Prisma Health f/k/a SC Health Company v. Jason L Monroe
Claim Number: FA2211002020494
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 Jason L Monroe (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <selfserviceprismahealth.org>, registered with Sav.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on November 15, 2022; Forum received payment on November 15, 2022.
On November 16, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <selfserviceprismahealth.org> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 November 17, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@selfserviceprismahealth.org. Also on November 17, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it is a non-profit entity that operates the largest private non-profit healthcare system in South Carolina. Indeed, Complainant is the second-largest private company in South Carolina. Complainant has nearly 30,000 employed team members, including more than 1,650 employed physicians and nearly 5,000 nurses. Complainant’s 30,000 employed team members, inter alia, staff and operate eighteen (18) acute care and specialty hospitals and approximately 270 physician practice sites/offices. During Fiscal Year 2020 alone, Complainant’s operations included $4.9 billion of operating revenue and the provision of medical services to approximately 1.4 million unique patients, during 4.8 million physician practice visits. Complainant operates a remote access page/portal at <selfservice.prismahealth.org>. Complainant registered the PRISMA HEALTH mark in the United States in 2019.
Complainant alleges that the disputed domain name is confusingly similar to its PRISMA HEALTH mark as it wholly incorporates the mark and merely adds the generic term “self service” and the “.org” generic top-level-domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name is or may be used to compromise a user’s login information. The disputed domain name is blocked by firewall software as suspicious. Respondent failed to respond to Complainant’s cease and desist letters.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. The content of any emails and/or websites related to the disputed domain are intended to falsely suggest an association with Complainant and/or its services. The disputed domain name may be used in furtherance of phishing. Respondent failed to respond to Complainant’s cease and desist letters. Respondent had actual knowledge of Complainant’s rights in the PRISMA HEALTH mark prior to registration of the disputed domain name. The WHOIS information is false; specifically, Respondent is supposedly in San Francisco, CA and provided the following address to the domain registrar: “1478 Jim Rosa Lane, San Francisco, CA 610000 US”; however, this is not a valid address in San Francisco and the zip code “610000” is associated with an area in China, not San Francisco, CA (zip codes in San Francisco begin with “94”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark PRISMA HEALTH dating back to 2019 and uses it to provide health services.
The disputed domain name was registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolved to a parked page displaying pay-per-click hyperlinks to products and services some of which compete with those of Complainant. The WHOIS information is false.
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 disputed domain name wholly incorporates Complainant’s PRISMA HEALTH mark and merely adds the generic/descriptive term “self service” and the “.org” gTLD. Similar differences have failed sufficiently to distinguish a domain name from a mark for the purposes of 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.). The Panel therefore finds that the <selfserviceprismahealth.org> domain name is confusingly similar to Complainant’s PRISMA HEALTH mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii)), WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here the WHOIS information of record identifies the registrant as “Jason L Monroe”. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the disputed domain name is, or may be used, for phishing, but it does not present sufficient evidence to support that allegation. Consequently, the Panel will not further discuss this allegation.
Complainant presents evidence showing that the disputed domain name resolved to a parked page displaying pay-per-click advertising links to services that compete with those of Complainant. This does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). Therefore the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent has not presented any plausible explanation for its use of the disputed domain name, which is confusingly similar to Complainant’s mark. As already noted, in accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, the disputed domain name resolves to a website hosting various sponsored listings and links some of which relate to Complainant’s business and from which Respondent presumably commercially benefits. Panels have found a respondent to have acted in bad faith under Policy ¶ 4(b)(iv) where a respondent used a domain confusingly similar to another’s mark to profit from commercial links. See Capital One Financial Corp. v. Above.com Domain Privacy / Above.com Domain Privacy, FA1501001598657 (Forum Feb. 20, 2015) (“This Panel agrees that Respondent’s use as shown in Exhibits C-D illustrates that Respondent here seeks commercial gain through a likelihood of confusion, as competing hyperlinks have been found to establish evidence of intent to seek commercial gain through referral fees, and thus demonstrates bad faith registration under Policy ¶ 4(b)(iv).”). Thus the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further, the WHOIS information is false: the address that Respondent provided is not a valid address. This can indicate bad faith registration and use. See Enterprise Holdings, Inc. v. John Doe, FA1008001339545 (Forum Sept. 29, 2010) (“The Panel also takes into account that the entity that Responded to the Complaint would not be the registrant of the disputed domain names for the instant proceedings. Therefore, that circumstance is also taken by the Panel as indication of bad faith under Policy ¶ 4(a)(iii) by providing false or misleading WHOIS information to the registrar.”); see also Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). Accordingly, the Panel finds bad faith registration and use on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <selfserviceprismahealth.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 15, 2022
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