DECISION

 

Prescryptive Health, Inc. v. brent oxley

Claim Number: FA2508002174336

 

PARTIES

Complainant is Prescryptive Health, Inc. ("Complainant"), represented internally by James Markwith of Prescryptive Health, Inc., Washington, USA. Respondent is brent oxley ("Respondent"), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, District of Columbia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prescriptive.com> (the "Disputed Domain Name"), registered with NameCheap, Inc.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Nick J. Gardner and Paul M. DeCicco as Panelists and David H. Bernstein as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 29, 2025; Forum received payment on August 29, 2025.

 

On September 1, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <prescriptive.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 3, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2025 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@prescriptive.com. Also on September 3, 2025, 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.

 

A timely Response was received and determined to be complete on September 26, 2025.

 

On October 6, 2025, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Nick J. Gardner and Paul M. DeCicco as Panelist and David H. Bernstein as Chair.

 

On October 7, 2025, Complainant filed a supplemental submission. Later that same day, Respondent filed an objection to Complainant's supplemental submission. On October 9, 2025, Respondent filed a substantive response to Complainant's supplemental submission.

 

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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends it has satisfied each of the three elements required under the Policy for a transfer of the Disputed Domain Name.

 

First, Complainant is the owner of the trademark "PRESCRYPTIVE" (Reg. No. 6901019).  In addition to its federal registration, Complainant has established common law rights in the PRESCRYPTIVE mark through continuous and exclusive use in commerce since at least 2017. Complainant has operated a website reachable through the domain name <prescryptive.com> since on or about May 1, 2017. The Disputed Domain Name, <prescriptive.com>, is confusingly similar to Complainant's PRESCRYPTIVE mark because it differs by only a single character. The two are visually similar, easily mistaken, and pronounced identically. Because PRESCRYPTIVE is a coined, inherently distinctive mark with no dictionary meaning, the Disputed Domain Name has no independent descriptive value; its commercial value arises solely from its confusing similarity to Complainant's mark.

 

Second, Respondent has no rights or legitimate interests in the Disputed Domain Name.  Respondent has no connection or affiliation with Complainant, has not obtained any license or consent to use Complainant's mark, and is not commonly known by the Disputed Domain Name. Respondent has never used the Disputed Domain Name for any bona fide offering of goods or services, nor for legitimate noncommercial or fair use. Instead, the Disputed Domain Name automatically redirects users to Respondent's sales platform through which the Disputed Domain Name is offered for sale for a minimum offer of $5,000.  Such use demonstrates a lack of rights or legitimate interests.

 

Third, Respondent registered and is using the Disputed Domain Name in bad faith by intentionally attempting to attract Internet users for commercial gain through a deliberate misspelling of Complainant's PRESCRYPTIVE mark. Respondent's bad faith is evidenced by the following facts:

 

(1)       Respondent has engaged in typosquatting by registering a domain name that differs by only a single character from a distinctive mark;

 

(2)       Respondent is offering what Complainant characterizes as a  "typo-domain" for sale at a premium price. Because Respondent acquired the Disputed Domain Name years after Complainant had established rights in the PRESCRYPTIVE mark and the <prescryptive.com> domain name, the only plausible inference is that Respondent registered the name with knowledge of Complainant's rights and for the purpose of selling it for profit;

 

(3)       Respondent has a pattern of abusive conduct. Namely in two prior domain name disputes under the Policy, Respondent was found to have engaged in bad faith registrations and transfer of the domain name was ordered.

 

B. Respondent

In its Response, Respondent contends:

 

Complainant's PRESCRYPTIVE mark is neither identical nor confusingly similar to the Disputed Domain Name. The terms differ in both spelling and meaning. At most, Complainant may argue some degree of lexical similarity, but such resemblance is insufficient to establish confusing similarity under the Policy.

 

Respondent has rights and legitimate interests in the Disputed Domain Name. Respondent lawfully purchased the Disputed Domain Name as part of a portfolio of domain names based on dictionary words.  Respondent had never heard of Complainant at the time of purchase, has never been active in the healthcare industry, and had no intent to target Complainant in any way. Further, the term "prescriptive" is a common English word used by numerous businesses and registrants. At best, Complainant's PRESCRYPTIVE mark is highly suggestive of its services related to prescription medications and cannot be used to bar others from using the common word "prescriptive".  

 

Respondent's registration and use of the Disputed Domain Name are in good faith. Respondent is a professional domain investor who purchased the Disputed Domain Name as part of a portfolio of domain names based on dictionary words, with no knowledge of Complainant and no intent to target Complainant or its mark. Respondent has never used the Disputed Domain Name to advertise, generate revenue, or trade on Complainant's mark. Respondent is not engaged in typosquatting, and is not otherwise using a typo, parody, or misspelling of Complainant's PRESCRYPTIVE mark.

 

The prior disputes Complainant cites, in which the panels ordered transfer, arose while Respondent operated HostGator.  Through that venture, customer-registered domain names were automatically listed under HostGator and Respondent's name for administrative purposes. Respondent did not personally register or control those domain names. The disputes also occurred in 2012, twelve years ago, and there has been no similar activity in the intervening years.

 

Complainant's conduct presents a clear instance of Reverse Domain Name Hijacking and warrants the strongest possible sanctions. Complainant knew or should have known that its claims lacked merit, but it proceeded nonetheless in an attempt to circumvent normal legal processes and to try to obtain through the UDRP what it could never achieve through legitimate means. Complainant is represented by sophisticated counsel who failed to conduct basic due diligence, as minimal research would have revealed that "prescriptive" is a common dictionary term used by many companies in corporate names and trademarks.

 

FINDINGS

Complainant owns trademark rights in the PRESCRYPTIVE mark. The Disputed Domain Name is confusingly similar to the Complainant's mark. Respondent has rights and legitimate interests in the Disputed Domain Name. Respondent did not register or use the Disputed Domain Name in bad faith.  By bringing this case, Complainant has abused the Policy and engaged in Reverse Domain Name Hijacking.

 

DISCUSSION

Procedural Issue – Admissibility of Supplemental Submissions

 

Under UDRP Rule 12 and Forum Supplemental Rule 7, it is within the Panel's discretion whether to consider any unsolicited additional submissions received from a Party. However such submissions are generally discouraged. See, e.g., Bridgewater Associates, LP v. Tony Klausing,  FA 1928070 (Forum Feb. 8, 2021) ("Panels are generally not inclined to allow unsolicited additional submissions by the parties unless the party seeking to make the additional submission has shown some exceptional circumstances or the panel in its discretion finds there is some additional information or pertinent facts in the additional submissions that is crucial to the case and such new information could not have possibly been included in the original or amended complaint."); K1 Promotions, LLC v. Jordan Fabel / Brandon Myers (Forum Sept. 7, 2020) ("Complainant has not identified any particular issues that it could not reasonably have addressed in the Complaint and that it considered of sufficient importance to justify the filing of an additional submission. Complainant has simply proceeded as if there is an automatic right of reply to the Response."); but see Akamai Technologies, Inc. v. Cloudflare Hostmaster / Cloudflare, Inc., FA 1979588 (Forum Mar. 9, 2022) ("With respect to the element outlined in Paragraph 4(a) of the Policy, Respondent attacks the validity of Complainant's registered mark.  The Panel finds that the basis for this attack was not foreseeable, and for that reason the Panel will afford Complainant an opportunity to respond to those arguments through its Additional Submission.").

 

In the present case the Panel declines to exercise its discretion to admit the Complainant's Additional Submission.  This document seems to the Panel to largely comprise matters of argument or submission rather than any new material and it does not significantly assist the Panel in reaching a determination. In these circumstances the Respondent's additional submission does not need to be considered. Nothing in those documents would alter the Panel's conclusions had they been admitted.

 

Substantive Matters

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:

 

(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.

 

Identical and/or Confusingly Similar

Complainant owns a federal trademark registration for the mark PRESCRYPTIVE.  This federal registration is sufficient to establish that Complainant owns rights in that mark.  WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") § 1.2.1.

 

The Disputed Domain Name differs from the PRESCRYPTIVE mark by only a single letter.  It otherwise contains recognizable dominant features of Complainant's mark, which establishes confusing similarity for purposes of the Policy. WIPO Overview 3.0 § 1.7 ("in cases where . . . a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar").

 

The Respondent's argument that the Disputed Domain Name is not confusingly similar for purposes of the Policy because it has only "some degree of lexical similarity" reflects a misunderstanding of the standing test of the first element.  This test involves a straightforward comparison between the domain name and the complainant's trademark, which is typically a side-by-side comparison to assess whether the mark is recognizable within the domain name. WIPO Overview 3.0 § 1.7. The Disputed Domain Name here clearly passes this test given that it differs from Complainant's trademark by only a single letter, and has very strong visual and aural similarity to that mark.

 

The Panel finds that Complainant has established the first element of the Policy.

 

Rights or Legitimate Interests

Complainant has not established that Respondent lacks rights or legitimate interests in the Disputed Domain Name.  

 

The Complaint attempts to argue that Respondent lacks rights or legitimate interests under the Policy because Respondent has no connection or affiliation with Complainant, has not received a license or consent to use Complainant's mark, is not commonly known by the Disputed Domain Name, and has never used the Disputed Domain Name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. However, as Respondent properly argues, Complainant ignores that "prescriptive" is a common dictionary word used in a variety of contexts, including in connection with medical prescriptions.

 

Respondent explains that he is a domain name investor and that he purchased the Disputed Domain Name to include in his portfolio of domain names based on dictionary words.  Such investment in descriptive and dictionary word domain names can be an acceptable business practice for purposes of the second element of the Policy.  See WIPO Overview 3.0 § 2.1 ("generally speaking, panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP").  Here, there is no evidence that Respondent's registration of this Disputed Domain Name was done for any illegitimate purpose, or that the claim that he registered the Disputed Domain Name to be part of his portfolio of descriptive domain names is a pretext to shield illegitimate conduct.

 

Accordingly, the Panel finds that Complainant has failed to establish that Respondent lacks rights or legitimate interests in the Disputed Domain Name.

 

Registration and Use in Bad Faith

Complainant advances a series of arguments attempting to establish that Respondent registered and is using the Disputed Domain Name in bad faith, but again ignores the important fact that "prescriptive" is a common dictionary word. Given this fact, Complainant's argument that Respondent has engaged in typosquatting (of Complainant's obviously misspelled version of the dictionary word "prescriptive") is utterly without merit.  Indeed, Complainant appears to fail to see the irony in its argument, that Respondent is typosquatting Complainant's misspelled version of the dictionary word "prescriptive" by having registered a domain name that spells the dictionary word accurately.  Equally meritless is Complainant's assertion that "the only plausible inference is that Respondent registered the name with knowledge of Complainant's rights and for the purpose of selling it for profit."  As Respondent explains, the Disputed Domain Name is not a typo or misspelling of Complainant's mark. It is a dictionary word with independent meaning that is widely used.

 

The two prior disputes involving Respondent that Complainant relies on also do not establish registration and use in bad faith here.  There is nothing about those cases that is on parallel with this one or that suggests a pattern of cybersquatting behavior. As Respondent explains, those cases occurred twelve years ago, and there have been no similar disputes since.  Further, Respondent explains that he was not personally responsible for those domain name registrations; rather, he was merely the administrative contact but HostGator's business model had Respondent listed as the owner of domain names that were being held for others. These circumstances do not amount to "a pattern of abusive registrations by the respondent" that may indicate bad faith. See WIPO Overview 3.0. § 3.1.1.

 

Complainant has not come forward with any evidence to show that Respondent was aware of Complainant and its trademark when he registered the domain name, nor has it alleged any facts that would support a finding that Respondent registered and used the domain name to target Complainant and its mark. To the contrary, Respondent persuasively asserts that he purchased the domain name as part of a portfolio of descriptive dictionary word domain names with no knowledge of Complainant.

 

The Panel finds that Complainant has failed to establish the third element of the Policy.

 

REVERSE DOMAIN NAME HIJACKING

A finding of Reverse Domain Name Hijacking ("RDNH") is appropriate where a Complainant uses "the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1.  Panels have found RDNH where the facts demonstrate that the complainant knew or should have known that it could not succeed as to any of the required three elements – such as the complainant's lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith.  RDNH also may be found where a complainant provides intentionally incomplete material evidence.  WIPO Overview 3.0 § 4.16.

 

The Panel agrees with Respondent that a finding of RDNH is appropriate in this case. Although Complainant has trademark rights in the PRESCRYPTIVE mark, Complainant's allegations as to elements two and three of the Policy are entirely without merit.  Complainant knew or should have known that it could not possibly succeed as to the second and third elements of the Policy given the fact that "prescriptive" is a common dictionary word. See WIPO Overview 3.0 § 4.16. Instead, Complainant ignored the obvious, common meaning of "prescriptive" and the well-accepted legitimate business model of registering domain names comprised of dictionary words for resale, see WIPO Overview 3.0 § 2.1, in arguing that Respondent lacked rights or legitimate interests and registered and used the Disputed Domain Name in bad faith. Further, it is the height of irony that Complainant, who chose as its trademark a misspelling of the descriptive, dictionary word "prescriptive," then cited that misspelling to argue that "PRESCRYPTIVE is a coined, inherently distinctive mark with no dictionary meaning" and that "the Disputed Domain Name has no independent descriptive value."

 

The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.  The Panel further declares that the Complaint was brought in bad faith and constitutes Reverse Domain Name Hijacking.

 

Accordingly, it is Ordered that the <prescriptive.com> domain name REMAIN WITH Respondent.

 

 

 

David H. Bernstein, Chair

Nick J. Gardner, Panelist

Paul M. DeCicco, Panelist

 

Dated: October 12, 2025