Prisma Health f/k/a SC Health Company v. lin yanxiao
Claim Number: FA2203001988975
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 lin yanxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myprismahealth.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2022; the Forum received payment on March 19, 2022.
On March 22, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <myprismahealth.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 March 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2022 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@myprismahealth.org. Also on March 28, 2022, 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 April 24, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that is the second-largest private company in South Carolina with nearly 30,000 employed team members, including more than 1,650 employed physicians and nearly 5,000 nurses that operate eighteen (18) acute care and specialty hospitals and approximately 270 physician practice sites/offices.
During Fiscal Year 2020 alone, Complainant Prisma Health’s operations had $4.9 billion of operating revenue and provided medical services to approximately 1.4 million unique patients, during 4.8 million physician practice visits.
Complainant claims rights in the PRISMA HEALTH mark acquired by its ownership of the United States of America registered service mark described below and its extensive use of the mark in its healthcare business since early in the year 2019 following a merger of two entities.
Complainant asserts that the disputed domain name <myprismahealth.org> is confusingly similar to its PRISMA HEALTH service mark arguing that its service mark is the dominant element of the disputed domain name and only the generic term “my” has been added.
Complainant argues that appending the generic term “my” does not minimize or avoid confusion between the disputed domain name and Complainant’s registered service mark. Citing American Automobile Association, Inc. v. Cameron Jackson, WIPO Case No. D2016-1671 (“Adding a generic term is not sufficient to escape a finding of confusing similarity and does not change the overall impression of the disputed domain name as being connected to the Complainant’s trademark.”).
Complainant adds that because of the similarity of the disputed domain name and Complainant’s mark, it is likely that confusion will be caused by any website associated with the disputed domain name which will suggest, and lead consumers to believe, that there is an association between the disputed domain name and Complainant or that the website to which it resolves is endorsed by Complainant.
Complainant further contends that Respondent has intentionally registered the disputed domain name on the same generic top-level domain as Complaint’s own domain name <prismahealth.org> which is used as Complainant’s website.
Complainant also submits that the mere addition of the generic Top-Level Domain (“gTLD”) extension is irrelevant to determining confusing similarity between the disputed domain name and Complainant’s mark and does not prevent a finding of confusing similarity between the disputed domain name and the PRISMA HEALTH mark. Citing G4S Plc v. Noman Burki, WIPO Case No. D2016-1383 (“First, the Panel notes that the mere addition of the gTLD ‘.com’ is insufficient to differentiate a disputed domain name from a mark as it is a technical requirement of registration.”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that, as evidenced by the original WHOIS information, exhibited in an annex to the Complaint, the registrant’s identity is privacy-protected on the published WhoIs. Complainant adds that there is no other evidence available to show that Respondent is otherwise commonly known by the disputed domain name.
Accordingly, Respondent is not commonly known by the <myprismahealth.org> domain name. See Tencent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent is not a licensee of Complainant, nor is Respondent authorized or permitted to use Complainant’s PRISMA HEALTH trademark, nor is Respondent in privity with Complainant on any other basis.
Per 15 U.S.C. § 1072, Complainant’s trademark application (filed over three years before Respondent created the disputed domain name), which resulted in Complainant’s Federal Trademark Registration of the PRISMA HEALTH mark, constitutes constructive notice to the Respondent of the Complainant’s claim and right of ownership of the PRISMA HEALTH mark as a matter of U.S. law.
According to the WHOIS information, Respondent created the disputed domain name on January 9, 2022, but Complainant’s federally registered trademark is afforded a constructive use date and priority of April 4, 2018, the application filing date. Complainant argues that therefore its registered rights in the PRISMA HEALTH mark precede Respondent’s domain creation date on January 9, 2022 by more than three years.
Referring to a screen capture exhibited in an annex to the Complaint, Complainant submits that Respondent uses the disputed domain to host links that will connect users to healthcare services or purport to offer healthcare services (e.g., orthopedic healthcare services in the Carolinas), which are related to Complainant’s healthcare services and are intended to mislead parties to believe the Respondent’s website is associated with Prisma Health and/or its healthcare services.
Complainant asserts that such use of the disputed domain name for offering healthcare services that are not associated with Complainant does not constitute a legitimate or proper use.
Moreover, Complainant contends that there is no evidence to suggest that Respondent is a legitimate authorized dealer or provider of any such healthcare products or services, and argues that Respondent’s use of the disputed domain name will mislead parties into wrongfully believing that Respondent’s website to which the disputed domain name resolves, the <myprismahealth.org> and the services or information shown or offered thereon are associated with the PRISMA HEALTH trademark or are endorsed by Complainant.
Thus, Respondent is using the disputed domain name for the illegitimate purpose of unauthorized use of the Complainant’s goodwill associated with the PRISMA HEALTH mark to compete with or be closely related to Complainant’s main line of business, namely providing healthcare services and products under PRISMA HEALTH mark.
Complainant adds that such use is likely to confuse the public.
Furthermore Complainant argues that because the disputed domain name includes links to the websites of healthcare facilities based in the Carolinas, it appears to suggest it will advertise or offer services that are related to or in competition with that of the Complainant and is likely to cause customer confusion.. Respondent’s website confuses the public and blurs the goodwill associated with Complainant’s PRISMA HEALTH mark, causing Complainant’s reputation to suffer.
Thus, Respondent’s use of the disputed domain name, as alleged, is not 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).
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent was aware of Complainant when the disputed domain name was registered.
Since the letter string P-R-I-S-M-A does not spell a common word in ordinary usage, the implausibility of selecting the letter string P-R-I-S-M-A H-E-A-L-T-H in the absence of actual knowledge of Complainant’s rights in the PRISMA HEALTH mark further supports the finding of Respondent’s actual knowledge of Complainant’s rights in the PRISMA HEALTH mark.
Complainant submits that therefore the disputed domain name was registered to target Complainant’s rights in the PRISMA HEALTH mark. See Compagnie Generale des Etablissements Michelin v. Michel Wijkstra, WIPO Domain Name Decision D2015-0751 (June 17, 2015) (holding that bad faith use may be found when the Respondent “knew or should have known” of the Complainant’s trademark rights and, nevertheless registered the Disputed Domain Names in which he had no right or legitimate interest).
Complainant adds that It can be inferred that Respondent had constructive knowledge of Complainant’s rights in the PRISMA HEALTH trademark because of Complainant’s registered service mark rights.
Furthermore, Complainant argues that by using the disputed domain to resolve to a website, Respondent has intentionally targeted Complainant, which evidences Respondent’s bad faith. For example, Respondent has included click-through links on the disputed domain to the websites of competing medical companies based in the Carolinas, where Complainant is based as shown in the screen captures of Respondent’s website exhibited in an annex to the Complaint.
Given the direct association with Complainant and the geographic proximity of the market targeted by Respondent, it can be inferred that Respondent had actual knowledge of Complainant’s rights in the PRISMA HEALTH trademark and registered the disputed domain in bad faith.
Complainant adds that Respondent never replied to Complainant’s cease and desist letter notifying the Respondent of Complainant’s rights in the PRISMA HEALTH mark and requesting a reply and argues that Respondent’s failure to contest the Complainant’s assertion of rights in the PRISMA HEALTH mark supports a finding of bad faith registration and use.
Complainant adds that Respondent has been identified in nearly 20 UDRP proceedings before the Forum, which have been listed in an annex to the Complaint, where bad faith was found.
Complainant further submits that Respondent has also registered a second domain <prismahealthcare.org> targeting Complainant which is the subject of another UDRP proceeding pending before the Forum and argues that the foregoing establishes a significant and ongoing pattern of bad faith registration and use of domain names by Respondent, supporting the conclusion that Respondent registered the disputed domain name <myprismahealth.org> in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a not-for-profit healthcare enterprise based in South Carolina, United States of America which commenced its use of the PRISMA HEALTH mark in 2019 following a merger of two healthcare enterprises in 2019. The merger was announced as early as September 25, 2018.
Complainant is the owner of United States of America registered service mark PRISMA HEALTH, registration number 5,735,179, registered on the Principal Register on April 23, 2019, for services in international classes 35, 41 and 44, pursuant to an application filed on April 4, 2018, claiming first use in commerce on January 16, 2019,
Complainant has an established Internet presence. It is the owner of the domain name <prismahealth.org>, which was created on January 16, 2919, and maintains its website at <https://prismahealth.org>.
The disputed domain name <myprismahealth.org> was registered on January 9, 2022 and resolves to a website with what appear to be pay-per-click links.
There is no information available about Complainant except for that provide in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name in the course of this proceeding. The Registrar has confirmed that Respondent, who has availed of a privacy service to conceal his identity on the published WhoIs, is the registrant of the disputed domain name.
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 has provided convincing evidence that rights in the PRISMA HEALTH mark, established by its ownership of the United States service mark registration described above and extensive use of the mark in its healthcare business in South Carolina since the entity and brand was created by a merger in 2019.
The disputed domain name <myprismahealth.org> onsists of Complainant’s mark in its entirety, with the prefix ”my” and the generic Top Level Domain (“gTLD”) extension <.org>.
Complainant’s PRISMA HEALTH mark is the dominant and only distinctive element in the disputed domain name. The prefix “my” adds no distinguishing character to the disputed domain name.
Neither does the gTLD extension <.org> add any distinguishing character as it would be considered by Internet users as a necessary technical requirement for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the PRISMA HEALTH mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· as evidenced by the original WHOIS information, exhibited in an annex to the Complaint, the registrant’s identity is privacy-protected on the published WhoIs and there is no evidence available to show that Respondent is commonly known by the disputed domain name;
· Respondent is not a licensee of Complainant;
· Respondent authorized or permitted to use Complainant’s PRISMA HEALTH trademark, nor is Respondent in privity with Complainant on any other basis;
· Complainant’s trademark application for PRISMA HEALTH was filed on April 4, 2018 resulting in the service mark registration on April 23, 2019, whereas the disputed domain name was registered on January 9, 2022, therefore Respondent had both actual notice of Complainant’s rights as well as constructive notice to the Respondent of the Complainant’s claim and right of ownership of the PRISMA HEALTH mark as a matter of U.S. law when the disputed domain name was registered;
· The screen capture exhibited in an annex to the Complaint shows that Respondent uses the disputed domain name as the address of a website to host links that will connect users to healthcare services or purport to offer healthcare services (e.g., orthopedic healthcare services in the Carolinas), which are related to Complainant’s healthcare services and are intended to mislead parties to believe the Respondent’s website is associated with Prisma Health and/or its healthcare services;
· such use of the disputed domain name for offering healthcare services that are not associated with Complainant does not constitute a legitimate or proper use.
· Moreover, there is no evidence to suggest that Respondent is a legitimate authorized dealer or provider of any such healthcare products or services, and Respondent’s use of the disputed domain name will mislead parties into wrongfully believing that Respondent’s website to which the disputed domain name resolves, and the services or information shown or offered thereon are associated with the PRISMA HEALTH trademark or are endorsed by Complainant;
· Respondent is using the disputed domain name for the illegitimate purpose of unauthorized use of the Complainant’s goodwill associated with the PRISMA HEALTH mark to compete with or be closely related to Complainant’s main line of business, namely providing healthcare services and products under PRISMA HEALTH mark. Complainant adds that such use is likely to confuse the public;
· because the disputed domain name includes links to the websites of healthcare facilities based in the Carolinas, it appears to suggest it will advertise or offer services that are related to or in competition with that of the Complainant and is likely to cause customer confusion;
· the content hosted on the website to which the disputed domain name resolves, confuses the public and blurs the goodwill associated with Complainant’s PRISMA HEALTH mark, causing Complainant’s reputation to suffer;
· thus, Respondent’s use of the disputed domain name, as alleged, is not 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).
It is well established that once a complainant makes out a prima facie case that a complainant has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests. Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant’s trademark rights predate the registration of the disputed domain name and by the time that the disputed domain name was registered
Complainant had an established Internet presence and a substantial healthcare business in South Carolina, with nearly 30,000 employed team members, including more than 1,650 employed physicians and nearly 5,000 nurses that operate eighteen (18) acute care and specialty hospitals and approximately 270 physician practice sites/offices. During Fiscal Year 2020 alone, Complainant Prisma Health’s operations had $4.9 billion of operating revenue and provided medical services to approximately 1.4 million unique patients, during 4.8 million physician practice visits.
Furthermore as argued by Complainant, the letter string P-R-I-S-M-A does not spell a common word in ordinary usage and it is implausible that the registrant of the disputed domain name selected the elements “prisma” and “health” in the absence of actual knowledge of Complainant’s business and rights in the PRISMA HEALTH mark.
On the balance of probabilities therefore, this Panel finds that the disputed domain name was registered in bad faith with the intention of targeting and taking predatory advantage of Complainant’s mark and goodwill in the PRISMA HEALTH mark.
The uncontested evidence shows that Respondent is using the disputed domain name as the address of a website that on the balance of probabilities displays pay-per-click links.
Complainant has submitted screen captures which show that the website displays links to healthcare providers as evidence of Respondent’s intention to target Complainant. This Panel does not necessarily accept that these links would be the same for all devices accessing Respondent’s website.
However the uncontested evidence is that on the balance of probabilities Respondent is using Complainant’s trademark to attract Internet users to his website. Such use constitutes an attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site and the services purported to be offered by Respondent on his web site constitutes use of the disputed domain name in bad faith for the purposes of the Policy.
This finding is supported by the fact that Responded availed of a privacy service to conceal his identity on the published WhoIs, has not responded to the Complaint, and has not responded to Complainant’s cease and desist letter.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myprismahealth.org> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: April 26, 2022
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