Prisma Health f/k/a SC Health Company v. kareem saleme / Prismahomehealth
Claim Number: FA2108001959000
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 kareem saleme / Prismahomehealth ("Respondent"), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prismahomehealth.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2021; the Forum received payment on August 10, 2021.
On August 11, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <prismahomehealth.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 August 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@prismahomehealth.com. Also on August 17, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 September 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is the second largest private company in South Carolina, and operates the largest non-profit healthcare system in the state, with nearly 30,000 employees serving approximately 1.4 million patients in 2020. Complainant announced in 2018 that it would be adopting the PRISMA HEALTH mark, and commenced use of the mark in 2019. Complainant uses the PRISMA HEALTH mark, inter alia, in connection with home healthcare products and services. Complainant owns a U.S. trademark registration for PRISMA HEALTH in standard character form that issued in 2019.
Respondent registered the disputed domain name <prismahomehealth.com> in May 2021. The domain name is being used for a website that offers home healthcare and other products. The website displays multiple instances of the terms "Prisma" and "Prismahomehealth," and identifies its owner in the copyright notice only as "Prismahomehealth." Complainant states that Respondent is not commonly known by the disputed domain name and is not a licensee of Complainant or otherwise authorized or permitted to use its mark. Complainant states further that Respondent has not replied to any of Complainant's cease and desist communications, other than apparently having taken its website down in response thereto.
Complainant contends on the above grounds that the disputed domain name <prismahomehealth.com> is confusingly similar to its PRISMA HEALTH mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <prismahomehealth.com> incorporates Complainant's registered PRISMA HEALTH trademark, inserting the generic term "home" (which relates to some of the products and services offered by Complainant) and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Prisma Health f/k/a SC Health Co. v. RANDY FULLER / Kilato Investment Group, FA 1945808 (Forum June 21, 2021) (finding <prismahealthuniforms.com> and <prismahealthscrubs.com> confusingly similar to PRISMA HEALTH); Guccio Gucci S.p.A v. Wode, D2013-0632 (WIPO May 24, 2013) (finding <guccihomehealth.com> confusingly similar to GUCCI). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being used for a website that displays variations of Complainant's mark and that offers for sale products that appear to be related to products and services offered by Complainant. Such use is unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Prisma Health f/k/a SC Health Co. v. RANDY FULLER / Kilato Investment Group, supra. Furthermore, it appears that Respondent may have discontinued its use of the domain name after receiving Complainant's correspondence.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name incorporating Complainant's mark, and is using the domain name for a website that displays variations of the mark and offers competing products for sale. Considering the similarity between the domain name and Complainant's mark — and the fact that Respondent has not come forward to challenge Complainant's allegations or to offer any alternative explanation for its selection of the disputed domain name — the Panel infers that Respondent is intentionally targeting Complainant and its mark, using the domain name to attract users by creating a likelihood of confusion with Complainant's mark. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Prisma Health f/k/a SC Health Co. v. RANDY FULLER / Kilato Investment Group, supra. The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prismahomehealth.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 13, 2021
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