Prisma Health f/k/a SC Health Company v. RANDY FULLER / Kilato Investment Group
Claim Number: FA2105001945808
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 RANDY FULLER / Kilato Investment Group (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <prismahealthuniforms.com> and <prismahealthscrubs.com> (‘the Domain Names’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2021; the Forum received payment on May 20, 2021.
On May 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <prismahealthuniforms.com> and <prismahealthscrubs.com> 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 May 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@prismahealthuniforms.com, postmaster@prismahealthscrubs.com. Also on May 25, 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 June 21, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark PRISMA HEALTH registered in the USA for medically related services since 2019. It owns the domain name prismahealth.org.
The Domain Names registered in January 2021 are confusingly similar to the Complainant’s mark. Adding the generic terms ‘scrubs’ or ‘uniforms and the gTLD “.com” does not prevent said confusing similarity.
Respondent does not have rights or legitimate interests in the Domain Names, is not affiliated with the Complainant in any way and the Complainant has not given the Respondent any permission to use the Complainant’s mark.
Respondent is not commonly known by the Domain Names.
The Respondent is using the Domain Names to redirect users to an ostensibly competing web site thescrubshop.com but which bears only a holding page indicating it is coming soon which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Domain Name has been registered and used in bad faith in actual knowledge of the Complainant’s rights and disrupting its business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark PRISMA HEALTH registered in the USA for medically related services since 2019. It owns the domain name <prismahealth.org>.
The Domain Names registered in January 2021 have been pointed to a competing web site <thescrubshop.com> although it only bears a holding page at present indicating it is coming soon.
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”).
The Domain Names consists of the Complainant’s PRISMA HEALTH trade mark (registered in the USA for medically related services and registered in 2019) the generic term ‘scrubs’ or ‘uniforms’ and the gTLD “.com”. Adding the generic term ‘scrubs’ or ‘uniforms’ to the Complainant’s registered mark does not prevent confusing similarity between the Domain Names and the Complainant’s mark which is still clearly recognizable in the Domain Names. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms does not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).).
The gTLD “.com” is a necessary component of a domain name. It forms a functional role in the Domain Names and does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Names appear to have been pointed to a site set up to compete with the Complainant thescrubshop.com although the site presently indicates it is coming soon. Using a domain name for competing services or to supply competing products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register domain names containing both elements of the Complainant’s mark which is distinctive for medically related services.
Use for a web site ostensibly competing with the Complainant albeit it only says it is coming soon at present indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and indicates actual knowledge of the Complainant and its business. In the opinion of the Panelist the use made of the Domain Names in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site or services or products offered on it likely to disrupt the business of the Complainant.
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and (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 <prismahealthuniforms.com> and <prismahealthscrubs.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 21, 2021
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