Priority Health v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2006001900478
Complainant is Priority Health (“Complainant”), represented by Amber Underhill of Warner Norcross + Judd LLP, United States. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <priorityhealth.org>, registered with Internet Domain Service BS Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2020; the Forum received payment on June 16, 2020.
On June 18, 2020, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <priorityhealth.org> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 June 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@priorityhealth.org. Also on June 22, 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 July 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant, Priority Health, offers a broad portfolio of health benefits options for employer groups and individuals. Complainant has rights in the PRIORITY HEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,387,435, registered Oct. 6, 2008). See Amend. Compl. Ex. A. Complainant’s rights in the PRIORITY HEALTH mark date back to at least 1992 based upon Complainant’s earliest use of the mark. Respondent’s <priorityhealth.org> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s PRIORITY HEALTH mark and merely adds the “.org” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <priorityhealth.org> domain name. Respondent is not licensed or authorized to use Complainant’s PRIORITY HEALTH mark and is not commonly known by the disputed domain name. 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 disputed domain to host a parked webpage that diverts users to sites that compete with Complainant.
Respondent registered and uses the <priorityhealth.org> domain name in bad faith. Specifically, Respondent attempts 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 the website. Respondent also disrupts Complainant’s business by redirecting Complainant’s customers to competing businesses.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that offers a broad portfolio of health benefits options for employer groups and individuals.
2. Complainant has established its trademark rights in the PRIORITY HEALTH mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 3,387,435, registered Oct. 6, 2008). However,Complainant’s trademark rights in the PRIORITY HEALTH mark date back to at least 1992 based upon use of the mark in commerce since then.
3. Respondent registered the disputed domain name on October 8, 2004.
4. Respondent uses the disputed domain to host a parked webpage that diverts users to sites that compete with Complainant.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the PRIORITY HEALTH mark based upon its registration of the mark with the USPTO (e.g., Reg. No. 3,387,435, registered Oct. 6, 2008). See Amend. Compl. Ex. A. Registration of a mark with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i)”). Complainant provides evidence of its registration of the PRIORITY HEALTH mark with the USPTO. Therefore, the Panel may find that Complanant has rights in the mark under Policy ¶ 4(a)(i).
Complainant also submits that Complainant’s trademark rights in the PRIORITY HEALTH mark date back to at least 1992 based upon use of the mark in commerce as an unregistered or common law trademark. Such rights are relevant in determining whether Complainant’s rights in the mark predate Respondent’s registration of the <priorityhealth.org> domain name. Such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has, as the time the Complaint is filed, rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i)”).
However, the time when the trademark rights were first acquired will become relevant when the panel has to decide if Respondent registered the domain name in bad faith, an essential requirement for transfer under the Policy. That time will become relevant because it is generally accepted that the relevant trademark rights must have been acquired before the disputed domain name was registered to prove that the domain name was registered in bad faith. In the present case, the domain name was registered on October 8, 2004, before the trademark was registered on October 6, 2008.
Complainant’s website is in evidence and the website sets out the history of Complainant at https://www.priorityhealth.com/about-us/our-history. The history shows that Complainant was formed in 1992 by the merger of Butterworth HJMO and Lakeshore HMO and that the name Priority Health was adopted at that time. The history also reveals that since 1992, Complainant has been very active in its business of providing health plans and has continued to use the PRIORITY HEALTH name as the source of the goods and services it provides under those plans. In that regard the evidence is that since 1992, Complainant has steadily grown to the point where it now has over 1 million providers and 514,158 members through its PRIORITY HEALTH plans, which include 54,603 individuals and 295,326 groups. It is clear from the evidence that it is well known, particularly in Michigan and that its name is recognised in the market as the origin of the goods and services it provides. Hence, it established common law or trademark rights in 1992 and continued to own and use them from that day until the present.
Accordingly, the Panel finds that Complainant’s common law or unregistered trademark rights in the PRIORITY HEALTH mark date back to at least 1992 based upon its use of the mark in commerce since then.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s PRIORITY HEALTH mark. Complainant argues that Respondent’s <priorityhealth.org> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s PRIORITY HEALTH mark, simply adding the “.org” gTLD. The addition of a gTLD to a mark may not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel may find that the disputed domain name is confusingly similar to the PRIORITY HEALTH mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s PRIORITY HEALTH mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on October 8, 2004;
(c) Respondent uses the disputed domain to host a parked webpage that diverts users to sites that compete with Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the <priorityhealth.org> domain name because Respondent is not licensed or authorized to use Complainant’s PRIORITY HEALTH mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can be used to show that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii), especially when a privacy service is engaged. See H - D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of authorization to use a mark can constitute a further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record notes “Domain Administrator / WHOIS Privacy Corp” as the registrant and no information in the record suggests that Complainant has authorized Respondent to use the PRIORITY HEALTH mark in any way. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use and instead uses the domain name to divert Internet traffic to Complainant’s competitors. Use of a domain name to redirect users or display links automatically to competing third parties is not a bona fide offering of goods or services or a legitimate noncommercial fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”); see also Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii)”). Here, Complainant notes that the disputed domain name is used to redirect users to competing health insurance companies. Complainant has provided screenshots of Respondent’s web page which in one case notes that the user is being redirected and in another case displays links to competing third parties under titles such as “Health Care Providers” and “Health Insurance” See Amend. Compl. Ex. B. The Panel agrees with Complainant that this use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has registered and uses the <priorityhealth.org> domain name in bad faith. Specifically, Complainant claims that Respondent uses the disputed domain name to redirect Internet traffic for Respondent’s own benefit. Use of a disputed domain name to display competing links or otherwise redirect users to competing websites evidences bad faith disruption of business under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum Apr. 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant notes that Respondent’s website redirects consumers to unrelated websites and Complainant’s legitimate website, but also redirects users to a website of one of Complainant’s health insurance competitors. Complainant provides screenshots of Respondent’s use of the domain name. See Amend. Compl. Ex. B. The Panel agrees with Complainant and finds bad faith registration and use under Policy ¶ 4(b)(iii) and (iv).
Secondly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the PRIORITY HEALTH mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <priorityhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 17, 2020
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