Prisma Health f/k/a SC Health Company v. luke catalanotto
Claim Number: FA2211002020835
Complainant is Prisma Health f/k/a SC Health Company (“Complainant”), represented by Jason A. Pittman of Dority & Manning, P.A., South Carolina. Respondent is luke catalanotto (“Respondent”), South Carolina.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prismahealthgrades.com>, registered with GoDaddy.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 17, 2022; Forum received payment on November 17, 2022.
On November 18, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <prismahealthgrades.com> domain name is 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 November 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 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@prismahealthgrades.com. Also on November 21, 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. Respondent did however send an email to Forum, see below.
On December 20, 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 operates the largest private non-profit healthcare system in South Carolina. Indeed, Complainant is the second-largest private company in South Carolina. The 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 has rights in the PRISMA HEALTH mark through its registration in the United States in 2019.
Complainant alleges that the disputed domain name is identical or confusingly similar to its PRISMA HEALTH mark as it incorporates the mark in its entirety, and merely adds the descriptive term “grades”, and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its PRISMA HEALTH mark in any way. Respondent does not use the disputed domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent offers the disputed domain name for sale for a price in excess of out-of-pocket costs. In addition, the disputed domain name is identified as being suspicious to certain firewall protections.
According to Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent offers the disputed domain name for sale for a price in excess of out-of-pocket costs. Respondent incorporated the entirety of Complainant’s mark in order to attract users with a false sense of association with Complainant. Respondent failed to respond to Complainant’s cease-and-desist letter. Respondent registered the disputed domain name with constructive or actual knowledge of Complainant’s rights in the PRISMA HEALTH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to Forum, Respondent states, in pertinent part: “ … I never received notification from Godaddy regarding the cease-and-desist letter (Annex-H) and therefore could not respond within the requested timeframe. … I am glad to comply with your requests in the original letter labeled annex-h.”
The cited letter (Annex H), states, in pertinent part: “Prisma Health [the Complainant] must also insist that you agree to transfer ownership of the <prismahealthgrades.com> domain to Prisma Health at no cost to Prisma Health.”
For the reasons set forth below, the Panel will not make any findings of fact.
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.
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."
In the present case, Respondent has consented to Complainant’s request to transfer the disputed domain name. Thus, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <prismahealthgrades.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 20, 2022
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