DECISION
Prisma Health f/k/a SC Health Company v. Sarah Smith / Palmetto Healthcare
Claim Number: FA2404002092282
PARTIES
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 Sarah Smith / Palmetto Healthcare ("Respondent"), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prismahealthconnect.net>, registered with Squarespace Domains II LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on April 8, 2024; Forum received payment on April 8, 2024.
On April 9, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <prismahealthconnect.net> domain name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 April 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2024, 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 the attention of postmaster@prismahealthconnect.net. Also on April 11, 2024, 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 May 2, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant is a non-profit organization that operates the largest not-for-profit healthcare system in the United States state of South Carolina.
Complainant holds a registration for the service mark PRISMA HEALTH, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 5,735,179, registered April 23, 2019.
Complainant does business online at the address <prismahealth.org>.
Respondent registered the domain name <prismahealthconnect.net> on January 1, 2024.
The domain name is confusingly similar to Complainant's PRISMA HEALTH mark.
Respondent has not been commonly known by the domain name.
Complainant has not granted to Respondent a license or other authorization to use its PRISMA HEALTH mark.
Respondent does not have any contractual or other relationship with Complainant.
The domain name is currently "parked" and not being actively used by Respondent.
Respondent has no rights to or legitimate interests in the domain name.
The domain name prevents Complainant from employing its PRISMA HEALTH mark in a corresponding domain name.
Respondent's inclusion of "connect" in the domain name refers to Complainant's use of the subdomain <connect.prismahealth.org> on its official website, which subdomain operates as an intranet gateway for internal communications among Complainant's employees.
Contact information since revealed by the registrar as of the point in time when Respondent registered the domain name as privacy-protected includes an address which is that of one of Complainant's hospitals in Columbia, South Carolina, where Complainant is headquartered.
Respondent knew of Complainant and its rights in the PRISMA HEALTH mark when it registered the domain name.
Respondent's employment of the domain name creates a risk that employees of Complainant who mistakenly access the domain name could in future be deceived into inadvertently revealing sensitive login/ password information to Respondent.
Complainant has addressed a cease-and-desist letter to Respondent reminding Respondent of Complainant's rights in its PRISMA HEALTH mark and requesting a reply, but Respondent has failed to reply to that correspondence.
Respondent has both registered and is now using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Identical and/or Confusingly Similar
By virtue of its registration of the PRISMA HEALTH service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <prismahealthconnect.net> domain name is confusingly similar to Complainant's PRISMA HEALTH mark. The domain name incorporates the mark in its entirety, with only the deletion of the space between its terms and the addition of the generic term "connect," a direct reference to Complainant's employee communication gateway, plus the generic Top Level Domain ("gTLD") ".net." These alterations of the mark, made in creating the domain name, do not enable it to escape the realm of confusing similarity under the standards of the Policy.
To begin with, Respondent's addition of the gTLD ".net" to Complainant's mark in creating the domain name is of no significance to our analysis of the question of confusing similarity because every domain name requires a gTLD or other TLD. See, for example, G4S Plc v. Noman Burki, WIPO Case No. D2016-1383:
[T]he Panel notes that the mere addition of the gTLD '.com' is insufficient to differentiate a disputed domain name from a mark as it is a technical requirement of registration.
Similarly, Respondent's deletion of the space between the terms of Complainant's mark in forming the domain name has no bearing on an analysis of confusing similarity because domain name syntax does not permit the use of blank spaces in a domain name. See, for example, Gurney's Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Febr. 19, 2003):
[S]paces between words are not significant in determining the similarity of a domain name and a mark because … spaces are not reproducible in a domain name.
Finally, under this head of the Policy, Respondent's addition of the term "connect" to Complainant's mark does not avoid a finding of confusing similarity because that term is a direct reference to Complainant's internal employee communication system. See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of a UDRP complainant a gTLD and the generic term "finance," which described that complainant's financial services business conducted under the mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
Rights or Legitimate Interests
Policy ¶4(a)(ii) requires that Complainant make a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested <prismahealthconnect.net> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name <prismahealthconnect.net>, and that Complainant has not licensed or otherwise authorized Respondent to use the PRISMA HEALTH mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as "Sarah Smith/Palmetto Healthcare," which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as "Bhawana Chandel," and nothing in the record showed that that respondent was authorized to use a UDRP Complainant's mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that the <prismahealthconnect.net> domain name is currently "parked" and not actively used by Respondent. Consistent with this status of the domain name, there is nothing in the record accompanying the Complaint suggesting that Respondent has made any demonstrable preparations to use, or has actually used, the challenged domain name in connection with any bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i). And, because it appears that Respondent is not using the domain name for any active purpose, it cannot be said that Respondent employs it for a legitimate noncommercial or fair use as contemplated in Policy ¶ 4(c)(iii). We are compelled to conclude, therefore, that Respondent has no rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Bureau International de Medicins Sans Frontieres v Nizar Mawani, D2001-05155 (WIPO May 27, 2001), finding that, where there was no evidence in the record before a panel showing that a respondent was either using a disputed domain name in connection with a bona fide offering of goods or services or making demonstrable preparations for such a use, and where that respondent had presented no evidence meeting the terms of any of the provisions of Policy ¶ 4(c)(i)-(iii), that respondent had no rights to or legitimate interests in the domain name.
Accordingly, the Panel therefore finds that Complainant has satisfied the proof requirements of Policy¶4(a)(ii).
Registration and Use in Bad Faith
It is necessary under this head of the Policy first to consider the question whether Respondent registered the <prismahealthconnect.net> domain name in bad faith. On this question, it is significant that Respondent does not conduct any legitimate commercial or noncommercial business via the domain name. It is likewise important that, according to the Complaint, contact information since revealed by the registrar as of the point in time when Respondent registered the domain name as privacy-protected includes an address which is the street address of one of Complainant's hospitals in Columbia, South Carolina, where Complainant is headquartered. From these undenied facts we may safely conclude both that Respondent evidently took two distinct steps to mask its identity when it registered the domain name, and that it then had, by its own admission, a physical presence in the very place where Complainant was to be found, so that it knew of Complainant and its rights in the PRISMA HEALTH mark when it registered the domain name. Moreover, from the facts presented with the Complaint, it is inconceivable that there could be any plausible circumstance in which Respondent could make a legitimate use of the domain name. These considerations, taken together with the further fact that we have been obliged to find that Respondent has no recognizable rights to or legitimate interests in the domain name, lead inexorably to the conclusion that Respondent registered it in bad faith. See, for example, the seminal decision in Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000).
Telstra also teaches that:
[I]it is possible, in certain circumstances, for inactivity by the Respondent, to amount to the domain name being used in bad faith.
Such circumstances include those, enumerated above, which support a finding that Respondent registered the challenged domain name in bad faith. See again, Telstra, supra.
See also: Statoil USA v. Domains by Proxy, D2016-1824 (WIPO October 14, 2016): finding that the mere existence of a potentially predatory domain name in the hands of a respondent represented a threat to a UDRP complainant's business meriting a finding of bad faith in its use.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <prismahealthconnect.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
_____________________________________
Terry F. Peppard, Panelist
Dated: May 14, 2024
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