Complainant is Epic Systems Corporation, United States of America (“United States”), represented by Quarles & Brady LLP, United States.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / CGM Publishing LLC, United States, represented by David F. Lieberman, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 10, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 15, 2021 (the “Amended Complaint”). The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. On April 5, 2021, the Center received a request from Respondent for an extension to the Response filing period. Pursuant to paragraph 5(b) of the Rules, on April 6, 2021, the Center notified the Parties that the Response due date had been extended to April 10, 2021. The Response was filed with the Center on April 10, 2021. On April 18, 2021, the Center received a supplemental filing from Complainant. On May 12, 2021, the Center received a supplemental filing from Respondent. The Center appointed Ingrīda Kariņa-Bērziņa, William R. Towns, and the Hon. Karl V. Fink (Ret.) as panelists in this matter on May 4, 2021. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is an American company, established in 1979, providing software for managing electronic health records. It is the proprietor of several registrations for the MYCHART mark, namely: - United States Trademark No. 2574214 for MYCHART (word mark), registered on May 28, 2002 for goods in class 9, claiming a date of first use of May 1, 2000; Respondent is also an American company, incorporated in the state of Florida in 2018, providing websites, social media accounts, and online advertising services. The disputed domain name was registered on April 29, 2005. It does not currently resolve to an active website. The record reflects that the disputed domain name previously resolved to a site featuring pay-per-click links. 5. Parties’ Contentions The Parties’ submissions are voluminous, detailed, and numerous. The Panel summarizes them below. A. Complainant Complainant’s contentions may be summarized as follows: Under the first element, Complainant states that it is a leading provider of software for managing electronic health records. It was founded in 1979 and today manages the electronic health records of more than 100 million patients worldwide. In 2000, Complainant launched MyChart, a portal that allows patients to electronically access and manage their health records. It has operated its business website at “www.mychart.com” since that time. Additionally, Complainant operates popular mobile applications available from the App Store and Google Play under the MYCHART name. Complainant has both common-law and registered rights in the MYCHART mark. Complainant has invested substantial resources in promoting its MYCHART mark and the service has received press attention and industry recognition. Complainant holds several registrations for the MYCHART mark, including a United States trademark registration that is now incontestable. Complainant states that the disputed domain name is identical to and therefore confusingly similar with the MYCHART mark. Under the second element, Complainant states that there is no evidence that Respondent is known by any variation of the mark MYCHART, nor is there evidence that Respondent uses this mark to render bona fide goods and services in commerce. Respondent is not affiliated with Complainant and has not received a license or permission to use the MYCHART mark as a domain name. The disputed domain name resolved to a website populated with “Related Links” that explicitly disclaimed “any relationship with the advertisers”. Said content was apparently removed between the time of filing of the original Complaint and of the Amended Complaint. The links on the website concerned topics related to Complainant’s field of business, such as “Electronic Medical Records” and “Health Information Management”. The links led to pages with prepaid advertisements, including those placed by competitors of Complainant. Since at least 2016, the disputed domain name has either been parked or has resolved to a pay-per-click site, but it has not sponsored any legitimate offering of goods or services. Respondent’s name bears no resemblance to the MYCHART mark. Complainant is the only registrant of United States trademark registrations for the MYCHART mark, and Respondent does not own any United States trademark registrations for any mark. Under the third element, Complainant states that Respondent knowingly selected and maintained the disputed domain name to capitalize on Complainant’s trademark rights. Complainant registered the MYCHART mark in 2002, predating the registration of the disputed domain name in 2005 and Respondent's incorporation in 2018. Based on Complainant’s prevalent use of the MYCHART mark, Respondent was or should have been aware of the mark when Respondent or its predecessor-in-interest registered and renewed the disputed domain name. The disputed domain name exactly copies the MYCHART mark, with no additions or distinguishing features. Respondent had no apparent legitimate business associated with the MYCHART mark. Respondent appears to be in the business of offering pay-per-click services and registered the disputed domain name in order to unfairly capitalize on Complainant’s brand recognition and goodwill by diverting Internet traffic to its site. At least some of the links led to advertisements by Complainant’s competitors. Respondent is responsible for the content on its site even if automatically generated. Complainant attempted to contact Respondent through WhoIs as instructed on Respondent’s website, but this was impossible as Respondent employed a privacy service. Complainant contacted Respondent through the privacy service but did not receive a reply. Complainant engaged a third-party broker to negotiate purchase of the disputed domain name but Respondent responded that it was not interested in selling it. Complainant requests transfer of the disputed domain name. B. Respondent Respondent’s contentions may be summarized as follows: Under the first element, Respondent states that it is a web publishing and technology consulting company based in Florida, United States. Prior to incorporating in Florida in 2018, Responded was registered as a business in New York, where it maintained offices. Respondent publishes websites and social media accounts in the fields of online games, sports, entertainment, lifestyle, finance, and technology. The idea of “mychart.org” originated in 2014 as a volunteer project to create an open-source securities trading chart library for a financial services industry association. Respondent volunteered to procure an appropriate domain with an “.org” generic Top Level Domain (gTLD). Respondent purchased the disputed domain name on a domain aftermarket. The trading chart project was abandoned, but Respondent intends to maintain the disputed domain name to build a financial services product that provides a public good. The disputed domain name was selected because it is a generic and descriptive name for a charts product. Complainant’s rights are limited to software used in the healthcare field. The disputed domain name is similar, but not confusingly similar, to Complainant’s mark, since the mark has no secondary meaning for the general public. The confusing similarity is reduced by the “.org” gTLD, which is commonly used by not-for-profit projects. Complainant is a large commercial entity that does not provide any public goods. Under the second element, Respondent states that it has legitimate interests in the disputed domain name and therefore has rights in it. Respondent is a bona fide web publisher with an established track record of producing popular web forums and other sites. The publisher cannot be known by the names of all properties it publishes. The disputed domain name comprises a generic term, therefore, Respondent has the right to register it and a legitimate interest in having that domain developed as an open-source project or as any other type of site permitted by law. Respondent did not consider trademarking the term “my chart”, since that is a generic term. Under the third element, Respondent states that, in 2014, when it registered the disputed domain name, it was incorporated in another state. In 2018, it incorporated in a new state with shareholder and chain of asset ownership unchanged. Respondent is a bona fide web publisher that registers domains only when needed for developing new or supplementing existing web projects. It registered the disputed domain name due to the unavailability of the Respondent states that the disputed domain name has been unused for several years and was therefore not being used in bad faith. Respondent states that the sponsored links on the disputed domain name’s landing page were not a scheme to capitalize on unsuspecting clicks. Rather, Respondent’s business revenue consists only of the advertising it sells on developed properties. Respondent does not derive revenue from landing pages of undeveloped sites. Respondent’s domains are managed by a third party. Respondent rejects Complainant’s allegation that it manually removed sponsored links in response to receiving the Complaint. Respondent states that Complainant has mischaracterized the correspondence with a domain broker. Respondent informed the broker that the disputed domain name was not for sale, but the domain broker continued to make unsolicited offers. Complainant has falsely accused Respondent of driving up the price. Respondent disputes Complainant’s allegation that using a privacy service is evidence of bad faith. In fact, recent privacy legislation makes privacy a mandatory and default registration option. Respondent disputes Complainant’s allegation that the disputed domain name’s landing page was specifically targeted at Complainant’s customers. Instead, Google advertisements follow the user from site to site. Complainant’s counsel likely arrived at the landing page without clearing cookies, causing advertisements for health records software to appear. Any domain can be easily made to display advertisements on any topic. Respondent is intent on resuming the development of the “mychart.org” site. Respondent alleges that Complainant engaged in reverse domain name hijacking. Complainant knew or should have known that it could not prove the three elements under the UDRP but nevertheless proceeded to file the Complaint. The broker’s statements are unverified and cannot be relied upon. Complainant is a commercial enterprise that seemingly wishes to acquire a “.org” domain to create an appearance of being a non-profit venture or providing a public good. Complainant has filed a frivolous claim against a company that registered the disputed domain name to use it for the public good and contribute to building a decentralized financial system that the public urgently needs. Respondent requests the Panel to make a finding of reverse domain name hijacking against Complainant. C. Supplemental Filings 1. Complainant’s Supplemental Filing In its supplemental filing, Complainant requests leave to reply. According to Complainant, the Response raised new factual allegations based on non-public information, namely, documents and information about the origins of the disputed domain name and the reported acquisition of the disputed domain name by Respondent in 2014, though Respondent was formed in 2018. Complainant provides an affidavit stating that the number of activated MYCHART patient accounts grew significantly from 2013 to 2021. The popularity of MYCHART has been well-publicized, including a 2014 announcement of Complainant’s partnership with Apple, a time at which over 25 million MYCHART accounts had been activated. Complainant provides additional information concerning Complainant’s unsuccessful effort to purchase the disputed domain name. Complainant states that its broker informed Complainant that the offer was “likely” rejected as too low. Complainant is the uncontested owner of the MYCHART trademark and is providing a public good during the COVID-19 pandemic by giving away software valued at $500 million USD. A finding of reverse domain name hijacking is unsupported. 2. Respondent’s Supplemental Filing In its supplemental filing, Respondent states that its affidavit is indeed evidence proving its good faith at the time of registration of the disputed domain name in the course of bona fide business activity. Respondent restates that the disputed domain name contains words of a descriptive and generic nature. Respondent states that the disputed domain has been in an uninterrupted chain of custody since 2014, as Respondent’s business was registered in New York County prior to incorporating in Florida. Respondent is ready to provide evidence to this effect. Respondent states that it operates a bona fide business and that its rights and legitimate interests are substantiated by internal documents. Respondent states that the disputed domain name was registered in good faith. Complainant’s allegations of bad-faith use are not substantiated. The broker’s statements regarding Respondent’s rejection of Complainant’s offer to purchase the disputed domain name are hearsay. Complainant improperly relies on dated arguments and case law regarding the use of a privacy service as evidence of bad faith. Respondent states that all revenues from sponsored links flow to the registrar rather than to Respondent, which is a bona fide web publisher that does not derive revenue from domains that are in development. Complainant “flooded” Respondent with unsolicited offers to purchase the disputed domain name. Respondent had no duty to respond. Respondent disputes Complainant’s provided statement concerning the number of patient records. Respondent’s staff are unaware of Complainant. Respondent was not aware of Complainant’s arrangement with Apple as such information was not targeted at consumers. Respondent states that Complainant did not prove it was a concerned corporate citizen when it has greatly profited from public healthcare spending and reiterates its request for a finding of reverse domain name hijacking. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall 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”. A. Supplemental Filings The Panel has a duty to “ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case”. Rules, Paragraph 10(b). To this end, pursuant to Paragraph 12 of the Rules, “the Panel may request, at its sole discretion, further statements or documents from either of the Parties”. At the same time, however, pursuant to Paragraph 10(c) of the Rules, “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”. Accordingly, unsolicited supplemental filings are generally discouraged. Exceptionally, they may be accepted to consider material new evidence or to provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), Section 4.6, and cases cited thereunder. Complainant’s supplemental filing offers rebuttal to Respondent’s factual allegations concerning the origins of the disputed domain name and Respondent’s statements regarding the role of the DNS service to auto-populate the disputed domain name with content. The evidence provided by Respondent concerns non-public information that was not available to Complainant at the time of filing of the Complaint. Further, Respondent requests the Panel to make a finding of reverse domain name hijacking. In the view of the Panel, the new facts introduced by Respondent could not have been anticipated. Fairness dictates that Complainant be given a chance to present its arguments and evidence in response, and that Respondent, in turn, be given the opportunity to rebut or reply to such a statement. The Panel additionally notes that both filings were provided during the time the Panel was considering the case. The Panel therefore shall take into consideration the supplemental filings made both by Complainant and Respondent. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the MYCHART mark through registrations in the United States, Canada and internationally. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1. In comparing Complainant’s MYCHART mark with the disputed domain name, the Panel finds that the disputed domain name is identical to Complainant’s mark. It is the well-established view of WIPO UDRP panels that the gTLD “.org” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” Respondent challenges the distinctiveness of the MYCHART mark. However, the arguments provided in the Response and supplemental filing concerning the distinctiveness of the phrase “my chart” are not persuasive given Complainant’s many trademark registrations in a number of classes and jurisdictions going back many years. See WIPO Overview 3.0, section 1.1. The Panel holds that Complainant has proved that it holds relevant trademark rights that support a finding of standing to file the complaint, and that the disputed domain name is indeed identical to this mark. Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint, the Amended Complaint and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain name, Respondent had no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, which comprises Complainant’s registered and well-established MYCHART mark, cannot constitute a fair use because Respondent effectively impersonates or suggests sponsorship or endorsement by a trademark owner. See WIPO Overview 3.0, section 2.5.2. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent has not proved rights or legitimate interests. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the MYCHART mark with the permission of Complainant. By its own admission, Respondent’s company is called CGM Publishing LLC. This is clearly distinguishable from the disputed domain name. See generally also WIPO Overview 3.0, section 2.3. Respondent asserts that it wishes to use the disputed domain name in connection with a bona fide offering of goods or services. Its claim of an intended development project specifically for the The exceptions for noncommercial use do not apply, since the disputed domain name was used for a pay-per-click website with no evidence of any effort to mitigate an inference of targeting Complainant. Rather, the record contains evidence that the sponsored links brought users to Complainant’s competitors. It is well-established that providing such a website does not establish rights or legitimate interests. See, e.g., Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel,WIPO Case No. D2013-0585, and The Knot, Inc. v. In Knot We Trust Ltd, WIPO Case No. D2006-0350, Get Away Today.com., Inc. v. Warren Gilbert,WIPO Case No. DCO2010-0021. See also WIPO Overview 3.0, section 2.4, and cases cited thereunder. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or (ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The same facts that support an inference that Respondent lacks rights or legitimate interests in the disputed domain name also support an inference that Respondent registered and is using the disputed domain name to attract, for commercial gain, users to its website. The record shows that Complainant’s rights in the MYCHART mark predates Respondent’s registration of the disputed domain name by more than a decade. The Panel finds that, while the mark indisputably comprises ordinary words, this sign has sufficient distinctiveness to function as a mark as evidenced by its registration in numerous jurisdictions. Complainant has continually used the mark in connection with electronic health records since 2000, and the MYCHART services are used by millions of patients. The record contains evidence of high visibility in search results for the MYCHART mark. Indeed, in its supplemental filing, Respondent has included copies of press publications noting Complainant’s business success. The Panel therefore rejects Respondent’s contention that the mark is generic or purely descriptive, or known only to a very few, and that Respondent did not and could not have known about Complainant’s rights. See WIPO Overview 3.0, section 3.2.2. The Panel finds that Respondent, even with the additional opportunity presented by a supplemental filing, has not provided credible evidence to support its stated reasons for registering the disputed domain name. Respondent’s affidavit, while credible as a sworn statement by its principal, nevertheless does not establish that Respondent chose this disputed domain name in good faith. The reason given (“the decision to register the aforementioned domain was made purely and solely based upon its generic English-language qualities and without intent to infringe on any existing or future product or service”) could readily apply to any number of other domains. Respondent does not prove why it chose the disputed domain name out of all the possible domains that fit the criteria. Where the disputed domain name is identical to Complainant’s registered trademark, and there is a clear absence of rights or legitimate interests, it is difficult to credit Respondent’s statements as probative of good faith. See WIPO Overview 3.0, section 3.2.1. Further, Respondent, which conducts a business of registering and developing domain names, demonstrates willful blindness in failing to take any steps to avoid infringing Complainant’s registered trademark. See WIPO Overview 3.0, Section 3.2.3. The record is unambiguous that the disputed domain name was used for a pay-per-click site that was linked to advertisements placed by Complainant’s competitors and others connected to the healthcare industry. There is no evidence that Respondent attempted to mitigate this use of the disputed domain name. It is the view of this and previous panels that Respondent cannot disclaim responsibility for the sponsored links, even if automatically generated. See WIPO Overview 3.0, section 3.5. The Internet users in question were attracted to Respondent’s website via Complainant’s MYCHART trademark. Such conduct supports a finding of bad faith. See, for example, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396. Further, it is the view of this Panel and previous WIPO UDRP panels that it does not matter whether revenue generated by such advertising accrues to Respondent or the operator of the parking site. See SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497. Respondent argues for the propriety of using privacy services. It is the established view of WIPO UDRP panels that “[t]here are recognized legitimate uses of privacy and proxy registration services; the circumstances in which such services are used, including whether respondent is operating a commercial and trademark-abusive website, can however impact a panel’s assessment of bad faith.” WIPO Overview 3.0, section 3.6. In this case, the Panel notes that Respondent is not a private individual whose data is protected under the legislation mentioned by Respondent. Respondent is a legal entity, moreover, one engaged in the business of web publishing. Respondent shielded itself from contact by website visitors by failing to provide contact information and by publishing a statement that it could be reached through WhoIs. As Complainant demonstrated, this was not possible, nor did the privacy service enable communication with Respondent. Respondent was operating a website offering sponsored links connected to Complainant’s mark. The Panel finds that, on balance, on these facts the use of privacy service by Respondent additionally supports a finding of bad faith. Considering all these circumstances, the Panel finds that such registration and use of the mark supports a finding of bad faith. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy. D. Reverse Domain Name Hijacking Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Panel does not find reverse domain name hijacking in this case. Complainant is the holder of a registered trademark that is identical to the disputed domain name. At the time of the filing of the Complaint, Respondent’s identity and motivation were unknown to Complainant. There was no publicly available information that would cause Complainant to believe that the Complaint would fail. Complainant did not mislead the Panel nor omit any material disclosure. See WIPO Overview 3.0, section 4.16, and cases cited thereunder. The Panel finds that the facts do not support a finding that Complainant acted in bad faith and therefore denies Respondent’s request. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Ingrīda Kariņa-Bērziņa William R. Towns Hon. Karl V. Fink (Ret.)
- Canadian Trademark No. 0917978 for MYCHART (word mark), registered on December 20, 2006 for goods and services in Nice classes 1-45;
- International Trademark No. 1192719 for MYCHART (word mark), registered on December 27, 2013 for goods in class 9;
- European Union Trademark No. 012465381 for MYCHART (device mark), registered on May 19, 2014 for goods and services in classes 9, 42, and 44.
Presiding Panelist
Panelist
Panelist
Date: June 1, 2021
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