DECISION

 

Hackensack Meridian Health, Inc. v. Palisades Medical Center, Inc.

Claim Number: FA2312002075424

 

PARTIES

Complainant is Hackensack Meridian Health, Inc. ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Palisades Medical Center, Inc. ("Respondent"), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <hackensackmeridianhealth.xyz>, registered with NameCheap, Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 15, 2023; Forum received payment on December 15, 2023.

 

On December 15, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <hackensackmeridianhealth.xyz> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 December 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2024 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@hackensackmeridianhealth.xyz. Also on December 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On January 9, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in HACKENSACK MERIDIAN HEALTH. Its arguments regarding confusion are discussed later.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that the Respondent registered the disputed domain name in bad faith. Its arguments regarding use in bad faith are discussed later.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant provides healthcare services;

2.       the disputed domain name was registered on October 22, 2023 and is not in use; and

3.       there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). The Complaint states that "the disputed domain name … is identical to Complainant's HACKENSACK MERIDIAN mark."  There is no evidence of a national registration for HACKENSACK MERIDIAN and, were there, the Panel would disagree that the domain name and the trademark were identical. What there is in evidence are several registrations with the United States Patent & Trademark Office ("USPTO") for HACKENSACK MERIDIAN HEALTH, the earliest being Reg. No. 5,421,430 from March 13, 2018 (the "Registration"). The USPTO is a national trademark authority and so Complainant has established rights in that mark. The Complaint states that "the domain name is nearly identical, and confusingly similar" to that mark. The Panel agrees that for the purposes of the Policy, they are identical (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000 0624 (WIPO Aug. 21, 2000).

 

There is no suggestion that Respondent might be commonly known by the disputed domain name – indeed, Complainant provides evidence that the name of the underlying domain name registrant as disclosed by the Registrar (Respondent) is the name of a business owned by Complainant.

 

There is no evidence that Respondent has any trademark rights. The domain name has not been used. Accordingly, there has been no bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

 

The Panel finds that a prima facie case has been made that Respondent lacks rights or a legitimate interest in the disputed domain name (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!").

 

The onus thus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.

 

The scenarios of bad faith registration and use provided in paragraph 4(b) of the Policy are of no real assistance in this case and none are explicitly relied upon by Complainant.  Thus, Complainant must show, as separate matters, registration in bad faith and use in bad faith.

 

The Complaint cites Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) as authority for the propositions that "[t]he requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names."   Although the Panel does not take issue with those statements, they are not a complete statement of the principle of "passive holding in bad faith" as it has been broadly understood.

 

The Panel examines the issue of use in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("Telstra") decided before Twentieth Century Fox Film Corp. v. Risser. The panelist in Telstra faced the novel question of whether inactive, passive holding of a domain name could constitute "use" in bad faith. The conclusion was that the circumstances of a case should show the complainant's trademark to be widely known, the respondent to have provided no evidence of any actual or contemplated good faith use, and that it is not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights.

 

The consensus of cases which have followed since has been to consider proof of reputation (whether that be enough to also establish common law rights in the relevant trademark, or "well-known" to some lesser standard) indispensable and the cornerstone of whether it would be possible to conceive of plausible good faith use of the domain name.

 

The Complaint states that it "is based on Complainant's common law rights" and that "[a]s a result of … widespread, continuous, and prominent use, Complainant's Marks have acquired significant goodwill and public recognition, as a means by which the public identifies Complainant's goods and services."  The Complaint goes on to state that "use of the HACKENSACK MERIDIAN HEALTH trademark in connection with its goods and services is attached herewith as Annex E."  

 

Annexure E appears to be a collection of undated screenshots from Complainant's website or social media pages - it is not clear - and does not establish reputation in a trademark sense or prove any level of public awareness of the Complainant's business thereunder.

 

Otherwise, the Panel notes an unsupported assertion that "Complainant has used the MERIDIAN HEALTH trademark since 1997, and since at least as early as 2016, following a merger between Hackensack University Health Network and Meridian Health, Complainant has used the trademark HACKENSACK MERIDIAN HEALTH in interstate commerce.

 

The Panel observes that the USPTO Registration for HACKENSACK MERIDIAN HEALTH in fact claims a date of first use in commerce in 2017 but, in any event, the first use claim of the Registration is not a substitute for proof of actual use, still less of renown.

 

The Panel is entitled to accept reasonable allegations set forth in a complaint; however, the Panel should deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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").

 

Applying that principle and following the line of authority starting with Telstra, the Panel has insufficient evidence before it that the trademark of the Registration, or another relevant trademark, is well-known. The Panel is therefore unable to find passive holding and "use" in bad faith. Examination of registration in bad faith becomes unnecessary.

 

The Panel finds that Complainant has not satisfied the third and final element of the Policy. 

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is ORDERED that the <hackensackmeridianhealth.xyz> domain name REMAIN WITH Respondent.

 

 

 

Debrett G. Lyons, Panelist

Dated: January 10, 2024