Prisma Health f/k/a SC Health Company v. Tim Davis
Claim Number: FA2112001978731
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 Tim Davis (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <metaprismahealth.com> and <metaprismahealth.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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2021; the Forum received payment on December 29, 2021.
On December 30, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <metaprismahealth.com> and <metaprismahealth.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 30, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2022 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@metaprismahealth.com, postmaster@metaprismahealth.org. Also on December 30, 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.
A timely Response was received and determined to be complete on January 18, 2022.
On January 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Michael A. Albert 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Prisma Health f/k/a SC Health Company, operates a healthcare system in South Carolina. Complainant has rights in the PRISMA HEALTH mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,735,179, registered April 23, 2019). Respondent’s <metaprismahealth.com> and <metaprismahealth.org> domain names are confusingly similar to Complainant’s PRISMA HEALTH mark as they incorporate the entire mark and simply add the generic term “meta” and the “.com” or “.org” generic top level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <metaprismahealth.com> and <metaprismahealth.org> domain names. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the PRISMA HEALTH mark. Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent uses the disputed domain names to host competing hyperlinks, including links to Complainant’s own website.
Respondent registered and uses the <metaprismahealth.com> and <metaprismahealth.org> domain names in bad faith. Respondent engages in a pattern of bad faith by registering multiple infringing domain names. Additionally, Respondent uses the disputed domain names to host hyperlinks to competing services as well as hyperlinks to Complainant’s own website. Furthermore, Respondent failed to respond to Complainant’s cease and desist notice. Finally, Respondent had constructive and actual knowledge of Complainant’s rights in the PRISMA HEALTH mark based on the registration of the mark, the inclusion of the entire mark in the disputed domain names, and the fact that the domain names are used to target the same geographic area as Complainant’s services.
B. Respondent
Respondent argues the <metaprismahealth.com> and <metaprismahealth.org> domain names are not similar to Complainant’s PRISMA HEALTH mark since the domains consist of descriptive terms.
Respondent has rights in the <metaprismahealth.com> and <metaprismahealth.org> domain names.
Respondent did not register the <metaprismahealth.com> and <metaprismahealth.org> domain names in bad faith. Respondent has not used the disputed domain names to attract users for commercial gain and has no intent to sell the domains. Additionally, the domains have not been active.
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.
The Panel concludes that Complainant has shown that it has rights in the PRISMA HEALTH mark based on registration of the mark with the USPTO (e.g., Reg. No. 5,735,179, registered April 23, 2019).
The Panel also concludes that Respondent’s <metaprismahealth.com> and <metaprismahealth.org> domain names registered on November 6, 2021 are confusingly similar to Complainant’s PRISMA HEALTH mark as they incorporate the entire mark and simply add the generic term “meta” and the “.com” or “.org” gTLD. The addition of a generic term and a gTLD to a mark may not be sufficient to distinguish the disputed domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
The Panel concludes that Respondent lacks rights or legitimate interests in the <metaprismahealth.com> and <metaprismahealth.org> domain names because Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to use the PRISMA HEALTH mark. Under Policy ¶ 4(c)(ii), WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization to use a mark further supports a finding that a respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (“Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information identifies “Tim Davis” as the registrant and Complainant asserts it has not authorized Respondent to use the PRISMA HEALTH mark. Respondent provides no contrary showing. Therefore, the Panel finds that Respondent is not commonly known by the domain names under Policy ¶ 4(c)(ii).
Additionally, Respondent does not use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use, as Respondent uses the disputed domain names to host hyperlinks to competing services, as well as links to Complainant’s own website. Using a disputed domain name to host hyperlinks to competing third-parties or to the complainant’s own website is suggestive of failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use under 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).”). Here, Complainant provides screenshots showing the disputed domain names resolve to parked pages with various hyperlinks to competing medical services and evidence that some of those links resolve to Complainant’s own website.
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Respondent registered and uses the disputed domain names in bad faith since Respondent hosts hyperlinks to competing services on the resolving webpages for the domains. Using a disputed domain name to direct Internet traffic to a competitor of the trademark owner may be evidence of bad faith attempt to disrupt a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“[T]he Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”); see additionally Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Respondent’s bad faith is further evidenced by Respondent’s failure to respond to Complainant’s cease and desist notice. Complainant provides copies of the letters it sent Respondent and asserts Respondent never replied. Failure to respond to a cease and desist letter may indicate bad faith per Policy ¶ 4(a)(iii). See Dell Inc. and Boomi, Inc. v. srideviharisith nrs, FA2004001891347 (Forum May 02, 2020) (“[T]his Panel accepts Complainants’ submission that Respondent’s failure to respond to cease and desist letters from Complainants. . . also support[s] a finding of bad faith use of the disputed domain name.”).
Finally, Respondent had constructive and likely actual knowledge of Complainant’s rights in the PRISMA HEALTH mark based on the registration of the mark, the inclusion of the entire mark in the disputed domain names, and the fact that the domains target the same geographic area as Complainant’s services. While constructive knowledge is not alone sufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), it can in appropriate circumstances support a finding of actual knowledge of a complainant’s trademark rights, which is sufficient to establish bad faith. Here, the circumstances strongly suggest actual knowledge of the mark, as it is implausible that such mark would be used (with only the addition of the word “meta”) without such familiarity. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Availity, L.L.C. v. lin yanxiao, FA 1955211 (Forum Aug. 17, 2021) (Respondent uses the disputed domain name to advertise health insurance. Each of the links directs users to competitors of Complainant. . . .[t]he Panel infers, due to the manner of use of the disputed domain name and the way of making the disputed domain name combining Complainant’s AVAILITY mark with the term “insurance” for which Complainant’s mark is used that Respondent registered with actual knowledge of Complainant’s rights in the AVAILITY mark, thus constituting bad faith registration under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Complainant having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metaprismahealth.com> and <metaprismahealth.org> domain names be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: February 3, 2022
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