Texas Health Resources v. Nam Jong Kang
Claim Number: FA1808001799861
Complainant is Texas Health Resources (“Complainant”), represented by Kay Lyn Schwartz of Foley & Lardner LLP, Texas, USA. Respondent is Nam Jong Kang (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <texashealty.org>, registered with Crazy Domains FZ-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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2018; the Forum received payment on August 7, 2018.
On August 13, 2018, Crazy Domains FZ-LLC confirmed by e-mail to the Forum that the <texashealty.org> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-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 August 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 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@texashealty.org. Also on August 20, 2018, 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 September 11, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson, 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, Texas Health Resources, is one of the largest faith-based nonprofit health systems in the United States and the largest in North Texas in terms of inpatients and outpatients. Complainant uses its TEXAS HEALTH mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,921,474, registered Feb. 22, 2011). Respondent’s <texashealty.org> domain name is confusingly similar to Complainant’s TEXAS HEALTH mark because it merely replaces the letter “H” with the letter “Y” and adds the generic top-level domain (“gTLD”) “.org.”
Respondent does not have rights or legitimate interests in the <texashealty.org> domain name. Complainant has not licensed or otherwise authorized Respondent to use its TEXAS HEALTH mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Nam Jong Kang” as the registrant. Respondent is not using the <texashealty.org> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to resolve to a website featuring click-through links to third-party sites offering services that directly compete with Complainant’s business.
Respondent registered and is using the disputed domain name in bad faith. Respondent uses the domain name to disrupt Complainant’s business and create confusion with Complainant’s mark for commercial gain by resolving to a website featuring competing links. Further, Respondent registered the <texashealty.org> domain name with actual and constructive knowledge of Complainant’s rights in the TEXAS HEALTH mark. Finally, Respondent engaged in typosquatting by registering a domain name containing a common misspelling.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Texas Health Resources (“Complainant”), of Arlington, Texas, USA. Complainant is the owner of the domestic registration for TEXAS HEALTH, and related marks, constituting the Texas Health Resources family of marks, which it has continuously used since at least as early as 1997, in connection with its provision of goods and services in the health care industry. Complainant also maintains a web presence through its registration and use of several domain names such as <texashealth.org>.
Respondent is Nam Jong Kang (“Respondent”), of Wonju-si, South Korea. Respondent’s registrar’s address is listed as Dubai, UAE. The Panel notes that Respondent registered the <texashealty.org> domain name on or about June 27, 2017.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends it has rights in its TEXAS HEALTH mark through registration with the USPTO (e.g., Reg. No. 3,921,474, registered Feb. 22, 2011). Prior decisions hold that registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel here finds that Complaniant has established rights in the TEXAS HEALTH mark under Policy ¶ 4(a)(i).
Next, Complainant alleges that Respondent’s <texashealty.org> domain name is confusingly similar to Complainant’s TEXAS HEALTH mark because it merely replaces the letter “H” with the letter “Y” and adds the gTLD “.org.” Changing a single letter in a mark and adding a gTLD may not sufficiently distinguish a disputed domain name from a mark. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”). The Panel here finds that Respondent’s <texashealty.org> domain name is confusingly similar to Complainant’s TEXAS HEALTH mark.
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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 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 here has set forth the requisite prima facie case.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its TEXAS HEALTH mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. 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 information of record for the <texashealty.org> domain name lists “Nam Jong Kang” as the registrant. As the Respondent has failed to provide an answer, or contest the Complainant’s assertions, the Panel here finds that Respondent is not commonly known by the <texashealty.org> domain name.
Further, Complainant claims that Respondent uses the <texashealty.org> domain name to resolve to a website featuring click-through links to third-party sites offering services that directly compete with Complainant’s business. Under Policy ¶¶ 4(c)(i) and 4(c)(iii), use of a domain name to resolve to a website featuring competing click-through hyperlinks may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015) (holding that the respondent was not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent was using the disputed domain name to host generic links to third-party websites, some of which directly competed with the complainant’s business). Complainant provided a screenshot of the <texashealty.org> website, which indicates that the site displays links, such as “Wic Health,” “Health Insurance,” and “Public Health Programs.” The Panel here finds that Respondent failed to use the <texashealty.org> domain name for a legitimate Policy ¶¶ 4(c)(i) or 4(c)(iii) use.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent attempts to disrupt Complainant’s business and create confusion with Complainant’s TEXAS HEALTH mark for commercial gain by using the <texashealty.org> domain name to resolve to a website featuring competing hyperlinks. Under Policy ¶¶ 4(b)(iii) and (iv), use of a domain name to disrupt a complainant’s business or create confusion with a complainant’s mark for commercial gain may evidence bad faith registration and use. See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Complainant provided screenshots of the <texashealty.org> website, which show that the site features hyperlinks that compete with Complainant’s healthcare business. The Panel here finds that Respondent registered and used the domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant alleges Respondent engaged in typosquatting by registering a domain name containing a common misspelling. Typosquatting, itself, is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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).”). The Panel here finds that Respondent’s typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii) as well.
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <texashealty.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: Sept. 25, 2018
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