Centura Health Corporation v. Mary Flores
Claim Number: FA2301002026178
Complainant is Centura Health Corporation (“Complainant”), represented by Chad T. Nitta of Kutak Rock LLP, USA. Respondent is Mary Flores (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mycenturahealth.us>, registered with NameSilo, 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to Forum electronically on January 3, 2023; Forum received payment on January 3, 2023.
On January 3, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <mycenturahealth.us> domain name (the Domain Name) is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of January 24, 2023 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@mycenturahealth.us. Also on January 4, 2023, 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 January 27, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Charles A. Kuechenmeister 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a Response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a non-profit Christian healthcare system. It has rights in the CENTURA HEALTH mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <mycenturahealth.us> Domain Name is identical or confusingly similar to Complainant’s mark because it fully incorporates the Complainant’s mark, merely adding the generic word “my” and the “.us” country code top-level domain (“ccTLD”).
Respondent has no legitimate interests in the Domain Name. Respondent does not own a trademark identical to the Domain Name, Respondent is not commonly known by the Domain Name, Respondent has no affiliation with Complainant’s mark and Complainant has not authorized it to use that mark, and Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses the Domain Name to attract Internet users to its website, which passes off as Complainant and uses hyperlinks to redirect Internet users to other websites, which contain false advertisements for Complainant’s applications and software.
Respondent registered or uses the Domain Name in bad faith. Respondent has capitalized on the likely confusion caused by the Domain Name’s similarity to Complainant’s mark to pass off as Complainant for commercial gain, and it registered the Domain Name, which is confusingly similar to Complainant’s mark, without having any affiliation with that mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The CENTURA HEALTH mark was registered to Complainant with the USPTO (Reg. No. 2,131,776) on January 27, 1998 (USPTO registration certificate submitted as Complaint Annex 1). Complainant’s registration of the CENTURA HEALTH mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <mycenturahealth.us> Domain Name is identical or confusingly similar to Complainant’s CENTURA HEALTH mark. It fully incorporates the mark, merely omitting the space and adding the generic word “my” and the ccTLD. These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). 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).), Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)), .”). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the CENTURA HEALTH mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following four nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) The respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name;
(ii) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(iii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iv) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant states that Respondent has no legitimate interests in the Domain Name because (i) Respondent does not own a trademark identical to the Domain Name, (ii) Respondent is not commonly known by the Domain Name, (iii) Respondent has no affiliation with Complainant’s mark and Complainant has not authorized it to use that mark, and (iv) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses the Domain Name to attract Internet users to its website, which passes off as Complainant and uses hyperlinks to redirect Internet users to other websites, which contain false advertisements for Complainant’s applications and software. These allegations are addressed as follows:
In order to establish a prima facie case on the rights or legitimate interests element, Complainant must present at least some evidence pertaining to each of the four factors listed in Policy ¶ 4(c). Complainant did not offer any evidence bearing upon Policy ¶ 4(c)(i), concerning whether the Respondent is the owner or beneficiary of a trade or service mark that is identical to the Domain Name. Complainants in usTLD cases can search one or more governmental trademark authorities and report negative results to establish a prima facie case as to Policy ¶ 4(c)(i). Complainant here offered no such evidence. Nevertheless, while it would have been preferable for Complainant to have offered evidence bearing specifically upon this element, the evidence that is available is sufficient to establish that Respondent is not the owner or beneficiary of a trade or service mark identical to the Domain Name. The USPTO registration certificate submitted as Complaint Annex 1 evidences Complainant’s rights in that mark dating from at least as early as the 1996 first use date shown on that certificate. Inasmuch as the USPTO is fully aware of Complainant’s claim of rights in the CENTURA HEALTH mark, it is extremely unlikely that it would register a trademark identical to <mycenturahealth.us> or any other mark identical or similar to the Domain Name in the name of any person other than Complainant or one of its affiliates, or that Respondent could be the owner or beneficiary of a valid common law trade or service mark identical to the Domain Name. On this evidence, and in the absence of any evidence to the contrary, the Panel finds that Respondent is not the owner or beneficiary of a valid trade or service mark identical to the Domain Name.
Nor did Complainant offer any evidence pertaining to Policy ¶ 4(c)(iii), concerning whether the Respondent has been commonly known by the Domain Name. A WHOIS printout pertaining to the Domain Name is more than sufficient to establish a prima facie case on this factor, and complainants almost universally submit one. Complainant submitted no relevant evidence on this factor, but the Panel was able to make a finding as to Policy ¶ 4(c)(iii) based upon the information submitted to Forum by the registrar, which lists the registrant of the Domain Name as “Mary Flores.” This name bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no response has been filed, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel is satisfied that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(iii).
Finally, Complainant submitted no evidence of the use Respondent is allegedly making of the Domain Name. This is of critical importance to the Policy ¶¶ 4(c)(ii) and (iv) factors. The Complaint contains a detailed description of the uses alleged, but without being able to view and analyze screenshots of Respondent’s website, of which Complainant submitted none, the Panel is without any means to determine whether Respondent is using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. This, of course, is an essential element of Complainant’s Policy ¶ 4(c) case. The absence of any evidence bearing upon Policy ¶¶ 4(c)(ii) and (iv) leaves the Panel with no alternative but to find that Complainant has failed to establish a prima facie case on the rights or legitimate interests element.
As Complainant has failed to meet the requirements of Policy ¶ 4(a)(ii), the Panel may decline to analyze the other element of the Policy. Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary), Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). The Panel elects to adopt this approach and does not analyze the bad faith element.
Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <mycenturahealth.us> Domain Name REMAIN WITH Respondent. As this Decision is based upon a simple lack of evidence, however, it is issued without prejudice to Complaint’s rights to file another proceeding concerning the Domain Name supported by competent evidence.
Charles A. Kuechenmeister, Panelist
Dated: January 30, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page