Prisma Health f/k/a SC Health Company v. lin yanxiao
Claim Number: FA2203001988974
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 lin yanxiao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prismahealthcare.org>, registered with Dynadot, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2022; the Forum received payment on March 19, 2022.
On March 22, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <prismahealthcare.org> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 March 28, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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@prismahealthcare.org. Also on March 28, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 a non-profit entity that operates the largest private non-profit healthcare system in South Carolina. Complainant has rights in the PRISMA HEALTH trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,735,179, registered Nov. 20, 2018). Respondent’s <prismahealthcare.org> domain name is confusingly similar to Complainant’s PRISMA HEALTH trademark. Respondent incorporates the trademark in its entirety and adds the term “care” along with the “.org” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <prismahealthcare.org> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the PRISMA HEALTH trademark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that host links to similar services.
Respondent registered and used the <prismahealthcare.org> domain name in bad faith as Respondent’s domain name resolves to a webpage that offers links to similar services. Respondent has engaged in a pattern of bad faith registered by being involved in prior adverse UDRP decisions. Respondent had actual knowledge of Complainant’s rights in the PRISMA HEALTH trademark due to its longstanding use of the mark in commerce.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registration:
No. 5,735,179 PRISMA HEALTH (word), registered April 23, 2019 for services in Intl Classes 35, 41, 44.
The <prismahealthcare.org> domain name was registered on December 20, 2021.
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”).
The Complainant claims to have rights in the PRISMA HEALTH trademark through its registration with the USPTO. Registration of a trademark with the USPTO is sufficient to demonstrate rights in a trademark per policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Here, Complainant has provided this Panel with copies of it USPTO registration for the PRISMA HEALTH trademark (e.g. Reg. No. 5,735,179, registered Nov. 20, 2018). Therefore, the Panel find that Complainant has rights in the trademark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <prismahealthcare.org> domain name is confusingly similar to Complainant’s PRISMA HEALTH trademark. Registration of a domain name that contains a trademark in its entirety and adds a generic term and a gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates the trademark in its entirety and adds the term “care” along with the “.org” gTLD. The Panel notes that the Complainant’s trademark is in fact registered for a number of specified “healthcare” services, meaning that the added term “care” rather further indicates confusion of, and connection with, Complainant’s registered trademark and related services. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 argues that Respondent lacks rights or legitimate interest in the <prismahealthcare.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the PRISMA HEALTH trademark or register domain names using Complainant’s trademark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Lin yanxiao” and there is no other evidence to suggest that Respondent was authorized to use the PRISMA HEALTH trademark or was commonly known by the disputed domain name. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that host links to similar services. Use of a disputed domain name to resolve to a webpage that hosts links to services that are similar to a complainant’s business is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant has provided the Panel with screenshots of Respondent’s <prismahealthcare.org> domain name that shows links to services that clearly compete with Complainant’s PRISMA HEALTH trademark and services. Therefore the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Complainant argues that Respondent registered and used the <prismahealthcare.org> domain name in bad faith as it resolves to a webpage that offers links to similar services. Use of a disputed domain name that resolves to a webpage that offers links to similar services may be evidence of bad faith per Policy ¶ 4(b)(iv). 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)(iv)”). As noted above, Complainant has provided the Panel with screenshots of Respondent’s <prismahealthcare.org> domain name that shows links to services that compete with Complainant’s PRISMA HEALTH trademark. Therefore, the Panel agrees find that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also argues that Respondent has engaged in a pattern of bad faith registered by being involved in prior adverse UDRP decisions. Prior adverse appearing in UDRP decisions may show that a respondent has engaged in a pattern of bad faith registration per Policy ¶ 4(b)(iv). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Here, Complainant provides the Panel with past UDRP decisions against Respondent. The list, showing 19 prior cases, is clear and convincing. Therefore, the Panel may that Respondent has engaged in a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Finally, the Complainant argues that Respondent had knowledge of Complainant’s rights in the PRISMA HEALTH trademark at the time of registering the <prismahealthcare.org> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.”).
Instead, the Panel choose to determine whether Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See 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”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. Based on the use of the disputed domain name, the Panel find it likely that Respondent did have actual knowledge of Complainant’s right in its trademark, and the Panel find bad faith under 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 <prismahealthcare.org> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 2, 2022
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