Prisma Health f/k/a SC Health Company v. Qian Meng Dan
Claim Number: FA2104001941211
Complainant is Prisma Health f/k/a SC Health Company (“Complainant”), represented by Neil M. Batavia of Dority & Manning, P.A., South Carolina, USA. Respondent is Qian Meng Dan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prismaheath.org>, registered with Xin Net Technology Corporation.
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 April 12, 2021; the Forum received payment on April 12, 2021. The Complaint was received in English.
On April 16, 2021, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <prismaheath.org> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 20, 2021, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 10, 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@prismaheath.org. Also on April 20, 2021, the Chinese and English language 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 May 14, 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
Pursuant to UDRP Rule 11(a), the Panel finds that the record demonstrates the Respondent is conversant and proficient in the English language. Accordingly, the Panel decides that the proceeding should be in English.
A. Complainant
1. Complainant is a non-profit entity that operates the largest private non-profit healthcare system in South Carolina. Complainant has rights in the PRISMA HEALTH mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,735,179, registered April 23, 2019, application filed April 4, 2018).
2. Respondent’s <prismaheath.org>[i] domain name is confusingly similar to Complainant’s PRISMA HEALTH mark as it appropriates the mark in its entirety, but intentionally misspells the word “Health” and appends the generic top-level domain (“gTLD”) “.org.”
3. Respondent lacks rights or legitimate interests in the <prismaheath.org> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s PRISMA HEALTH mark.
4. Respondent has not used the domain name in connection with a bona fide offering of goods or services as Respondent uses it in connection with competitive hyperlinks.
5. Additionally, Respondent engages in typosquatting.
6. Respondent registered and uses the <prismaheath.org> domain name in bad faith. First, Respondent uses the domain name in connection with competitive pay-per-click hyperlinks. Respondent also engages in typosquatting and opportunistic bad faith.
7. Next, Respondent failed to respond to Complainant’s cease and desist letter.
8. Furthermore, Respondent had actual knowledge of Complainant’s rights in the PRISMA HEALTH mark prior to registering the <prismaheath.org> domain name, evidenced by Respondent’s opportunistic bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the PRISMA HEALTH mark. Respondent’s domain name is confusingly similar to Complainant’s PRISMA HEALTH mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <prismaheath.org> 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 PRISMA HEALTH mark through Complainant’s registration of the mark with the USPTO (e.g., Reg. No. 5,735,179, registered April 23, 2019, application filed April 4, 2018). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Additionally, a complainant’s rights in a registered mark date back to the registration application filing date. See Micha Advanced Health dba LEMYKA v. Shanshan Huang / This domain name is for sale, FA 1772893 (Forum Apr. 9, 2018) (“The relevant date for acquiring rights in a registered mark is the application filing date.”). Therefore, Complainant has demonstrated rights in the PRISMA HEALTH mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <prismaheath.org> domain name is confusingly similar to Complainant’s PRISMA HEALTH mark as it appropriates the mark in its entirety but misspells the word “Health” and appends the gTLD “.org.” A misspelled mark fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”). Therefore, the Panel holds that the <prismaheath.org> domain name is confusingly similar to Complainant’s mark per 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 <prismaheath.org> 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 contends Respondent lacks rights or legitimate interests in the <prismaheath.org> domain name as Respondent has not been commonly known by the domain name, nor has Complainant authorized or permitted Respondent to register or use Complainant’s PRISMA HEALTH mark. When a response is lacking, relevant WHOIS information may be used to determine whether a respondent is commonly known by a domain name under Policy ¶ 4(c)(ii). 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.”). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by a domain name. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS information for the <prismaheath.org> domain name lists the registrant as “Qian Meng Dan,” and the record contains no other evidence to suggest that Respondent was authorized to use the PRISMA HEALTH mark. Therefore, the Panel holds that Respondent is not commonly known by the <prismaheath.org> domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <prismaheath.org> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses it in connection with competitive hyperlinks. Using a domain name incorporating the mark of another in connection with competitive hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using the domain name in this manner shows 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 the <prismaheath.org> domain name resolves to a website that includes content and links which reference healthcare services and products. Therefore, the Panel finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant argues that Respondent further lacks rights or legitimate interests in the <prismaheath.org> domain name because Respondent engages in typosquatting. Typosquatting is further evidence that a respondent lacks rights or legitimate interests in a domain name per Policy ¶ 4(a)(ii). See The Hackett Group, Inc. v. Brian Herns / The Hackett Group, FA1412001597465 (Forum Feb. 6, 2015) (holding that the respondent’s incorporation of the complainant’s entire mark with only the addition of the letter ‘s’ indicated that the respondent had engaged in typosquatting and was further evidence that the respondent lacked rights or legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii)). Respondent engages in typosquatting by deleting the letter “L” from the word “health” in the <prismaheath.org> domain name; thus, Respondent lacks rights and legitimate interests per Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <prismaheath.org> domain name in bad faith as Respondent uses it in connection with competitive hyperlinks. Using a domain name incorporating the mark of another in connection with competitive hyperlinks can demonstrate bad faith per Policy ¶ 4(b)(iii). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Complainant provides a screenshot showing the <prismaheath.org> domain name resolves to a website that includes content and links which reference healthcare services and products. Therefore, the Panel holds that Respondent registered and uses the <prismaheath.org> domain name in bad faith per Policy ¶ 4(b)(iii).
Complainant also contends Respondent registered and uses the <prismaheath.org> domain name in bad faith as Respondent engages in typosquatting. Per Policy ¶ 4(a)(iii), the purposeful misspelling of a mark constitutes typosquatting which is itself evidence of bad faith. See Homer TLC, Inc. v. Artem Ponomarev, FA1506001623825 (Forum July 20, 2015) (“Typosquatting is independent evidence of bad faith in the registration and use of a domain name.”). Respondent engaged in typosquatting by deleting the letter “L” from the word “health” in the <prismaheath.org> domain name which constitutes bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant contends Respondent registered the <prismaheath.org> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights in the PRISMA HEALTH mark. A respondent’s intentional targeting of a complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith. See HDR Global Trading Limited v. Mudassar Munir, FA 1895547 (Forum June 10, 2020) (Finding bad faith based on Respondent's acquisition of a domain name to target Complainant and its trademark). Respondent’s actual knowledge of Complainant’s rights in the PRISMA HEALTH mark is apparent because Respondent registered the <prismaheath.org> domain name four days after Complainant’s public announcement of Complainant’s intent to use the PRISMA HEALTH mark. Therefore, Respondent registered the <prismaheath.org> domain name in bad faith per 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 <prismaheath.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 27, 2021
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