Prisma Health f/k/a SC Health Company v. Tiwana Perkins / Prisma Health
Claim Number: FA2104001942261
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 Tiwana Perkins / Prisma Health (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accessprismahealth.org>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2021; the Forum received payment on April 20, 2021.
On April 21, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <accessprismahealth.org> 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 23, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 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@accessprismahealth.org. Also on April 23, 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 May 19,2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman 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 claims rights in the PRISMA HEALTH service mark acquired through its ownership of the United States registered service mark described below and the goodwill that it has established through its use of the mark in the provision of its healthcare services since 2018 when the name was adopted by two merging healthcare systems known as GHS and Palmetto Health respectively.
Complainant asserts that it is the largest private non-profit healthcare system in South Carolina and is in fact 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 the fiscal year 2020 alone, Complainant’s PRISMA HEALTH operations included $4.9 billion of operating revenue and the provision of medical services to approximately 1.4 million unique patients, during 4.8 million physician practice visits.
Complainant submits that the disputed domain name <accessprismahealth.org> is confusingly similar to Complainant’s PRISMA HEALTH mark because the predominant part of the disputed domain name which is nearly identical to Complainant’s registered service mark PRISMA HEALTH mark.
Complainant adds that the disputed domain name is also nearly identical to the URL for a subpage / Citrix gateway located at Complainant’s own domain name at <access.prismahealth.org> which Complainant uses to allow certain authorized parties including its employees to access Complainant’s network, which could include confidential or sensitive data.
Complainant contends that the mere addition of the generic top-level domain (“gTLD") extension <.org> is irrelevant to determining confusing similarity between the disputed domain name and Complainant’s mark. Thus, the addition of the generic top-level domain “.org” in the <accessprismahealth.org> domain name does not prevent a finding of confusing similarity.
Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that there is no evidence available to or known to Complainant to show that the Respondent is otherwise commonly known by the <accessprismahealth.org> domain name. See Michelin North America, Inc. v. RONI YOUSEFI, FA 1409001575873 (Forum Sept. 17, 2014) (stating that a lack of “evidence in the record, including the WHOIS information”, suggesting that respondent is “commonly known by the at-issue domain name” amounts to the respondent not being commonly known by the domain name).
The registration details for the disputed domain name disclosed to the Forum by the Registrar in the course of this proceeding, names the registrant is “Tiwana Perkins” and the registrants company as “Prisma Health” with an address in South Carolina, where a significant portion of Complainant’s business operations occur.
Complainant asserts that the disputed domain is not owned by, authorized by or associated with Complainant. There is no evidence to suggest that another party located in South Carolina is entitled to identify itself as “Prisma Health.” Rather, Respondent identified itself/herself/himself to the Registrar of the disputed domain <accessprismahealth.org> with information intended to impersonate Complainant.
Complainant adds that Respondent is not a licensee of Complainant, nor is Respondent authorized or permitted to use Complainant’s PRISMA HEALTH mark, nor is Respondent in privity with Complainant on any other basis.
Complainant contends that its own application to register the PRISMA HEALTH mark was filed nearly 3 years before Respondent created the disputed domain <accessprismahealth.org> on March 31, 2021.
Complainant argues that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the Complainant’s rights in the PRISMA HEALTH mark.
A screenshot of the website to which the disputed domain name resolves, which is annexed to the Complaint, shows content and links which direct Internet visitors to websites offering healthcare products or services that compete with Complainant.
Complainant further submits that there is no evidence to suggest the Respondent is a legitimate authorized dealer or provider of any such healthcare products or services and adds Respondent’s use of the disputed domain name will mislead parties into wrongfully believing that the <accessprismahealth.org> website and the links included thereon are associated with the PRISMA HEALTH trademark or is endorsed by Complainant. Thus, the disputed domain name is not being used for a legitimate purpose.
Complainant submits that the disputed domain name was registered and is being used in bad faith. Complainant asserts that it filed its application to register its PRISMA HEALTH trademark on April 4, 2018, so the registrant of the disputed domain name knew or should have known of Complainant’s trademark when the disputed domain name was registered on March 31, 2021.
Complainant argues that registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to UDRP Policy ¶ 4(a)(iii). Citing Compagnie Generale des Etablissements Michelin v. Michel Wijkstra, WIPO Case 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 name in which he had no right or legitimate interest).
Complainant further argues that the act of knowingly using a confusingly similar designation to the PRISMA HEALTH mark is itself indicative of bad faith intent on the part of the Respondent.
Complainant argues that therefore Respondent is using the disputed domain name in bad faith to mislead parties into wrongfully believing that the <accessprismahealth.org> domain name and the website to which it resolves are associated with Complainant and its PRISMA HEALTH mark.
Additionally Complainant submits that the disputed domain name is identical to the subpage / Citrix gateway <access.prismahealth.org> on Complainant’s own website which is used by Complainant’s employees or other authorized personnel to access Complainant’s network, which could include confidential or sensitive data and is accessed through a password protected login found on the Citrix gateway. Complainant alleges that there is therefore a risk that the registration of the disputed domain may result in confusion causing disclosure of login information for Respondent’s website, by misleading authorized users intending to access Complainant’s Citrix gateway, potentially causing them to disclose confidential information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a non-profit healthcare company, and is the owner of United States service mark registration PRISMA HEALTH registration number 5,735,179 registered on the Principal Register on April 23, 2019 for services in international classes 35, 41, 44, filed on April 4, 2018, claiming first use in commerce on January 16, 2019.
Complainant has an established Internet presence and is the owner of the Internet domain name <prismahealth.org> which it registered January 16, 2018 and is used by Complainant as a website address for its healthcare services.
Complainant also maintains a subpage / Citrix gateway (<access.prismahealth.org>) which is used by Complainant’s employees and authorized users to access Complainant’s network, which can include confidential or sensitive data, through Complainant’s website.
The disputed domain name was registered on March 31, 2021 and resolves to the Registrar’s parking page which on the computer used by Complainant to provide a screen capture, has generated linked content related to medical services in the jurisdiction where Complainant is based.
There is no information available about Respondent, who availed of a privacy service to conceal his/her identity on the published WhoIs for the disputed domain name, except for that which is provided 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 for 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 clear, convincing and uncontested evidence of its rights in the PRISMA HEALTH service mark acquired through its ownership of the United States service mark registration described below and the goodwill that it has established through its use of the mark in the provision of its healthcare business since 2018 when the name was adopted by two merging healthcare systems known as GHS and Palmetto Health respectively. The mark has since been used by Complainant in its healthcare business with an annual operating revenue of $4.9 billion serving 1.4 million unique patients in the region of South Carolina.
The disputed domain name <accessprismahealth.org> consists of Complainant’s PRISMA HEALTH service mark preceded by the word “access” and the generic Top Level Domain extension <.org>.
Taken in combination the elements “PRISMA” and “HEALTH” constitute Complainant’s distinctive service mark in its entirety,
Complainant’s PRISMA HEALTH mark is the dominant element. In context of this Complaint, the word “access” does not add any distinguishing character to the disputed domain name.
The generic top-level domain (“TLD”) <.org> extension would in context be considered a necessary technical element of the disputed domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the PRISMA HEALTH service mark in which Complainant has rights.
Complainant has therefore satisfied first element in the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· there is not any evidence available to or known to Complainant to show that the Respondent is commonly known by the disputed domain name;
· the registration details for the disputed domain name disclosed in the course of this proceeding show that the registrant is impersonating Complainant purporting to be named “Tiwana Perkins” whose company is “Prisma Health” based in South Carolina, where a significant portion of Complainant’s business operations occur;
· the disputed domain is not owned by, authorized by or associated with Complainant;
· there is no evidence to suggest that another party located in South Carolina is entitled to identify itself as “Prisma Health”;
· Respondent is not a licensee of Complainant;
· Respondent is not authorized or permitted to use Complainant’s PRISMA HEALTH trademark, nor is Respondent in privity with Complainant on any other basis;
· Complainant applied to register the PRISMA HEALTH mark nearly 3 years before Respondent created the disputed domain on March 31, 2021;
· there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice to the Respondent of the Complainant’s rights in the PRISMA HEALTH mark;
· a screenshot of the website to which the disputed domain name resolves shows content and links which reference healthcare services directing Internet visitors to websites offering healthcare products or services that compete with Complainant.
· there is no evidence to suggest that Respondent is a legitimate authorized dealer or provider of any such healthcare products or services;
· Respondent’s use of the disputed domain will mislead Internet users into wrongfully believing that the <accessprismahealth.org> website and the links included thereon are associated with the PRISMA HEALTH trademark or is endorsed by Complainant.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests. Respondent has failed to discharge that burden and therefore this Panel must find that on the balance of probabilities, 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).
The combination of the words “PRISMA” and “HEALTH” in the disputed domain name is on the balance of probabilities a direct reference to Complainant’s business and distinctive trademark. It is improbable that this combination would have been selected and registered by coincidence.
This Panel finds that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant’s PRISMA HEALTH mark in mind in order to create confusion among Internet users and take predatory advantage of Complainant’s goodwill in the mark.
The fact that Respondent purported to impersonate Complainant by purporting to be named “Tiwana Perkins” whose company is “Prisma Health” based in South Carolina when registering the disputed domain name confirms this finding.
Furthermore Respondent is not making any active use of the disputed domain name, but is causing, permitting or allowing the disputed domain name to resolve to the registrar’s parking page with commercial links. Such use of Complainant’s distinctive trademark to attract and divert Internet traffic amounts to bad faith use of the disputed domain name for the purposes of the Policy.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith and so Complainant has succeeded in the third and final element in the test in Policy ¶ 4(a)(iii), and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <accessprismahealth.org> domain name be TRANSFERRED from Respondent to Complainant .
James Bridgeman SC
Panelist
Dated: May 20, 2021
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