Prisma Health f/k/a SC Health Company v. James Brunson
Claim Number: FA2204001991504
Complainant is Prisma Health f/k/a SC Health Company ("Complainant"), represented by Jason A. Pittman of Dority & Manning, P.A., South Carolina, USA. Respondent is James Brunson ("Respondent"), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <prismahealth.co>, <prismahealth.info>, and <prismahealth.technology>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 7, 2022; the Forum received payment on April 7, 2022.
On April 8, 2022, GoDaddy.com, LLC confirmed by email to the Forum that the <prismahealth.co>, <prismahealth.info>, and <prismahealth.technology> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 April 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registrations as technical, administrative, and billing contacts, and to postmaster@prismahealth.co, postmaster@prismahealth.info, postmaster@prismahealth.technology. Also on April 13, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 registrations as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the second largest private company in South Carolina and operates the largest non-profit healthcare system in the state, with nearly 30,000 employees serving approximately 1.4 million patients in 2020. Complainant announced on September 25, 2018, that it would be adopting the PRISMA HEALTH mark, and commenced use of the mark in early 2019. Complainant owns a United States trademark registration for PRISMA HEALTH in standard character form.
Respondent registered the disputed domain names <prismahealth.co>, <prismahealth.info>, and <prismahealth.technology> via a privacy registration service on September 25, 2018, the same day that Complainant announced that it would be adopting the PRISMA HEALTH mark. The domain names resolve to parked pages composed of pay-per-click links related to health care, including links to Complainant and its competitors. Complainant states that Respondent is not commonly known by the domain names, has no relationship with Complainant, and is not authorized or permitted to use Complainant's mark. Complainant notes also that Respondent resides in South Carolina, one of Complainant's primary areas of operation.
Complainant contends on the above grounds that the disputed domain names <prismahealth.co>, <prismahealth.info>, and <prismahealth.technology> are identical or confusingly similar to its PRISMA HEALTH mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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.
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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of the disputed domain names <prismahealth.co>, <prismahealth.info>, and <prismahealth.technology> corresponds to Complainant's registered PRISMA HEALTH trademark, with the space omitted and a top-level domain (".co," ".info," or ".technology") appended thereto. The omission of spaces and the addition of a top-level domain are normally irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Prisma Health f/k/a SC Health Co. v. Qian Mengdan, FA 1959595 (Forum Sept. 14, 2021) (finding <wwwprismahealth.org> confusingly similar to PRISMA HEALTH); Premise Health Holding Corp. v. Elizabeth Reimer / Premise Health, FA 1925647 (Forum Jan. 22, 2021) (finding <premisehealth.co> identical to PREMISE HEALTH); CVS Pharmacy, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Andris Tukiss, D2020-1298 (WIPO July 18, 2020) (finding <cvshealth.info> identical or confusingly similar to CVS and CVS HEALTH); Time Warner Inc. v. David Rahmany / Dme, FA 1622087 (Forum June 26, 2015) (finding <timewarner.technology> identical or confusingly similar to TIME WARNER). The Panel therefore considers the disputed domain names to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names correspond to Complainant's registered mark without authorization, and they are being used to display parked pages composed of pay-per-click links, including links to competitors of Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Prisma Health f/k/a SC Health Co. v. Qian Mengdan, supra (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "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 [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register three domain names corresponding to Complainant's mark on the same day that Complainant announced that it was adopting the mark. The domain names are being used for parked pages composed of pay-per-click links, including links to competitors of Complainant. Respondent has not come forward with any explanation for the selection of the domain names or their intended use. These circumstances are indicative of bad faith under some or all of the provisions cited above. See, e.g., Prisma Health f/k/a SC Health Co. v. Qian Mengdan, supra (finding bad faith where domain name incorporating PRISMA HEALTH mark was registered on Sept. 29, 2018, and used to display competitive hyperlinks); RH US, LLC v. Domain Admin / Whois Privacy Corp., FA 1788872 (Forum July 2, 2018) (finding bad faith where respondent used privacy registration service to register domain name corresponding to complainant's mark and used the domain name to display parked page composed of pay-per-click links); Target Brands, Inc. v. M. V. P. / MV Professional Marketing Services, FA 1644580 (Forum Dec. 8, 2015) (finding bad faith where multiple domain names combining two companies' marks were registered one day after public announcement of joint venture). The Panel finds that the disputed domain names were registered and are being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prismahealth.co>, <prismahealth.info>, and <prismahealth.technology> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 10, 2022
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