independent of active or inactive. Thus, the Panel finds bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Additionally, Complaint argues that Respondent registered the <cernerhealh.com> domain name with actual knowledge of Complainant’s rights in the CERNER trademark based on the global fame of the trademark, the fact that the disputed domain name contains a misspelling of “health”, the industry in which Complainant does business, and the fact that Respondent’s website contains hyperlinks related to Complainant’s business and products, which redirect users to Complainant’s actual competitors. While constructive knowledge is insufficient for finding of bad faith, per Policy ¶ 4(a)(iii) actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and may be demonstrated by the fame of the mark as well as the respondent’s use of the disputed domain name to host hyperlinks which compete with complainant. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). As noted, Complainant has provided screenshots showing that Respondent’s website features hyperlinks competing with Complainant’s products and that the websites resolving from the hyperlinks are of Complainant’s competitors. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the CERNER trademark, and finds bad faith registration pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cernerhealh.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 28, 2021
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