SSM Health Care Corporation v. Clifton Marshall
Claim Number: FA2107001953621
Complainant is SSM Health Care Corporation (“Complainant”), represented by Renee Reuter, Missouri, USA. Respondent is Clifton Marshall (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ssmhealthmed.com>, registered with Hosting Concepts B.V. d/b/a Registrar.eu.
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.
Complainant submitted a Complaint to the Forum electronically on July 1, 2021; the Forum received payment on July 1, 2021.
On July 2, 2021, Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to the Forum that the <ssmhealthmed.com> domain name is registered with Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the name. Hosting Concepts B.V. d/b/a Registrar.eu has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Registrar.eu 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 July 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2021 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@ssmhealthmed.com. Also on July 7, 2021, 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 July 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in SSM HEALTH and submits that the disputed domain name is confusingly similar to its registered trademark. Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides health care services by reference to the trademark, SSM HEALTH, registered with the United States Patent and Trademark Office (“USPTO”) as, inter alia, Reg. No. 4,776,533, registered July 21, 2015;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark; and
3. the disputed domain name was registered on March 22, 2021.
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.
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.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant provides evidence of a national registration for the trademark SSM HEALTH and so the Panel finds that Complainant has rights in that trademark.
The domain name takes the trademark to which it adds the known abbreviation “med” (medical/medicine) and the “.com” generic top-level domain. Neither of those additions carry any distinctive value and the trademark remains the recognizable part of the disputed domain name. The Panel notes in passing that the USPTO registration is endorsed with a disclaimer to the word “HEALTH”, but nevertheless finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[ii].
Accordingly, Complainant has satisfied the first element of the Policy.
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 non-commercial 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[iii].
The publicly available WhoIs information shielded the name of the underlying domain name registrant by a privacy service but in consequence of these proceedings the Registrar disclosed the name of the holder as “Clifton Marshall”.
Neither that name, nor nothing else, suggests that Respondent might be known by the disputed domain name, nor is there evidence Respondent has trademark rights of its own. Thereafter, an unexplained oddity arises. In the Complaint as originally filed, the assertion was that the disputed domain name had not been used. In support was provided a June 30, 2021 screenshot which stated: “This site can’t be reached”. For other reasons the original Complaint was subject to a deficiency letter from the Forum and it seems that Complainant took the opportunity when amending the Complaint to also change its claim in this respect to state that the “[d]omain Name points to a website that features links to a link farm using a pay-per-click scheme.” There is no evidence of that new claim nor any explanation as to why the amendment was made. Indeed, at one level, were these proceedings contested by Respondent then a procedural issue may have arisen.
The Panel has made its own enquiry and finds no evidence of that new claim; the domain name appears still not to be in use and so in these somewhat unsatisfactory circumstances the Panel has adopted the claim made in the original Complaint. This has some consequence in terms of the analysis of the third element, below.
There is nothing to show that the domain name has been used in any other way in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name[iv].
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Complaint is oddly presented. In both its original and amended forms it does not follow the Policy in any linear manner but, rather, makes a series of points related to some, but not all, matters requiring proof under the Policy. It does not, for example, argue for the application of any of those four scenarios. Nor does it have to,[v] but in consequence it must show registration and use in bad faith when it has not proven any use of the domain name. On one reading, then, the Complaint would fail but for the Panel’s willingness to look more closely at facts.
Complainant states that it:
“provides comprehensive health needs of communities in Illinois, Missouri, Oklahoma and Wisconsin through a robust and fully integrated health care delivery system. With over 40,000 employees and 11,000 providers, Complainant offers services through 23 hospitals, nearly 300 physician offices and other outpatient and virtual care services, 10 post-acute facilities, comprehensive home care and hospice services, a pharmacy benefit company, a health insurance company and an accountable care organization. It is one of the largest employers in every community it serves.”
There is no direct evidence of any of those claims and were the matter for determination one of common law rights under paragraph 4(a)(i) of the Policy, the Panel would not be prepared to find those rights established. However, the Panel is entitled to accept reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory[vi] and so can give some credibility to those uncontested assertions. Additionally, the evidence shows that the earliest of Complainant’s USPTO trademark registrations (for a stylistic mark including the same word elements) carries a claim to first use in commerce of that mark in 2014.
Respondent is located in the United States and based on the Panel’s acceptance that the evidence suggests some level of notoriety in a part of the United States, actual knowledge of the trademark by Respondent may be reasonably inferred.[vii] The Panel has already found the disputed domain name to be confusingly similar to the trademark; addition of the element “med” by its nature imports some association with or endorsed by Complainant. Further, the Panel reminds itself that the Respondent’s identity was shielded by a privacy service. Absent a reasoned Response, the Panel has not been presented with any reason for adoption of Complainant’s mark and, taken as a whole, the evidence justifies the Panel’s finding of registration in bad faith.
This leaves to be considered use in bad faith where there is no use. The Panel refers to the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: “what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?”, concluding that “the question can only be answered in respect of the particular facts of a specific case”, whereafter he paid regard to circumstances showing that (i) the complainant’s trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was 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.
Not all the circumstances coincide. In particular, there is a lesser reputation likely to be at stake here, but there is just enough in this Panel’s assessment to draw a finding of passive holding and “use” in bad faith.
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ssmhealthmed.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: August 9, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i). The Panel has in this case disregarded the effect of the disclaimed word since, either (i), taking a view of the overall resemblance of the compared terms, or (ii) taking the (perhaps, better) view that the letters SSM are the dominant part of the registered mark, the result is inevitably that the terms are confusingly similar.
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
[v] See, for example, Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances.
[vi] See, for example, 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; 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.”)
[vii] See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
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