University of Miami v. Marchex Sales, Inc.
Claim Number: FA1301001478911
Complainant is University of Miami (“Complainant”), represented by Carolina A. Latour, Florida, USA. Respondent is Marchex Sales, Inc. (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uhealth.com>, registered with Network Solutions, LLC.
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.
Fernando Triana, Esq. as Chair of the Panel
The Honourable Neil Anthony Brown, QC. as Co-Panelist
Wolter Wefers Bettink, Esq. as Co-Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 7, 2013; the National Arbitration Forum received payment on January 7, 2013.
On January 7, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <uhealth.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 January 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2013 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@uhealth.com. Also on January 8, 2013, 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 January 28, 2013.
On February 4, 2013, Complainant filed an Additional Submission; however, it was filed after the deadline. Thus, this Panel considers the Additional Submission not to comply with Supplemental Rule 7.
On February 11, 2013, Respondent filed an Additional Submission in timely manner as per Supplemental Rule 7.
On January 28, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. as Chair of the Panel, The Honourable Neil Anthony Brown, QC. and Wolter Wefers Bettink, Esq. as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant registered the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,629,399 filed on October 17, 2007, registered on June 2, 2009).
2. Complainant registered the <uhealthsystem.com> domain name in 2007.
3. Respondent registered the <uhealth.com> domain name in December 2010.
4. The <uhealth.com> domain name is confusingly similar to Complainant’s trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM since the <uhealth.com> domain name contains the dominant portion of Complainant’s trademark.
5. Respondent is not commonly known by the <uhealth.com> domain name.
a. Respondent has no connection to Complainant and is not a licensee of Complainant’s trademark.
b. Respondent does not appear to be affiliated with any other healthcare organizations.
6. The <uhealth.com> domain name resolves to a website containing what appear to be links to schedule appointments and for insurance information, but when they are clicked, the links are actually for sponsored listings of various health-related organizations.
7. Respondent diverts internet users to obtain profits from pay-per-click fees through the operation of its site.
B. Respondent
1. Respondent has owned the <uhealth.com> domain name since November 2004 after Respondent acquired it in an asset purchase. See Exhibit G to the Response.
a. The disputed domain was originally registered by Ultimate Search Inc. in February of 2002.
b. Respondent moved the disputed domain from the registrar Moniker.com to the registrar Network Solutions in 2010. See Exhibit A to the Response.
c. The transfer to another registrar does not deprive Respondent of its priority in relation to Complainant’s alleged 2007 “first use” of the registered mark.
d. Respondent has been using the domain name since February 2005 in connection with health-related pay-per-click advertising, the identical use it has today.
2. Complainant has not demonstrated that it has trade or service mark rights in “UHEALTH” in isolation from the UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM trademark actually registered by Complainant.
3. The combination of the letter “U” and the term “health” is non-distinctive.
4. Complainant’s trademark right comprehends the expression UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM, its design and colors as a unit.
5. Complainant does not prove the ownership or use regarding the expression “UHEALTH” individually considered.
6. The letter “U” is a frequent shorthand used in reference to universities, as an abbreviation of related terms as “universal” or “united” and as a phonetic substitute for the word “you.”
7. Universities frequently run health and medical programs, and universities having medical education units often provide health services to the public.
8. The expression UHEALTH is used by third parties in connection with many university-affiliated health services as shown in Exhibit E to the Response. Hence, UHEALTH per se is not exclusively owned by Complainant.
9. Respondent has had rights regarding the <uhealth.com> domain name for advertising purposes since before the registration or use of Complainant’s trademark and has maintained them since then. Thus, Respondent has used the term “UHEALTH” since 2005 in its <uhealth.com> domain name for the identical purpose as today.
10. Respondent’s keyword use of the <uhealth.com> domain name for the purposes of providing a relevant advertising index is legitimate.
11. There is no evidence that Respondent knew or should have known of Complainant’s trademarks at the time the disputed domain name was registered.
12. Complainant alleges to have been using its trademark since 2007, thus, the registration of the disputed domain name could have not arisen from a predatory intent, since it was registered in 2002 and transferred in 2005.
C. Additional Submissions
1. Complainant’s Additional Submission (filed after the deadline)
a. The colors and designs that are part of certain forms of a trademark are irrelevant to a domain name dispute since those elements cannot be perceived by a consumer by typing a domain name.
b. Whether or not the disputed domain name contains generic or descriptive expressions is irrelevant.
c. Respondent has not used the disputed domain name in the same manner since 2005. In 2007, Respondent did not have health related pay-per-click links.
d. Respondent offers to sell the disputed domain name.
2. Respondent’s Additional Submission
a. Complainant additional submission was not submitted according to the Forum Supplemental Rule 7.
b. The term “UHEALTH” is not distinctive.
c. Respondent’s main business regarding domain names is providing a directory of related services linked by key words.
d. The evidence provided by Complainant regarding Respondent’s previous use of the disputed domain name is a website in process of loading.
1. Complainant has owned the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM in the United States of America since June 2, 2009. Although Complainant argues to have used the expression UHEALTH as a trademark since 2007, there is no evidence of such use. After a review of the Exhibit B to the Complaint where, according to Complainant, there would be examples of use, the Panel only found the current screenshot of the website <www.uhealthsystem.com>. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark UHEALTH.
2. Respondent uses a domain name which contains a generic word as its main element.
3. Complainant failed to prove its assertions regarding 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."
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.
Complainant contends to be the owner of the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM and to have common law rights over the expression UHEALTH since 2007 in the United States of America to identify health services.
a) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of jurisdictions throughout the world.
The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a mark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it in connection with goods and services of the type with respect to which the trademark is registered.
However, the UDRP does not discriminate between registered and unregistered trademarks[1] and thus, it is well established that a Complainant does not need to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark in order to deserve legal protection, based solely on its use in commerce.
In this case, Complainant argues to have had common law rights over the expression UHEALTH since 2007.
Common law rights are obtained with use of the trademark in commerce to identify certain goods or services in commerce and to distinguish them from those of competitors[2].
However, there is no evidence of use or secondary meaning of the expression UHEALTH. After a review of the Exhibit B to the Complaint where, according to Complainant, there would be examples of use, the Panel only found the current screenshot of the website <www.uhealthsystem.com>. Consequently, Complainant has not proven the secondary meaning or use of the expression UHEALTH. Thus, Complainant has not established common law rights regarding the trademark UHEALTH.
Nonetheless, Complainant proved its rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM. Exhibit A to the Complaint includes a copy of the following registration certificate:
· United States Trademark Registration No. 3,629,399 issued on June 2, 2009, for “medical and health care services, namely, providing hospital, clinical and surgical medical and healthcare services on an in-patient basis and out-patient basis,” services within international class 44.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[3].
Thus, Complainant established its rights in the trademark[4].
The Panel adds that, although Respondent’s <uhealth.com> domain name predates Complainant’s trademark registration, Paragraph 4(a)(i) to the Policy does not require the trademark to be registered prior to the disputed domain name[5].
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM for purposes of Paragraph 4(a)(i) of the Policy.
b) Identity or confusing similarity between the Disputed Domain Name and Complainant’s trademark
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM since the <uhealth.com> domain name contains the dominant portion of Complainant’s trademark.
In the first place, before establishing whether or not the disputed domain name is confusingly similar to Complainant’s trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM, the Panel wants to point out that the addition of generic top-level domains (“gTLDs”), i.e., “.com,” “.biz,” “.edu,” and “.org,” cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark[6]. Neither the addition of country code top-level domains (“ccTLDs”), i.e., “.co.,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD have a distinctive function[7].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:
“[T]he addition of the generic top-level domain (“gTLD”) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”
However, the Panel considers that the reproduction of the UHEALTH portion of Complainant’s trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM by the <uhealth.com> domain name is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[8]. This is especially so since UHEALTH is the main and most distinctive part of the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM (as shown in the design on Exhibit A to the Complaint) and the disputed domain name does not add any other distinctive element.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus the requirement set forth in Paragraph 4(a)(i) of the Policy has been duly satisfied[9].
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a disputed domain name:
(i) Before any notice of the dispute, 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; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) 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 argues that Respondent does not have any rights or legitimate interests regarding the disputed domain name. However, Complainant did not file any evidence to prove its assertion.
In this case, Respondent argues that the expression “UHEALTH” is non-distinctive. Notwithstanding, this Panel considers that the expression “UHEALTH” is neither generic nor descriptive[10] taken as a whole. In fact, UHEALTH is not a common word in the English, Spanish, German or French language as the Panel confirmed through searches conducted in different online dictionaries[11]. At most, the UHEALTH portion of Complainant’s UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM trademark is weak since it contains the word HEALTH, which is by itself generic or descriptive, and is defined by the MERRIAM-WEBSTER on-line dictionary as “the condition of being sound in body, mind, or spirit,” which is closely related to services within international class 44.
Furthermore, Respondent established its rights and legitimate interest in the disputed domain name, as follows:
(i) Respondent acquired the disputed domain name before Complainant registered or used its trademark, and has used it since 2005 in connection with health-related pay-per-click advertising (Exhibits F, G and H to the Response). Thus, Respondent has used the disputed domain name before any notice of the dispute.
(ii) The disputed domain name contains the word HEALTH as the main element, which is generic or descriptive of the services offered through the website by means of pay-per-click advertising. The letter U at the beginning of the disputed domain name is usually used as a shorter version of “you.” Therefore, it is possible for anyone to have thought about combining the letter U, referring to “you” or “your,” and the word “health” to identify a website which offers links to health-related websites.
(iii) The disputed domain name registration dates back to 2002 (Exhibit A to the Response), and has been owned by Respondent since 2005 (Exhibits F, G and H to the Response). That is long before any use or trademark registration of Complainant’s UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM trademark.
(iv) Buying and selling domain names, as Respondent does, is in principle a legitimate business, as is owning a pay-per-click website, which qualifies as a bona fide offering of goods or services. Complainant has not provided any evidence to the contrary, such as evidence that the content of the website was changed to health-related links after the registration of the trademark.
Thus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is has not been satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a disputed domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith as Respondent diverts internet users to obtain profits from pay-per-click fees through the operation of its website.
Respondent’s website contains sponsored links to commercial websites related to health and insurance. This Panel believes that, in view of the generic word (“health”) which constitutes the dominant portion of the disputed domain name, the provision of pay-per-click advertisements for health-related services is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith[12].
Furthermore, in view of the fact that the domain name was registered before the trademark, Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name, since the domain name registration was prior to the trademark registration; or (ii) Respondent registered the disputed domain name primarily for the purpose of disrupting Complainant’s business; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademark, since the disputed domain name registration was prior to the trademark registration[13].
Finally, Complainant argues that Respondent registered and uses the domain name in bad faith, as Respondent offered to sell the disputed domain name for a price exceeding out-of-pocket cost. Leaving aside that Complainant did not provide evidence hereof, the fact that the disputed domain name (as Complainant admits) was registered or acquired by Respondent prior to the registration of the disputed domain name implies that this statement is incorrect. Therefore, the Panel concludes that Complainant has failed to prove Respondent’s bad faith.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <uhealth.com> domain name REMAINS WITH Respondent.
Fernando Triana, Esq.
Chair of the Panel
_______________________ __________________________
Neil Anthony Brown, QC. Wolter Wefers Bettink, Esq.
Co-Panelist March 5, 2013 Co-Panelist
[1] See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000).
[2] See Lilian Vachovsky, COO, Aplus.Net Internet Servs. v. A+ Hosting Inc., D2006-0703 (WIPO Oct. 26, 2006) (“Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owner’s goods or services from those of its competitors. See T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918)”).
[3] See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO May 5, 2002).
[4] See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Royal Bank of Scot. Grp. plc & Nat. Westminster Bank plc v. Soloviov, FA 787983 (Nat. Arb. Forum Nov. 3, 2006) (“Complainant’s trademark registrations for the NATWEST mark with the United Kingdom Patent Office . . . establish Complainant’s rights in the mark pursuant to Policy ¶4(a)(i)”.); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world”).
[5] See Konstantin Graf Lambsdorff v. Eighty Bus. Names, D2012-2039 (WIPO Dec. 21, 2012) (“Paragraph 4.a.(i) does not require that the common law rights pre-date, or the trademark be registered prior to, the domain name; though it may be relevant to the assessment of bad faith pursuant to Paragraph 4.a.(iii), which is considered below.”).
[6] See Altec Indus., Inc. v. I 80 Equip., FA 1437753 (Nat. Arb. Forum May 18, 2012).
[7] See YottaMark, Inc. v. Lukasz Chudy, FA 1392357 (Nat. Arb. Forum July 15, 2011)
[8] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[9] Panelist Brown respectfully disagrees with this part of the decision. His view is that the objective observer, making the comparison between the disputed domain name and the trademark, would conclude that the comparison should be made with the trademark as a whole, as it is that trademark that has been registered by the Complainant and as the Complainant has no common law or unregistered trademark rights in UHEALTH. The objective bystander would conclude that the domain name may well be referring not to the Complainant’s trademark but to another university’s health service or, indeed, a general health service directed to the reader, as in “your health.” Consequently, the disputed domain name is not confusingly similar to the only trademark relied on by the Complainant.
[10] Panelist Brown respectfully disagrees with this proposition as the word “health” is clearly generic and a well known dictionary word in the English language and the use of the letter “u,” when in juxtaposition with a dictionary word, has the popular meaning “you” or “your.” The combination of the two terms would generally be accepted as referring to a person’s health-related issues. Panelist Brown agrees, however, with the conclusion in this section of the decision to the effect that the Respondent has established rights or legitimate interests in the disputed domain name.
[11] English: <www.merriam-webster.com>; Spanish: <www.rae.es>; French: <www.larousse.com/en/dictionaries/french>; and German: <www.canoo.net>.
[12] See Microsoft Corp. v. Abdullah Ali, FA 1423605 (Nat. Arb. Forum Feb. 15, 2012).
[13] See Interep Nat’l Radio Sales, Inc. v. Internet Domain Names, Inc. D2000-0174 (WIPO May 26, 2000) (“The fact that Respondent registered its domain name two (2) years before the intent to use application of Complainant was filed and three (3) years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply”).
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