Centura Health Corporation v. Mason Soiza
Claim Number: FA2011001921905
Complainant is Centura Health Corporation (“Complainant”), represented by Chad Nitta of Kutak Rock LLP, Colorado. Respondent is Mason Soiza ("Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stanthonyevergreen.org>, registered with Dynadot, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 24, 2020; the Forum received payment on November 24, 2020.
On November 25, 2020, Dynadot, LLC confirmed by e-mail to the Forum that the <stanthonyevergreen.org> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 November 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 2020 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@stanthonyevergreen.org. Also on November 30, 2020, 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 December 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant, Centura Health Corporation, operates healthcare systems and physician practices in Colorado under the “St. Anthony” name. Complainant has common law rights in the ST. ANTHONY mark based on use of the mark in commerce. The disputed domain name is confusingly similar to Complainant’s mark because it contains the entire ST. ANTHONY mark and simply omits spaces and adds the geographic term “evergreen,” which refers to Complainant’s existing medical facilities.
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and is not affiliated with Complainant. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to pass off as Complainant, potentially engage in phishing, and divert users to Respondent’s “UK Meds” website by implying Complainant has endorsed Respondent’s business.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant, give the false impression that Complainant endorses Respondent’s prescription drug website, and to potentially engage in phishing. Additionally, Respondent has actual notice of Complainant’s rights in the ST. ANTHONY mark since Respondent attempts to pass off as Complainant.
B. Respondent
Respondent did not submit a formal response.
1. The disputed domain name was registered on April 28, 2020.
2. Complainant has established common law rights in the ST. ANTHONY mark, prior to the registration of the disputed domain name, based on its use of the mark in its advertising and marketing campaigns, as well as Complainant’s registration of trade names incorporating the mark with the Colorado Secretary of State.
3. Respondent uses the disputed domain name to host a counterfeit version of Complainant’s website, which features an endorsement of Respondent’s “UK Meds” business.
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 Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
Complainant claims common law rights in the ST. ANTHONY mark based on its use of the mark in its advertising and marketing campaigns, as well as Complainant’s registration of trade names incorporating the mark with the Colorado Secretary of State. Common law rights in a mark may be established through evidence that the mark has acquired a secondary meaning. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as Mar. 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).
Complainant provides evidence that the ST. ANTHONY mark has acquired a secondary meaning in connection with Complainant’s use of the mark in the registration of the “St. Anthony Health Center Evergreen” and “St. Anthony Physicians at Evergreen” trade names with the Colorado Secretary of State. Thus, the Panel finds that Complainant has established common law rights in the ST. ANTHONY mark.
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it contains the entire ST. ANTHONY mark and simply omits spaces and adds the geographic term “evergreen.” The omission of spaces and addition of a geographic term to a mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“The … elimination of spacing [is] considered irrelevant when distinguishing between a mark and a domain name.”); see also Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Complainant notes the term “evergreen” refers to Complainant’s existing Centura Health medical facilities. Therefore, the Panel finds that the disputed domain name is confusingly similar to the ST. ANTHONY mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not affiliated with Complainant. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of affiliation with a complainant constitutes a further showing that a respondent lacks rights in a mark. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). Here, the WHOIS information lists “Mason Soiza” as the registrant, the Sales and Marketing Director for “UK Meds Direct, Ltd.”, an online provider of prescription drugs. Furthermore, Complainant asserts neither Respondent nor “UK Meds” is affiliated with Complainant and no information suggests Complainant has authorized Respondent to use the ST. ANTHONY mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain to pass off as Complainant, potentially engage in phishing, and divert users to Respondent’s “UK Meds” website by implying Complainant has endorsed Respondent’s business. The use of a disputed domain name to pass off as a complainant, engage in phishing, and divert Internet users to a respondent’s own website does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see additionally Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant provides screenshots showing Respondent uses the disputed domain name to host a counterfeit version of Complainant’s St. Anthony Evergreen website, with broken links and a false recommendation for Respondent’s “UK Meds” website. Complainant contends the disputed domain name has the effect of diverting users away from Complainant’s legitimate website, preventing users from obtaining information about Complainant, creating a false impression that Complainant endorses Respondent’s website, and the domain name may potentially be used to phish for patient’s private health or financial information. Therefore, the Panel agrees with Complainant and finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As 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 has no rights or legitimate interests in the disputed domain name
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent uses the disputed domain name to pass off as Complainant, give the false impression that Complainant endorses Respondent’s prescription drug website, and to potentially engage in phishing. The Panel observes that the use of a disputed domain name to pass off as a complainant and to potentially engage in phishing is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's use of <lndeed.net> to misrepresent itself as the complainant by imitating the complainant’s website design supported a finding of bad faith); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see additionally Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”).
The Panel recalls that Complainant provides a screenshot showing Respondent uses the disputed domain name to host a counterfeit version of Complainant’s website, which features an endorsement of Respondent’s “UK Meds” business, and may be used to phish for patient’s private information. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stanthonyevergreen.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 29, 2020
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