Iowa Health System d/b/a UnityPoint Health v. Zhi Chao Yang
Claim Number: FA2201001981658
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 Zhi Chao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <unitypointmychart.com>, registered with Chengdu West Dimension Digital Technology Co., Ltd..
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 January 24, 2022; the Forum received payment on January 24, 2022. The Complaint was received in English.
On January 24, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to the Forum that the <unitypointmychart.com> domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the name. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. 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 25, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of February 14, 2022 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@unitypointmychart.com. Also on January 25, 2022, the Chinese and English 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 February 21, 2022, 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.
Preliminary Issue: Language of Proceeding
The Panel notes that the Complainant requests that the language of this administrative proceeding shall proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. UDRP Rule 10 (b) states that in all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. The UDRP Rule 10 (c) states that the Panel shall ensure that the administrative proceeding takes place with due expedition.
The Panel has taken into consideration that the Respondent did not file a response, and thereby also failed to argue that the language of proceeding should be in Chinese language. Although this is not enough alone to treat English as the language of proceeding, it is one indicator that Respondent accepts English.
Here, it shall also be duly noted that the Forum has, on January 25, 2022, communicated in Chinese with the Respondent, informing of the appointment of the Panelist, due date for the Administrative Hearing, and how the parities shall communicate with the Forum – still resulting in no actions or communications from the Respondent. This is a further indication that Respondent has chosen to not make any Response at all, independent of the language of the proceeding.
The Panel further notes that the disputed domain name fully includes the Complainant’s English trademark, only adding further English words, that has no meaning in the Chinese language, and further that the disputed domain name is linked to a web site with message only in English, indicating that the disputed domain name was registered with a more international (English spoken) audience in mind, with knowledge of Complainant’s trademark.
The Panel has weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party, together with the other referred facts and indications in the case. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
The Complainant operates a network of hospitals, clinics and home care services. Complainant has rights in the UNITYPOINT trademark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,589,201, registered Aug. 19, 2014). Respondent’s <unitypointmychart.com> domain name is confusingly similar to Complainant’s trademark since it incorporates the entire trademark and adds the term “mychart” and the “.com” generic top level domain (“gTLD”) to form the disputed domain name.
Respondent lacks rights or legitimate interests in the <unitypointmychart.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the UNITYPOINT trademark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since the disputed domain name resolves to a parked page with pay-per-click advertisements.
Respondent registered and uses the <unitypointmychart.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration and use based on previous UDRP proceedings. Additionally, Respondent uses the disputed domain name to divert users seeking Complainant to its own website which features pay-per-click hyperlinks. Furthermore, the disputed domain name constitutes typosquatting. Respondent’s bad faith is also evidenced by the use of a WHOIS privacy service. Finally, Respondent had knowledge of Complainant’s rights in the UNITYPOINT trademark based on Complainant’s prominence in the healthcare industry.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 4,589,201 UNITYPOINT (word), registered August 19, 2014 for goods and services in Intl Classes 16, 35, 36, 39, 41, 42, 44.
Respondent registered the disputed domain name <unitypointmychart.com> on January 13, 2022.
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 asserts rights in the UNITYPOINT trademark based on registration of the trademark with the USPTO (e.g., Reg. No. 4,589,201, registered Aug. 19, 2014). Registration of a trademark with the USPTO is a valid showing of rights in a trademark. See Zoosk, Inc. v. Brock Linen, FA 1811001818879 (Forum Jan. 28, 2019) (”The Panel here finds that Complainant’s registration of the ZOOSK mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the UNITYPOINT trademark with the USPTO, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <unitypointmychart.com> domain name is confusingly similar to Complainant’s trademark since it incorporates the entire trademark and adds the term “mychart” and the “.com” gTLD to form the disputed domain name. The addition of terms and a gTLD to a trademark may not sufficiently distinguish a disputed domain name from the trademark it incorporates. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel find that the disputed domain name is confusingly similar to the UNITYPOINT 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 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 lacks rights or legitimate interests in the <unitypointmychart.com> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the UNITYPOINT trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a trademark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). Here, the WHOIS information identifies “Zhi Chao Yang” as the registrant and Complainant asserts it did not authorized Respondent to use the UNITYPOINT trademark. Thus, the Panel find that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since the disputed domain name resolves to a parked page with pay-per-click advertisements. Using a disputed domain name to host pay-per-click advertisements does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Here, Complainant provides a screenshot showing the disputed domain name resolves to a parked page with pay-per-click hyperlinks to various medical related products and services. Thus, the Panel agree with Complainant and find that Respondent is not using the 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 state that Respondent registered and uses the <unitypointmychart.com> domain name in bad faith because Respondent engages in a pattern of bad faith registration and use based on previous UDRP proceedings. Previous UDRP rulings against a respondent indicate a respondent may engage in a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Jeffrey Dean Lindsay v. Lisa Katz / Domain Protection LLC, FA 1787275 (Forum July 3, 2018) (“A reverse-WHOIS search for domain names registered to Lisa Katz (the person behind Respondent), reveals over 100 domains… A search at the ADR Forum…for cases with “Lisa Katz” in the case title reveals 21 cases, 19 of which resulted in decisions to transfer… Respondent has been involved in 28 WIPO cases. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(ii)”). Here, Complainant provides evidence of a number of Respondent’s previous UDRP cases. Therefore, the Panel agree and find bad faith per Policy ¶ 4(b)(ii).
Additionally, Complainant argues that Respondent registered and uses the disputed domain name in bad faith since Respondent uses the disputed domain name to divert users seeking Complainant to its own website which features pay-per-click hyperlinks. Use of a disputed domain name to host pay-per-click hyperlinks may be 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 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). As noted above, the Complainant provides a screenshot showing that the disputed domain name resolves to a webpage with pay-per-click hyperlinks. Therefore, the Panel find bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant contends that the disputed domain name constitutes typosquatting. While typosquatting is itself evidence of bad faith, the Panel note that the addition of terms to a Complainant’s trademark is not typosquatting. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Nutri/System IPHC, Inc. v. ELVIS CASTRO / INTROPERU, FA 1713967 (Forum Mar. 17, 2017) (the “addition of a word to a mark has been held to not constitute typosquatting”).
Complainant also argues that Respondent’s bad faith is evidenced by the use of a WHOIS privacy service. The consensus view amongst panels is that use of a privacy service, without more, cannot reach the threshold of bad faith registration and use. See WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, D2006-0975 (WIPO November 1, 2006) (finding use of proxy registration service does not of itself indicate bad faith; there are many legitimate reasons for proxy registration services); see also Divex Limited v. ZJ, Sam Chang and Tim NG, D2007-0861 (WIPO September 21, 2007) (finding privacy services may be justified by the need to avoid spam and identity theft). However, the totality of the circumstances which surround a respondent’s engagement of a privacy service may give rise to a finding of bad faith registration and use. See, e.g., Sermo, Inc. v. CatalystMD, LLC, D2008-0647 (WIPO July 2, 2008) (stating that use of privacy shield can be “treated as evidence of bad faith . . . when serial registrants use privacy shields to mask each registrant’s actual date of registration”). The Panel agrees that Respondent has utilized a privacy shield in a manner which materially adversely affects or obscures the facts of this proceeding, and therefore agree that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, the Complainant contends that Respondent had constructive and/or knowledge of Complainant’s rights in the UNITYPOINT trademark based on Complainant’s prominence in the healthcare industry. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. See The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith."). Therefore, the Panel find that Respondent had actual knowledge of Complainant’s rights in the UNITYPOINT trademark and thus also find bad faith per 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 <unitypointmychart.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: March 3, 2022
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