ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Emory University, Emory Healthcare, Inc. v. gram troz Case No. D2024-4553 1. The Parties Complainants are Emory University and Emory Healthcare, Inc., United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States. Respondent is gram troz, United States. 2. The Domain Name and Registrar The Disputed Domain Name is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2024. On November 6, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2024, 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 (“Redacted for Privacy, PrivacyGuardian.org”) and contact information in the Complaint. The Center sent an email communication to Complainant on November 6, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed a simple amendment to the Complaint on the same date. The Center verified that the Complaint together with the amendment to the 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 November 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 29, 2024.
page 2 The Center appointed Richard W. Page as the sole panelist in this matter on December 3, 2024. The Panel finds that it was properly constituted. 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 First Complainant, Emory University, is one of the leading research universities, recognized internationally for its outstanding liberal arts colleges, graduate, and professional schools, and one of the United States’ most comprehensive academic health care systems. It controls Second Complainant, Emory Healthcare, Inc., which is organized, and at all times has operated, exclusively for charitable, educational, and scientific uses and purposes for the benefit of, to perform the functions of, or to carry out the purposes of First Complainant. Unless otherwise specified, the First and Second Complainant’s shall be collectively referred to as “Complainant”. First Complainant dates back to 1836, when the Georgia Methodist Conference received a charter to establish a college at Oxford, Georgia (United States) named after Bishop John Emory. In 1914, Asa G. Candler, founder of The Coca-Cola Company, offered a generous donation to start a new Methodist university in Atlanta; that university became the First Complainant, which was established in Atlanta after Emory College moved from Oxford, Georgia. First Complainant is comprised of nine colleges and schools attended by more than 8,000 undergraduate and more than 7,000 graduate students. First Complainant has two academic campuses, in Atlanta, Georgia, and Oxford, Georgia. Its more than 3,500 regular full-time faculties, includes two recipients of the Pulitzer Prize and two recipients of the Nobel Peace Prize. First Complainant employs more than 13,00 full- and part-time university staff members and more than 30,000 health care employees, making it the largest employer in Atlanta. US News & World Report has recently recognized First Complainant as number 24 on its list of national universities and First Complainant’s Hospital as number 1 on its list of the best Hospitals in Georgia. Second Complainant is one of the most comprehensive academic health systems in Georgia, dedicated to innovating medicine, teaching the caregivers of the future, and supporting the healthcare needs of its patients. It is made up of 10 hospitals, the Emory Clinic, and more than 490 provider locations. The Second Complainant’s network, established in 2011, is one of the largest clinically integrated network in Georgia, with more than 3,450 physicians concentrating in 70 different subspecialties. First Complainant is the registrant of the domain name , which was created on June 2, 1986, and which it uses in connection with its primary website. Complainant operates the domain name , which was created February 1, 2000, and which Second Complainant uses in connection with its primary website. Complainant owns at least five trademark registrations at the United States Patent and Trademark Office (“USPTO”) for marks that consist of or contain the word “Emory,” which was first used at least as early as 1836, and was registered at least as early as March 25, 1997 (collectively the “EMORY Mark”).
page 3 Complainant’s trademark registrations, include without limitation: United States Registration No. 2,382,245 for EMORY, registered September 5, 2000, for use in connection with “educational services”; United States Registration No. 2,225,907 for EMORY HEALTHCARE, registered February 23, 1999, for use in connection with “inpatient and outpatient medical services”; and United States Registration No. 2,340,117 for EMORY UNIVERSITY registered April 11, 2000, for use in connection with, inter alia, “educational services.” The Disputed Domain Name was registered on October 17, 2014, and is being used with an employment phishing scam seeking applicants for non-existent jobs. 5. Parties’ Contentions A. Complainant Complainant contends that it has enforceable rights in the EMORY Mark and that the Disputed Domain Name is confusingly similar to the EMORY Mark. Complainant further contends that the Disputed Domain Name contains the EMORY Mark in its entirety. Inclusion of the descriptive words “hr” (an abbreviation for “human resources”), “mgt” (an abbreviation for “management”), and “group” does nothing to diminish confusing similarity. Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant further alleges that it has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the EMORY Mark in any manner. Complainant further alleges that Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name. Complainant further alleges that Respondent has configured mail exchange (“MX”) records for the Disputed Domain Name, enabling Respondent to send and receive email with addresses that use the Disputed Domain Name. Complainant further alleges that Respondent sent emails as to a recipient who became suspicious and sent the email chain to Complainant. Respondent used an email address containing the Disputed Domain Name, in which Respondent falsely claimed to be a “Human Resources manager” offering a position with Second Complainant. Respondent advertised a fake “Patient Care Coordinator position” with Second Complainant and offered the position to the recipient at “a monthly salary of [USD] 7,943.18 and training payment of [USD] 41.00 per hour.” Respondent further promised the recipient “funds for the purchase of” a “MacBook Pro” and other equipment. Complainant further alleges that, through these actions, Respondent is impersonating Complainant in connection with an employment phishing scam seeking applicants for non-existent jobs. Complainant further alleges that, according to a report form VirusTotal, a service that analyses files and URLs for viruses, worms, trojans and other kinds of malicious content, the security vendor, Trustwave, has reported that the Disputed Domain Name is associated with phishing activities.
page 4 Complainant further alleges that impersonation and phishing can be neither bona fide offering of goods and services, nor establish legitimate interests and do not confer rights in the Disputed Domain Name upon Respondent. Complainant submits that Respondent also uses the Disputed Domain Name in connection with a pay-per-click (“PPC”) or monetized parking page that includes links for various services, including educational and healthcare services related to Complainant and/or the EMORY Mark, such as “Healthcare Management Services” and “Master’s Degree in Health Administration.” Complainant further submits that it had been in business for decades when the Disputed Domain Name was registered, and that the registrations for the EMORY Mark preceded the registration of the Disputed Domain Name by many years. Complainant further submits that it is implausible that Respondent was unaware of Complainant’s rights in the EMORY Mark at the time the Disputed Domain Name was registered. Complainant further submits that such activities related to the Disputed Domain Name and constructive knowledge of Complainant’s EMORY Mark constitute registration and use of the Disputed Domain Name in bad faith. Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Preliminary issue: Multiple Complainants The Panel considered that the Complaint has been filed on behalf of multiple Complainants. Multiple Complainants have standing to file the Complaint against a single Respondent when: (i) Complainants have a specific common grievance against Respondent, or Respondent has engaged in common conduct that has affected Complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Question, Third Edition (“WIPO Overview 3.0”), section 4.11.1. Also, a trademark owner’s affiliate such as a subsidiary of a parent or of a holding company, or an exclusive trademark licensee, is considered to have rights in a trademark under the UDRP for purposes of standing to file the Complaint. Furthermore, the Panel notes that both Complainants are the owners of trademarks comprised by “Emory”. As a result, the Panel accepts the consolidation of multiple Complainants. WIPO Overview 3.0, section 1.4. Substantive Merits Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.” Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the three essential elements of the claims are met. WIPO Overview 3.0, section 4.3.
page 5 Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three elements: i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the EMORY Mark in which Complainant has rights; and, ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar WIPO Overview 3.0, section 1.2.1 states that a trademark registration is prima facie evidence of Complainant having enforceable rights in the EMORY Mark. Complainant has shown rights in respect of the EMORY Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. 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 EMORY Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7. The entirety of the EMORY Mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to the EMORY Mark for purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here “hr,” “mgmt,” and “group” (and/or “healthcare” depending on the EMORY-formative mark being compared to), may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Name and the EMORY Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. Paragraph 4(c) of the Policy allows three non-exclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name: (i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are 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 EMORY Mark. Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving Respondent lacks rights or legitimate interests in the Disputed Domain Name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks
page 6 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 (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise. Panels have held that the use of the Disputed Domain Name for illegitimate activity, here claimed as impersonation and phishing, can never confer rights or legitimate interests on a Respondent. WIPO Overview 3.0, section 2.13.1. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of the Disputed Domain Name in bad faith. Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name: (i) circumstances indicating that you [Respondent] have registered or you have 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 EMORY Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or (ii) you [Respondent] have registered the Disputed Domain Name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the EMORY Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product on your website or location. As noted above, Complainant submits that Respondent uses the Disputed Domain Name in connection with a PPC or monetized parking page that includes links for various services, including educational and healthcare services related to Complainant and/or the EMORY Mark, such as “Healthcare Management Services” and “Master’s Degree in Health Administration.” Such activities meet the essential elements of paragraph 4(b(iv) of the Policy. The Respondent has also used te Disputed Domain Name in a fraudulent email scheme. Panels have held that the use of a disputed domain name for illegitimate activity, here claimed as impersonation and phishing, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy.
page 7 The Panel finds that Complainant has established the third element of the Policy. 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 be transferred to Complainant. /Richard W. Page/ Richard W. Page Sole Panelist Date: December 11, 2024
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