SSM Health Care Corporation v. Mark Nowak
Claim Number: FA2203001986392
Complainant is SSM Health Care Corporation (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Mark Nowak (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ssmstjoseph.com>, registered with Network Solutions, 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2022; the Forum received payment on March 1, 2022.
On March 4, 2022, Network Solutions, LLC confirmed by e-mail to the Forum that the <ssmstjoseph.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 March 8, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@ssmstjoseph.com. Also on March 8, 2022, 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 April 4, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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 made the following contentions.
Complainant, SSM Health Care Corporation, owns and operates various hospitals. Complainant asserts rights in the SSM mark based upon common law rights and registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 3,827,545, registered August 3, 2010). See Compl. Ex. B. Respondent’s <ssmstjoseph.com> domain name is confusingly similar to Complainant’s mark because it contains the SSM mark in its entirety, merely adding the term “STJOSEPH” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <ssmstjoseph.com> domain name. Respondent is not licensed or authorized to use Complainant’s SSM mark and is not commonly known by the disputed domain name. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant.
Respondent registered and uses the <ssmstjoseph.com> domain name in bad faith. Respondent has a pattern of infringing behavior. Respondent had actual and constructive knowledge of Complainant’s rights in the SSM mark. Respondent uses the disputed domain name to pass off as Complainant. Respondent used a privacy service to register the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that provided hospitals and related goods and services.
2. Complainant has established its rights in the SSM mark based upon common law rights and registration with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 3,827,545, registered August 3, 2010).
3. Respondent registered the <ssmstjoseph.com> domain name on February 23, 1999.
4. Respondent uses the disputed domain name to pass itself off as Complainant, showing there is no evidence that Respondent has a right or legitimate interest in the domain name. The evidence also shows that the domain name was registered and 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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complaint can easily establish it trademark rights to give it standing to bring this proceeding as it has a substantial number of registered trademarks that qualify to meet that requirement. It is not necessary to list them all and it is clear that Complainant is correct when it submits, for example, that it has rights in the SSM mark based on the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., reg. no. 3,827,545, registered August 3, 2010). See Compl. Ex. B. Registration of a mark with the USPTO is considered a valid showing of rights 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.”); see also Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Since Complainant has provided evidence of registration of the SSM mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
However, it was also wise of Complainant’s advisers to argue that Complainant has common law trademark rights in SSM in addition to its registered trademarks. That is because the disputed domain name was registered on February 23, 1999 and to show registration by Respondent of the domain name in bad faith, it would be necessary for Complainant to show that it had trademark rights in SSM prior to that date.
Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent’s registration of a domain name if it can demonstrate established common law rights in the mark. See Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018). Common law rights may be shown via “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.” See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017); see also Psyonix Inc. v. robert gray / notpsyonix, FA 1759780 (Forum Jan. 3, 2018) (finding Complainant had satisfied the requirements for common law rights in the PSYONIX mark where it was “the center of the press worldwide since the release of its Rocket League game, selling over 10 million copies, totaling 36 million registered users and grossing over $110 million worldwide,” and “Complainant provided a sampling of articles from 2015 to 2017, which shows that the PSYONIX trademarks have been extensively used by Complainant, [and] are associated with Complainant amongst the consuming public worldwide.”). The evidence is that Complainant has used the terms “SSM,” “SSM Health,” and various other related terms in its work in the Midwestern United States since 1872. Therefore, Complainant must have started to acquire its common law trademark rights in SSM shortly after that time and at least from 1885. In any case it is beyond argument that Complainant acquired common law trademark rights in SSM before the disputed domain name was registered. The Panel therefore finds that Complainant has established its common law rights in the SSM mark under Policy ¶ 4(a)(i) and that it had those rights prior to February 23, 1999.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SSM mark. Complainant submits that Respondent’s <ssmstjoseph.com> domain name is confusingly similar to Complainant’s mark because it contains the SSM mark in its entirety, merely adding the term “stjoseph” and the generic top-level domain (“gTLD”) “.com” to form the disputed domain name. The addition of generic or descriptive terms and gTLDs to a mark does not distinguish the disputed domain name from the mark incorporated therein per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable 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.”).In the present case, it is obvious that the domain name is referring to the St Joseph’s hospital of the Complainant. Therefore, the Panel finds that the disputed domain name is confusingly similar to the SSM mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
(a) Respondent has chosen to take Complainant’s SSM mark and to use it in its domain name adding the word “stjoseph” to the mark;
(b) Respondent registered the <ssmstjoseph.com> domain name on February 23, 1999;
(c) Respondent has used the disputed domain name to pass itself off as Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Respondent does not have rights or legitimate interests in the <ssmstjoseph.com> domain name because Respondent is not licensed or authorized to use Complainant’s SSM mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the 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)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name lists the registrant as “Mark Nowak.” See Registrar Verification Email. Therefore, the Panel may find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant submits that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, but that Respondent uses the disputed domain name to pass itself off as Complainant. Use of a disputed domain name to pass off as a Complainant does not confer rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing its mark and identifying information. The Panel has examined this evidence and , having done so, is able to say there is no doubt that it shows a deliberate and dishonest policy of copying and of Respondent pretending that it is Complainant. Respondent has even gone into detail to keep up this pretense. See Compl. Ex. D. Therefore, as the Panel agrees with Complainant’s argument and the extensive evidence it has produced to support that argument, it finds Respondent does not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <ssmstjoseph.com> domain name in bad faith because Respondent has a pattern of infringing behavior. Historical cases of infringing behavior support a finding of bad faith registration and use under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”). Here, Complainant notes that Respondent utilized a video taken from a differing hospital’s website on the disputed domain name’s resolving webpage in the attempt to pass itself off as Complainant. See Complaint at para 7. Therefore, as the Panel agrees, it finds bad faith registration and use under Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent had actual and constructive knowledge of Complainant’s rights in the SSM mark. Complainant argues that Respondent's passing itself off as Complainant at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights, and that the USPTO registration of the SSM mark demonstrates Respondent had constructive knowledge of Complainant’s rights in the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, it is open to the Panel to find that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also 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 "actual knowledge of Complainant's mark when registering the disputed domain name"). Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith.
Thirdly, Complainant contends that Respondent uses the disputed domain name to pass itself off as Complainant. Use of a disputed domain name to pass off supports a finding of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Here, Complainant has provided screenshots of the disputed domain name’s resolving webpage, showing Complainant’s mark and identifying information which points to passing off by Respondent having occurred. The Panel has already highlighted this evidence and it need only be said here that there is overwhelming evidence that Respondent has been trying to pretend that it is Complainant and that it has done this illegally and for its own discreditable motives. See Compl. Ex. D. Thus, as the Panel agrees with Complainant and its submissions, it finds bad faith per Policy ¶¶ 4(b)(iii) and (iv) because of that passing off.
Fourthly, Complainant notes that Respondent used a privacy service to register the disputed domain name. Use of a privacy service in registering a disputed domain name may support a finding of bad faith. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sept. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”); see also Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”). Here, Complainant has provided a copy of the initial WHOIS information, showing Respondent’s use of a privacy service. See Compl. Ex. A. Therefore, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith.
It should also be noted that the fact that the domain name was registered in 1999 is no defense for Respondent. Sometimes, the passage of time may enable a respondent to retain a domain name but not in this case, as there is no evidence that would justify such a conclusion and there has been no attempt by Respondent to show there is a basis for it to retain the domain name.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ssmstjoseph.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: April 5, 2022
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