Premier Healthcare Alliance, L.P. v. Jamie Cramer / Premier Healthcare, LLC
Claim Number: FA2202001983673
Complainant is Premier Healthcare Alliance, L.P. (“Complainant”), represented by J. Mark Wilson of Moore & Van Allen PLLC, North Carolina, USA. Respondent is Jamie Cramer / Premier Healthcare, LLC (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <premierhealthcares.com>, registered with Google 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.
Adam Taylor as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 8, 2022; the Forum received payment on February 8, 2022.
On February 9, 2022, Google LLC confirmed by e-mail to the Forum that the <premierhealthcares.com> domain name is registered with Google LLC and that Respondent is the current registrant of the name. Google LLC has verified that Respondent is bound by the Google 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 February 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@premierhealthcares.com. Also on February 10, 2022, 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 March 1, 2022.
On March 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Adam Taylor 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a subsidiary of Premier, Inc. Complainant has rights in the PREMIER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) and through its longstanding use of such mark. Respondent’s <premierhealthcares.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the PREMIER mark in its entirety and adds the term “healthcares” as well as the “.com” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <premierhealthcares.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the PREMIER mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page with various sponsored links.
Respondent registered and uses the <premierhealthcares.com> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain, including by attempting to sell healthcare products to actual customers of Complainant. Additionally, Respondent engaged in typo-squatting. Finally, Respondent’s illicit activities demonstrate that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the PREMIER mark.
B. Respondent
Respondent has legitimate interests in the <premierhealthcares.com> domain name. Respondent is commonly known by the disputed domain name. Further, Respondent has made demonstrable preparations to use the disputed domain name. Respondent commissioned a logo two days before registering the disputed domain name and paid for website design and hosting or about February 3, 2022. See Resp. Exhibits D and H.
Respondent did not register and use the <premierhealthcares.com> domain name in bad faith. Respondent had no knowledge of Complainant, which never contacted Respondent to object to Respondent’s use of the disputed domain name or to attempt to resolve the matter amicably.
Respondent used its correct contact information when registering the disputed domain name, and in communications. Respondent did not engage in fraudulent email correspondence. Respondent sought to dispel confusion on the part of another customer of Complainant. See Resp. Exhibit A. The IRS informed Respondent that Respondent could omit the “LLC” suffix except on “corporate documents”.
Respondent did not engage in typo-squatting. Following suspension of the <premierhealthcare-llc.com> domain name by GoDaddy, Respondent chose the <premierhealthcares.com> domain name, “because it was the closest thing to Premier Healthcare”.
Respondent dissolved Premier Healthcare, LLC, on February 15, 2022, and “closed” the <premierhealthcares.com> domain name on February 26, 2022, due to “the derogatory claims and seriousness of the matter”. Respondent would have done so earlier if given the opportunity by Complainant.
Complainant is part of a group of companies that has supplied healthcare services under the PREMIER mark since 1996. The group’s annual revenue is currently in excess of USD 1 billion.
Complainant owns Reg. No. 3,597,964 for the mark PREMIER, registered with the USPTO on March 31, 2009. See Compl. Exhibit A Tab 2.
On December 18, 2021, Respondent registered the <premierhealthcare-llc.com> domain name with GoDaddy. See Resp. Exhibit I.
Respondent Premier Healthcare, LLC, was incorporated on December 21, 2021. See Premier Healthcare LLC form.
On January 12, 2022, GoDaddy informed Respondent that it was permanently suspending the <premierhealthcare-llc.com> domain name and refused to reinstate it despite Respondent’s objections. See Resp. Exhibit J. On the same date, Respondent registered the <premierhealthcares.com> domain name. See WhoIs Information.
On January 31, 2022, Respondent sent an email to a customer of Complainant, using the <premierhealthcares.com> domain name as the sender email address and offering various healthcare products for sale. The email was signed by Respondent Jamie Cramer as “Account Executive, Premier Healthcare” and included Respondent’s contact information. See Compl. Exhibit B Tab 2.
On February 15, 2022, Respondent applied to dissolve Premier Healthcare, LLC.
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.
Complainant asserts rights in the PREMIER mark based upon the registration with the USPTO (e.g., Reg. No. 3,597,964 registered March 31, 2009). See Compl. Exhibit A Tab 2. Registration of a mark with the USPTO is a valid showing of rights in a mark. 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).”). Since Complainant provides evidence of registration of the PREMIER mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues that Respondent’s <premierhealthcares.com> domain name is identical or confusingly similar to Complainant’s PREMIER mark as it contains the PREMIER mark in its entirety and merely adds the term “healthcares” and the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <premierhealthcares.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the PREMIER mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The WHOIS information for the disputed domain name lists the registrant as “Jamie Cramer / Premier Healthcare”. Furthermore, Respondent provides evidence of its business name registered with the Kentucky Secretary of State matching the disputed domain name. See Premier Healthcare LLC form. However, there is no evidence that Respondent is commonly known by the name “Premier Healthcares”. In any event, in the Panel’s view, Respondent cannot claim rights or legitimate interests on the basis of its use of “Premier Healthcare” for its corporate/trading name in circumstances where the Panel has concluded that Respondent selected the name by reason of its similarity to Complainant’s mark. See the Panel’s findings under the third element below. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. While Respondent has not provided the Panel with any evidence of such actual bona fide or legitimate use of the <premierhealthcares.com> domain name, Respondent argues that it has nonetheless made demonstrable preparations to use the disputed domain name, namely that it commissioned a logo and paid for website design and hosting. See Resp. Exhibits D and H. Where a respondent has made demonstrable preparations to use the disputed domain name, the Panel may find respondent makes a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Sony Pictures Television Inc. v. Thomas, Jeff, FA 1625643 (Forum Aug. 6, 2015) (holding that “Respondent has provided evidence of his plans to use the disputed domain name and, despite Complainant’s arguments to the contrary, Respondent can take his time so long as there is no indication of bad faith.”) However, Respondent has provided no evidence that such preparations were linked to a proposed bona fide offering of goods or services, i.e., one that was not intended to unfairly capitalize on Complainant’s mark. Accordingly, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
While Complainant does not make any contentions that fall within the articulated provisions of Policy ¶ 4(b), the Panel notes that these provisions are meant to be merely illustrative of bad faith, and that Respondent’s bad faith may be demonstrated by ancillary allegations considered under the totality of the circumstances. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith).
Complainant argues that Respondent had knowledge of Complainant’s rights in the PREMIER mark at the time of registering the <premierhealthcares.com> domain name. Respondent denies having such knowledge. The Panel may choose to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel notes the following:
First, Respondent has not denied that Complainant is a leading provider of healthcare goods and services with an annual turnover in excess of USD 1 billion. The Panel considers it unlikely that Respondent, which was formerly engaged in the same industry, was unaware of the existence of Complainant, a major competitor.
Second, the Panel considers it likely that Respondent associated GoDaddy’s suspension of the <premierhealthcare-llc.com> domain name with its similarity to Complainant’s mark, notwithstanding Respondent’s unsuccessful request for an explanation from GoDaddy.
Third, Respondent asserts that, following GoDaddy’s suspension of the <premierhealthcare-llc.com> domain name, Respondent selected the <premierhealthcares.com> domain name “because it was the closest thing to Premier Healthcare”. However, the Panel does not find it credible that a bona fide user of the mark “Premier Healthcare” would have select this ungrammatical variation of the term “healthcare”.
Fourth, Respondent applied to dissolve Premier Healthcare, LLC, shortly after the Complaint was filed. Respondent simply states that this was due to “the derogatory claims and seriousness of the matter”, but does not clearly explain why it took this step, which the Panel therefore treats as an admission that Respondent’s use of the name “Premier Healthcare” was illicit.
Fifth, the Panel has been provided with evidence of emails from Respondent to two customers of Complainant dated January 13 and 31, 2022, respectively, both using the <premierhealthcares.com> domain name as the sender email address and offering various healthcare products for sale. See Resp. Exhibit A and Compl. Exhibit B Tab 2. Respondent invokes its reply to the recipient of Respondent’s email of January 13, 2022, stating that the customer should not change Complainant’s email address to Respondent’s email address on its system and adding: “It appears this is a company you currently work with. We just have the same name. We are Premier Healthcare.” Notwithstanding this purported clarificatory statement, the Panel considers that, on the balance of probabilities, Respondent’s emails were designed to give the impression to the recipients that Respondent was associated with Complainant, an assumption that had clearly been made by the recipient of the email of January 13, 2022. The Panel further notes that Respondent has not explained how it came to target these two customers of Complainant in the first place.
In all the circumstances, including those outlined above, the Panel concludes that Respondent selected the <premierhealthcares.com> domain name, and indeed the mark “Premier Healthcare” generally, with actual knowledge of Complainant's rights in the mark and that Respondent has used the disputed domain name for emails designed to give the impression that Respondent was associated with Complainant, as explained above. Accordingly, the Panel finds that Respondent has registered and uses the disputed domain name in bad faith per 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 <premierhealthcares.com> domain name be TRANSFERRED from Respondent to Complainant.
Adam Taylor, Panelist
Dated: March 18, 2022
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