Prisma Health f/k/a SC Health Company v. Jamison Morris / FW Webb Company
Claim Number: FA2205001996172
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 Jamison Morris / FW Webb Company ("Respondent"), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prismahealths.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 May 12, 2022; the Forum received payment on May 12, 2022.
On May 16, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <prismahealths.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 23, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2022 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@prismahealths.com. Also on May 23, 2022, 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 June 22, 2022, 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 operates the largest non-profit healthcare system in South Carolina, with nearly 30,000 employees serving approximately 1.4 million patients in 2020. Complainant has used PRISMA HEALTH in connection with healthcare services since at least as early as January 2019. Complainant owns a United States trademark registration for PRISMA HEALTH in standard character form.
Respondent registered the disputed domain name <prismahealths.com> in February 2022. Complainant states that the domain name is being used for a website that is blocked by Complainant's antimalware software, and that a Palo Alto Networks report classifies the website as "High Risk" based upon its association with malicious content. Complainant states further that Respondent is not commonly known by the domain name, is not a licensee of or in privity with Complainant, and is not authorized or permitted to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <prismahealths.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 <prismahealths.com> incorporates Complainant's registered PRISMA HEALTH trademark, omitting the space and adding a terminal letter "S" and 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. Qian Meng Dan, FA 1941211 (Forum May 27, 2021) (finding <prismaheath.org> confusingly similar to PRISMA HEALTH); Blink Health Inc. v. GREEN SMITH, FA 1898326 (Forum July 11, 2020) (finding <blinkhealths.com> confusingly similar to BLINK HEALTH); CVS Pharmacy, Inc. v. Linyanxiao, D2015-1839 (WIPO Dec. 13, 2015) (finding <cvshealths.com> confusingly similar to CVS HEALTH). 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, and its only apparent use has been to disseminate malware. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Availity, L.L.C. v. Host Master / Name Transure Enterprise Ltd, FA 1924386 (Forum Jan. 13, 2021) (finding lack of rights or interests in similar circumstances).
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 corresponding to Complainant's registered mark and appears to have been using it for the sole purpose of disseminating malware. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Availity, L.L.C. v. Host Master / Name Transure Enterprise Ltd, supra (finding bad faith in similar circumstances). Respondent has failed to come forward with any alternative explanation for its selection of the domain name or its intended use. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prismahealths.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 23, 2022
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