Premier Healthcare Alliance, LP v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2103001939879
Complainant is Premier Healthcare Alliance, LP (“Complainant”), represented by J. Mark Wilson of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premeirinc.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2021; the Forum received payment on March 31, 2021.
On April 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <premeirinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@premeirinc.com. Also on April 2, 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 April 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Premier Healthcare Alliance, LP, is a subsidiary of Premier, Inc., which operates a healthcare services company. Complainant asserts rights in the PREMIER mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 3,597,964, registered Mar. 31, 2009).
2. Respondent’s <premeirinc.com>[i] domain name is confusingly similar to Complainant’s PREMIER mark, only differing by transposing an “e” and “i,” the addition of the generic term “inc,” and the “.com” generic top-level domain (“gTLD”).
3. Respondent lacks rights and legitimate interests in the <premeirinc.com> domain name as it is not commonly known by the domain name and is neither an authorized user or licensee of the PREMIER mark.
4. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the domain name to host a parked website which displays various sponsored links to third parties.
5. Respondent registered and uses the <premeirinc.com> domain name in bad faith. Respondent attempts to commercially benefit from the domain name, as it hosts pay-per-click hyperlinks on the resolving website.
6. Additionally, Respondent engaged in typosquatting when registering the domain name.
7. Respondent also concealed its identity by using a privacy service when registering the <premeirinc.com> domain name.
8. Moreover, Respondent registered the domain name with actual knowledge of Complainant’s rights in the PREMIER mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PREMIER mark. Respondent’s domain name is confusingly similar to Complainant’s PREMIER mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <premeirinc.com> domain name and that Respondent registered and uses the domain name 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 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 rights in the PREMIER mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 3,597,964, registered Mar. 31, 2009). Thus, Complainant has rights in the PREMIER mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <premeirinc.com> domain name is confusingly similar to Complainant’s PREMIER mark, only differing by transposing the letters “e” and “i” within the mark, adding the generic term “inc,” and appending the “.com” gTLD. Such changes may not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015) (finding that “Respondent has simply transposed the letters ‘u’ and ‘r’ in the term ‘furniture’ to complete the [<ashleyfurnitrue.com>] domain name. The addition of a descriptive term, such as ‘furniture’, even if misspelled, does not negate a finding of confusing similarity under Policy ¶ 4(a)(i).”). The Panel therefore holds that the <premeirinc.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <premeirinc.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <premeirinc.com> domain name as it is not commonly known by the domain name and is neither an authorized user or licensee of the PREMIER mark. When response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a 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). Here, the WHOIS information of record identifies “Carolina Rodrigues / Fundacion Comercio Electronico” as the registrant of the <premeirinc.com> domain name. Thus, the Panel holds Respondent is not commonly known by the <premeirinc.com> domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <premeirinc.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Respondent instead uses the domain name to host a parked website to display various sponsored links to third-parties. Use of an infringing domain name to host a parked website to redirect Internet users to various webpages, competing or otherwise, does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant provides evidence of Respondent’s use of the <premeirinc.com> domain name in the form of a screenshot. Thus, the Panel holds that Respondent lacks rights and legitimate interests in the <premeirinc.com> domain under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <premeirinc.com> domain name in bad faith as Respondent uses the domain name to offer pay-per-click advertisements to third-parties. Using a domain name incorporating the mark of another to provide monetized advertisements and hyperlinks constitutes bad faith under Policy ¶ 4(b)(iv). See Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum Mar. 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”). Complainant provides screenshots of the resolving website for the <premeirinc.com> domain name; this evidence supports Complainant’s assertion regarding Respondent’s bad faith. The Panel holds that Respondent registered and uses the <premeirinc.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also claims that Respondent engaged in typosquatting when registering the <premeirinc.com> domain name. Typosquatting, or introducing typographical errors to increase traffic to a domain name, is itself indicative of bad faith registration under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sept. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Respondent’s transposition of the “e” and “i” within Complainant’s PREMIER mark qualifies as typosquatting; thus, the Panel finds bad faith under Policy ¶ 4(a)(iii).
Additionally, Complainant claims that Respondent registered the <premeirinc.com> domain name with actual knowledge of Complainant’s rights in the PREMIER mark. Per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of a mark and the use the respondent makes of the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant argues that Respondent must have registered the disputed domain name with Complainant’s PREMIER mark in mind as the disputed <premeirinc.com> domain name is nearly identical to Complainant’s own <premierinc.com> domain. Because the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the PREMIER mark when it registered the <premeirinc.com> domain, the Panel finds bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <premeirinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 10, 2021
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