DECISION
Hackensack Meridian Health, Inc. v. Candie Deloach / Excella
Claim Number: FA2402002085056
PARTIES
Complainant is Hackensack Meridian Health, Inc. ("Complainant"), represented by Sarah E. Bro of McDermott Will & Emery LLP, Illinois, USA. Respondent is Candie Deloach / Excella ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hackensickmeridianhealth.org>, registered with Sav.com, LLC.
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.
The Honorable Neil Anthony Brown KC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on February 22, 2024; Forum received payment on February 22, 2024.
On February 22, 2024, Sav.com, LLC confirmed by e-mail to Forum that the <hackensickmeridianhealth.org> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, 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 February 27, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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@hackensickmeridianhealth.org. Also on February 27, 2024, 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 March 19, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 made the following contentions.
1. Complainant is a United States company that was incorporated as the result of a merger between Hackensack University Health Network and Meridian Health.
2. It is engaged in the provision of a full spectrum of life-enhancing care and services to create and sustain healthy and vibrant communities.
3. Complainant conducts its business under a trademark for HACKENSACK MERIDIAN HEALTH and related marks.
4. Complainant has registered trademark rights in the HACKENSACK MERIDIAN HEALTH trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ("USPTO"), Registered Number 5,441,320, registered on April 10, 2018, and numerous other trademarks for HACKENSACK MERIDIAN HEALTH and derivatives registered with trademark registration authorities (collectively "the HACKENSACK MERIDIAN HEALTH trademark").
5. The HACKENSACK MERIDIAN HEALTH trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
6. Since the said merger, the Complainant has registered the domain name <hackensackmeridianhealth.org> which it uses in its business and in particular for its website on which it conveys information about and markets legitimate HACKENSACK MERIDIAN HEALTH goods and services.
7. On January 27, 2022 the Respondent registered the <hackensickmeridianhealth.org> domain name ("the disputed domain name").
8. The Complainant acquired its trademark rights in the HACKENSACK MERIDIAN HEALTH trademark before the Respondent registered the disputed domain name.
9. In registering the disputed domain name, the Respondent incorporated in it the entirety of Complainant's HACKENSACK MERIDIAN HEALTH trademark without any authority to do so and making only a single spelling alteration. That alteration does not negate the confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i) that is otherwise present.
10. The disputed domain name is therefore confusingly similar to the Complainant's HACKENSACK MERIDIAN HEALTH trademark.
11. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because:
(a) the Respondent has caused the disputed domain name to resolve to a website where it is prominently using the HACKENSACK MERIDIAN HEALTH trademark to provide links to third party websites promoting the same or similar goods and services as those of the Complainant and with the intention and effect of confusing internet users, in breach of Policy ¶ 4(b)(iv);
(b) the Complainant is not affiliated with Respondent and the Complainant has not licensed the HACKENSACK MERIDIAN HEALTH trademark to the Respondent nor granted Respondent any right, authorization, or permission to use the Complainant's marks in a domain name or in any other capacity;
(c) the Respondent is not commonly known by the disputed domain name;
(d) the Respondent registered and started to use the disputed domain name six years after the Complainant had commenced to use its trademark and domain name;
(e) the Respondent has not used the disputed domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); and
(f) the Respondent has not used the disputed domain name for a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
12. The Respondent has registered and used the disputed domain name in bad faith. That is so because:
(a) by diverting internet users to its website, the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);
(b) the Respondent has been attracting internet traffic by causing confusion with the Complainant's HACKENSACK MERIDIAN HEALTH trademark within the meaning of Policy ¶ 4(b)(iv);
(c) it must be inferred from the evidence that the Respondent so diverted internet users to its website and the websites to which it was linked and that it did so for some commercial reward;
(d) the failure of a respondent to develop a legitimate website when the domain name it has registered is well known is evidence of bad faith registration and use of the domain name;
(e) the evidence will show that the Respondent registered the disputed domain name with actual knowledge of the Complainant and its trademark rights;
(f) the Respondent is a repeat offender when it comes to the improper and illegitimate registration and use of domain names as illustrated by prior UDRP proceedings;
(g) the evidence will show that the Respondent has engaged in typosquatting on the Complainant's HACKENSACK MERIDIAN HEALTH trademark;
(h) the evidence will show that the Respondent registered and used the domain name to trade off the reputation of the Complainant and its trademarks; and
(i) the Complainant has cited numerous prior UDRP decisions to support its contentions.
13. It is therefore submitted by the Complainant that it will have shown all of the elements that it must establish under the UDRP and that the domain name should be transferred from the Respondent to the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that was incorporated as the result of a merger between Hackensack University Health Network and Meridian Health.
2. Complainant conducts its business under a trademark for HACKENSACK MERIDIAN HEALTH and related marks.
3. Complainant has established by evidence that it has registered trademark rights in the HACKENSACK MERIDIAN HEALTH trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ("USPTO"), Registered Number 5,441,320, registered on April 10, 2018, and numerous other trademarks for HACKENSACK MERIDIAN HEALTH and derivatives registered with trademark registration authorities (collectively "the HACKENSACK MERIDIAN HEALTH trademark").
4. The HACKENSACK MERIDIAN HEALTH trademark has become prominent, has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services.
5. On January 27, 2022 the Respondent registered the <hackensickmeridianhealth.org> domain name ("the disputed domain name").
6. The Respondent has caused the disputed domain name to resolve to a website with links to the websites of third parties displaying information calculated to mislead internet users, to give the false impression that those sites are legitimate and authorized by or linked to the Complainant, to divert internet users away from the Complainant and to third parties, to disrupt the Complainant's business and to cause confusion with the Complainant's trademarks for the benefit of the Respondent and to the detriment of the Complainant.
7. By reason of the matters aforesaid and as demonstrated by the evidence, the disputed domain name is confusingly similar to the Complainant's HACKENSACK MERIDIAN HEALTH trademark, the Respondent has no rights or legitimate interests in the domain name and the domain name has been registered and used by the Respondent in bad faith.
8. Accordingly, the disputed domain name should be transferred to the Complainant.
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.
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 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").
Identical and/or Confusingly Similar
The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The Complainant has established by evidence that it has registered trademark rights in the HACKENSACK MERIDIAN HEALTH trademark by virtue of its registration of the trademark with the United States Patent and Trademark Office ("USPTO"), Registered Number 5,441,320, registered on April 10, 2018, and numerous other trademarks for HACKENSACK MERIDIAN HEALTH and derivatives registered with trademark registration authorities (collectively "the HACKENSACK MERIDIAN HEALTH trademark").
The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's HACKENSACK MERIDIAN HEALTH trademark. Having examined the domain name and the trademark, the Panel finds that the disputed domain name is confusingly similar to the HACKENSACK MERIDIAN HEALTH trademark.
That is so because the Respondent has taken the entirety of the relevant trademark without any authority to do so, and has incorporated it in the disputed domain name, making only one alteration to the spelling of the trademark and incorporating it in the domain name, with the result that the domain name is confusingly similar to the trademark.
The alteration was to change the letter "a" in "Hackensack" where secondly appearing to "i", so that the resulting word becomes "sick" instead of "sack". No doubt the Respondent did this, so it thought, to suggest that the disputed domain name related to sickness and its treatment and hence to the principal activity of the Complainant under its trademark. The domain name means, would be interpreted by internet users to mean, and was no doubt meant to be interpreted by internet users to mean that it is a domain name of the Complainant because it uses its trademark and purports to relate to the official activities of the Complainant under that trademark, namely the alleviation of sickness and the promotion of health. The change emphasizes that the domain name is a copy of the trademark and that the alteration does nothing but add to the notion that it is a domain name of the Complainant or was created with the approval of the Complainant and will probably lead to an official website of the Complainant, which of course is incorrect.
The Respondent also adopted the generic Top-Level Domain ".org" in its domain name as does the Complainant's domain name.
Thus the Respondent obviously knew what it was doing, aimed at the Complainant for its own illegal purposes and concocted a domain name that would further that endeavor. It is therefore clear that the disputed domain name is similar to the trademark and confusingly so.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant's HACKENSACK MERIDIAN HEALTH trademark under Policy ¶ 4(a)(i).
The Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations:
(a) the Respondent has chosen to take the Complainant's HACKENSACK MERIDIAN HEALTH trademark and to use it in the disputed domain name, making only the minor spelling alteration referred to above, generating the clear impression that it is referring to and invoking the Complainant's trademark and that the Respondent intended to use the domain name for an unauthorized purpose which turned out to be the case. The Respondent had no right to do any of this, meaning that there is no foundation at all for finding that it had the right to do so or that it gave the Respondent any legitimate interest in the domain name so created;
(c) the Complainant had acquired its trademark rights in the HACKENSACK MERIDIAN HEALTH trademark well prior to the Respondent's registration the disputed domain name;
(d) the Respondent had no right to register the domain name and no legitimate interest in doing so. The intention of the Respondent is therefore very clear and it was to invoke the Complainant's name, trademarks and business and to copy them, which cannot conceivably give rise to a right or legitimate interest in the domain name in any way;
(f) the evidence in that regard is contained in the Complainant's Annex B. The Panel has examined that annexure and the detail contained in it. Suffice to say that it shows that the links are to businesses and services entitled Aarp United Healthcare, Electronic Medical Records, Medical Billing, Online Doctor Appointment and Urgent Care Services. Those businesses and services are all related to the full spectrum of life-enhancing care and services to create and sustain healthy and vibrant communities which is the substance of the Complainant's own business and the services it provides. Thus the services so linked are in competition with the Complainant and therefore potentially damaging to the Complainant and its own business. The Panel has also examined the offending website from where the Panel is currently sitting and finds that the domain name is still active and resolves to services similarly described and, moreover that the links promote services intimately related to those of the Complainant. Thus it is clear that the intention in providing the links was to promote the interests of competitors of the Complainant. That is the very opposite of showing a right or legitimate interest in the domain name as it is entirely illegitimate;
(g) moreover, the Annex shows that the intention of the Respondent was to mislead internet users and, at least by the receipt of fees presumably earned from this subterfuge, to extract money from the relevant advertisers under the false pretense that the links had been established or approved by the Complainant itself, an objective that has clearly been put into effect;
(h) this conduct was a clear infringement of the Complainant's HACKENSACK MERIDIAN HEALTH trademark;
(i) moreover, the evidence shows that the Respondent is not commonly known by the domain name; it is extremely unlikely that anyone named Candie Deloach / Excella, as is the Respondent, would answer to the name <hackensickmeridianhealth.org>;
(j) the Complainant is not affiliated with Respondent and the Complainant has not licensed the HACKENSACK MERIDIAN HEALTH trademark to the Respondent nor granted Respondent any right, authorization, or permission to use the Complainant's Marks in a domain name or in any other way;
(k) the evidence also shows that the use made of the domain name by the
Respondent is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); it cannot be bona fide when it is based on falsehoods and on misleading internet users;
(l) the evidence also shows that the domain name is not being used for a
legitimate non-commercial or fair use; the use of the domain name has already been shown to be illegitimate because it is being used to mislead internet users; it also cannot be said to be non-commercial in any sense as it is clearly intended to be used by the Respondent for a financial purpose, namely to make money; nor is it fair, as it is clearly unfair to use a trademark without permission of the trademark owner and to pretend falsely by implication that it is being used with the approval of the Complainant as the trademark owner; and
(m) all of the above considerations disprove any suggestion that the Respondent has a right or legitimate interest in the disputed domain name.
All of the grounds relied on by the Complainant have therefore clearly been made out on the evidence.
All of these matters go to make out the prima facie case against the Respondent.
As the 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.
The Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) are not exclusive but that UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. The Panel finds that all of those grounds have been made out on the evidence. Taking them in order:
(a) the evidence shows that by diverting internet users to the Respondent's website which carries links to competitors of the Complainant offering the same or similar services to those of the Complainant, the Respondent has sought to disrupt the Complainant's business within the meaning of Policy ¶ 4(b)(iii);
(b) the evidence shows that the Respondent has been attracting internet traffic by causing confusion with the Complainant's HACKENSACK MERIDIAN HEALTH trademark within the meaning of Policy ¶ 4(b)(iv); the Respondent has simply pretended to internet users that it is the Complainant or that it is acting with the permission of the Complainant, neither of which is the case;
(c) it must be inferred from the evidence that the Respondent so diverted internet users to the websites to which the disputed domain name is linked, for some payment; that must be so because it is more likely than not that the links in question were paid links rather than that they were established by accident or as an act of charity;
(d) the Respondent has set up a deceptive website to mislead internet users and extract money from advertisers;
(e) the evidence shows that the Respondent registered the disputed domain name with actual knowledge of the Complainant and its trademark rights; the only conclusion that can be drawn from the alteration of the spelling of the trademark and the use of the domain name is that the Respondent knew what it was doing, knew its target and set about aiming at it the target by its conduct;
(f) the Respondent is a repeat offender when it comes to the improper and illegitimate registration and use of domain names as illustrated by prior UDRP proceedings; this ground has been made out by the research of the Complainant's representative and its reflection in the decisions provided in the Complaint;
(g) the evidence shows that the Respondent has engaged in typosquatting on the Complainant's HACKENSACK MERIDIAN HEALTH; this is an act of bad faith registration and use;
(h) the evidence obviously shows that the Respondent registered and used the domain name to trade off the reputation of the Complainant and its trademarks.
Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the HACKENSACK MERIDIAN HEALTH trademark and in view of the conduct that the Respondent has engaged in since registering and using it, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
The Complainant has thus made out the third of the three elements that it must establish.
The Complainant has correctly cited several prior UDRP decisions that support its contentions on all of the elements required to be proved.
The Complainant has established all of the elements that it must show under the Policy and is therefore entitled to the relief it seeks.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hackensickmeridianhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 20, 2024
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page