University of Miami v. DNS Manager / Centri Group
Claim Number: FA1301001478943
Complainant is University of Miami (“Complainant”), represented by Carolina A. Latour, Florida, USA. Respondent is DNS Manager / Centri Group (“Respondent”), represented by John Berryhill, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uhealth.org> ("the Domain Name"), registered with eNom, Inc.
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.
Dawn Osborne, Neil Brown QC and Wolter Bettink as Panelists.
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, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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.org. Also on January 9, 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 29, 2013.
On February 4, 2013 The Complainant served an Additional Submission on the Respondent and due to it being completed after hours, payment was made for the submission the following day. Complainant submits that this is only a technical default of Supplemental rule 7 and that as the Respondent was not prejudiced the submission should be accepted. The panelists have decided on this basis to accept the submission.
The Respondent submitted an additional submission on February 11, 2013 which was received in a timely manner in accordance with supplemental rule 7.
On February 12, 2013, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Dawn Osborne, Wolter Bettink and Neil Brown QC 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
The Complainant's submissions can be summarised as follows:
The Complainant has been using the mark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM since 2007 and registered the mark in the US in 2009. The colours orange and green are claimed as a feature of the mark. Due to use since 2007 the Complainant also has common law rights in the mark UHEALTH. In 2007 the Complainant registered the domain name UHEALTHSYSTEM.COM.
The marks UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM and UHEALTH are confusingly similar to the Domain Name as the Domain Name incorporates the dominant portion of the marks.
The Respondent has no connection to the University and is not a licensee of the marks. Nor does the Respondent appear to be affiliated with any other healthcare organisations. Respondent is not commonly known by the Domain Name and has not used or made demonstrable preparations to use it in connection with a bona fide offering of goods and services.
Respondent's web site contains links which appear to be links to schedule appointments and for healthcare information, but when they are clicked they are for sponsored listings of various health-related organisations. These websites are typically funded by pay per click fees for the web site links provided. The Respondent is diverting internet users searching for the Complainant to other healthcare providers and profiting from it. That is not a legitimate use.
Respondent is purposefully diverting individuals looking for the Complainant to other healthcare providers. Respondent's website features a picture of a woman who appears to be a university student. Respondent is attempting to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its web site and the products and services offered via the site. The Respondent is harming individuals who believe the information on the Respondent's web site to be approved by the Complainant. Accordingly, the Respondent is using the Domain Name in bad faith.
B. Respondent
The Respondent's Response can be summarised as follows:
UHEALTH is not distinctive of, nor is it distinctive of the Complainant. The Complainant has not shown that it has trade mark rights in UHEALTH in isolation from the mark actually registered and claimed by the Complainant. UHEALTH is a generic term used in the field of healthcare and is used by a variety of organisations in connection with University health services and insurance. The Respondent's use of the Domain Name in connection with providing health related advertising is consistent with the primary connotations of the non-distinctive term at issue.
The Complainant claims green and orange as a feature of its registered mark which are the signature colours of the University of Miami.
The style and colour of the U appearing in the registration are no small matter and perform an identifying function. The colours and the logo also appear in the exhibit of the Complainant in support of its common law rights. The Complainant does not attempt to substantiate its claim to a common law right in UHEALTH as pure text alone. Even if the colours and style are ignored UHEALTH is a minority part of the Complainant's registered mark in terms of the text. The Complainant does not offer any evidence that the UHEALTH part of the text is distinctive apart from the mark as a whole even though it appears larger than the rest of the text in the mark.
The letter U is a frequent shorthand used in reference to universities. It is frequently used as an abbreviation of related terms such as 'universal' or 'united'.It is also used as a phonetic equivalent of 'you'. It is also a trendy internet prefix 'u-' It is also used as a common shortened form of 'ubiquitous health' as UHEALTH. UHEALTH is widely used by other higher education establishments and companies in connection with the provision of health care services, health insurance and health and fitness related goods and services.
UHEALTH is non distinctive and not identical or confusingly similar to a mark in which the Complainant has rights. Stripping away the stylization and additional words in the Complainant's registered mark results in a non distinctive term.
Respondent registers generic and descriptive domain names for the purpose of deriving income by means of a pay per click service. UHEALTH is short and descriptive and this contributes to a high search relevance. Respondent does not use the Complainant's mark, colours, logo or any of the features used to obtain US registration. The Complainant has not shown that the Respondent's use is illegitimate.
Bad faith is specific intent towards the Complainant arising from rights known by the Respondent to belong to the Complainant, concious and wilful exploitation. Where use is legitimate it cannot be in bad faith. The Respondent registered and has used a non distinctive non exclusive term in connection with primary meanings of 'you' and 'health'. The Respondent was unaware of the Complainant's alleged rights in UHEALTH. The Complainant's registration does not even provide constructive notice or evidence of the Complainant's alleged rights in UHEALTH due to the added matter of the registration and the other universities using the expression. The registration does not provide rights in UHEALTH.
The Domain Name was not registered and used in bad faith.
C. Additional Submissions
The Complainant’s Additional Submission in so far as not already covered above can be summarised as follows:
Stylization and colours of a logo cannot be part of a domain name.
The Domain Name uses the first and most dominant word UHEALTH in the registered mark and the rest of the words in the registered mark are descriptive.
When one types UHEALTH into the Google search bar the entire first page of results relates to the Complainant showing secondary meaning.
In 2007 when the Complainant ordered a trade mark search in anticipation of registration of the UHEALTH mark the Domain Name came up, but the web site attached provided links for telephone pranking. Only after the Complainant began using the mark did the use change to healthcare pay per clicks. The Respondent's web site also features a college aged woman suggesting an affiliation with an educational establishment. In addition the colours on the web site are green and dark orange similar to those associated with the university also showing bad faith.
The original registration of the Domain Name was in a different name. It appears to have been transferred after September 2007 and likely after the Complainant's first use in December 2007. The Respondent makes no argument to the contrary. The transfer of a registration is the equivalent of a new registration under the Policy. Therefore it is likely that the Complainant's use predates the Respondent's registration. The Respondent has no legitimate interest, but is using the Domain Name for its own commercial gain to the detriment of the Complainant.
Even if the registration predates the Complainant's use recent panels have held that it is not necessary to show both bad faith registration and use and that bad faith use is sufficient.
The web site contains links to third party websites offering competing services. Respondent did not start using the website for health related advertising until after the Complainant began using its mark.
The Respondent’s Additional Submission in so far as not already covered above can be summarised as follows:
The Respondent obtained the domain name in May 2009 after it had expired from a prior term of registration by another registrant to which the Respondent has no connection. As such the comments re the original use by a third party and alleged changed use are not relevant. The Respondent does not argue that the registration of the Domain Name predates the Universities' use.
Whether the Domain Name is comprised of generic or non distinctive terms is central to the Policy which is designed to address predatory behaviour against a specific target. The Domain Name is not predatory when compared with the Complainant's limited rights. The text of the registered mark is descriptive per se.
The Complainant has not shown that internet users inputting UHEALTH will be seeking the Complainant. UHEALTH is used by other third parties and it is not distinctive or exclusive to the Complainant. A high search ranking result does not prove otherwise.
The Complainant knew the Domain Name was in the hands of a third party unconnected with the Respondent when it registered its trade mark.
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.
The Complainant has not produced any evidence of use to justify its claims of common law rights in UHEALTH before the date of registration of the Domain Name and which is not apparently contemporaneous with the preparation of the Complaint. As such the panel finds that the Complainant has not shown that it owned common law rights in UHEALTH prior to the registration of the Domain Name and has only shown very limited recent use of UHEALTH on its web site. Accordingly the panel does not consider the Complainant has shown sufficient use to establish common law rights in UHEALTH for the purposes of the Policy.
The Respondent has no connection to the Complainant and is not a licensee of the marks. Nor does the Respondent appear to be affiliated with any other healthcare organisations. Respondent is not commonly known by the Domain Name and has not used or made demonstrable preparations to use the Domain Name except for the pay per click usage.
As such, in view of the apparent use of similar trade dress to the Complainant the majority of the Panel finds that the Respondent has not used the Domain Name in connection with a bona fide offering of goods and services and has no rights or legitimate interests in the Domain Name.
In view of the finding of fact by the majority of the Panel that the Respondent targeted the Complainant by use of similar trade dress and green and orange colours on its web site and the Domain Name was registered after the Complainant's registered trade mark, the majority of the Panel finds that the Domain Name was registered and used in bad faith. Accordingly, the majority of the Panel holds that with the use of the green and orange colours and the Domain Name which is confusingly similar to the Complainant's mark the Respondent has used the Domain Name to intentionally attempt to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source or affiliation of the Respondent's web site.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <uhealth.org> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne and Wolter Bettink, Panelists
Dated: March 12, 2013
The Hon N A Brown QC
However, the Complainant has a registered trademark for UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM and, as it had that trademark before the domain name was acquired by the Respondent, the question arises whether the domain name is confusingly similar to the trademark. My view is that the domain name is not confusingly similar to the trademark.
To answer the question whether a domain name is confusingly similar to a trademark calls for an inquiry whether the objective observer, comparing the two, would conclude on the balance of probabilities that the former would be confused with the latter. To apply that test to the facts of the present case requires the objective bystander to ask: is <uhealth.org> probably referring to or evoking the UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM? The answer to that question must be no, as the objective bystander would be entitled to and probably would think that the domain name was referring to:
(a) A university health system that is not necessarily the one at the University of Miami;
(b) A business called Uhealth, evoking in its name the “u” in universal or united;
(c) A union health system;
(d) Any other health system invoking in its name the letter “u”, a colloquial alternative to “you”;
and possibly other entities.
One could ask: why, when faced with so many options, would the internet user assume that the domain name was referring to only one of the many options available and the answer is that there is no reason why the internet user should reach that conclusion.
To this the majority says that the comparison must be made not with UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM but only with the “UHEALTH” part of the trademark because it is the dominant part of the trademark. I agree with the majority that it may be necessary to make the comparison with the dominant part or the substance of a trademark in cases where, as in the Westjet Case, there is in fact a dominant part and the rest of the trademark is not an essential feature of the mark. But in the present case, the Complainant has gone out of its way to say that its entire name or mark is UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM. It is the way and the only in which it has chosen to be known for trademark purposes. In such a case, it is highly artificial to say that the expression UHEALTH can stand by itself and identify the University of Miami Health System when it clearly does not. The comparison should therefore be made between the domain name and the trademark as a whole. When that is done the domain name is not confusingly similar to the trademark for it may well be referring to any of a host of other entities. Bearing in mind that the comparison must be made having regard only to the text of the domain name and the trademark, without regard to extraneous factors such as the content or appearance of a website, there is no reason at all for anyone to think that the domain name is evoking the health system of the University of Miami.
RIGHTS OR LEGITIMATE INTERESTS
The Respondent chose as its domain name an expression of the type that is often referred to as generic or descriptive and, as such, a category of expression that may freely be registered as a domain name, provided that it is used in its generic sense and not used to target a trademark owner or for any other inappropriate purpose. The word “health” is certainly generic and the “u” is a colloquial term used to convey the idea of “you” or “your”, so the combined expression fits easily within the type of domain name referred to above that gives rise to a legitimate interest. If it is used for that purpose it will also be generally regarded as using a domain name for a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.
This view has long been supported by prior panels and is echoed in cases such as that cited by the Respondent, namely Advanced Drivers Education Products and Training, Inc v. MDNH, Inc.(Marchex),NAF Claim Number: FA0509000567039 where the panel said:
“Absent indicia of trademark infringement or dilution, the Respondent
does have a legitimate interest in using a domain name consisting of terms descriptive of the site, even if the second level domain name string may be disaggregated to read as Complainant’s mark.”
The evidence shows that the Respondent in the present case has used the domain name in a website for purposes associated with health, health related matters and services and, to put it colloquially, “your health”. As such, my view is that the Respondent’s use of the domain is clearly legitimate as coming within the well established principle stated in the Advanced Drivers Case and a bona fide offering of goods or services within paragraph 4(c)(i) of the Policy. See, in support of this, Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name); and Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Nat. Arb. Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name if the domain name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
The majority, however, say in effect that the Respondent was taking advantage of the Complainant’s rights in the word and that it was targeting the Complainant. Why is this so? Because, it is said, Respondent was using on its website the distinctive green and orange colors of the University of Miami and targeting the University by holding those colors out as a lure to internet users to entice them away from the University’s website and into the Respondent’s website. This, however, is drawing a very long bow and is not a reasonable inference to draw from the evidence, for the following reasons.
First, it is doubtful that the colors on the Respondent’s website are in fact the colors of the University of Miami. There is some similarity, as the Complainant points out, but not such an immediate similarity that there is scope for confusion between the two.
Moreover, it is extremely unlikely that the Respondent ever engaged in such targeting. The Complainant’s case is that in September 2007 it had a trademark search done and discovered that the domain name <uhealth.org> had been registered but that it was only being used for telephone pranks through www.phonetrick.com and not health related subjects.
That may be so, but the fact that the Complainant knew the domain name <uhealth.org> was registered must have put it on notice of an important matter of fact, namely that the domain name could be used by the registrant or a subsequent registrant to promote health-related goods and services. The fact that this is what happened is open to the interpretation that it came about because of the natural use of the words rather than any deliberate targeting; in the absence of any evidence to support the latter, the former interpretation is just as open.
The evidence shows that the Respondent has been using the domain name for health related goods and services within the generic expression “uhealth”.
Finally, the Complainant may be literally correct in saying that the colors on the website are “similar“ to those in the trademark and a finding of such a “similarity” is largely in the eye of the beholder. Interested observers can make their own assessment of the trademark and the website. However, the majority seem to have gone one step further by concluding that the colors are in fact the “distinctive” colors of the University and I would respectfully disagree with that conclusion. The colors on the website are certainly not the same as those of the trademark and are in my view not capable of being confused.
All of these matters give rise to a legitimate interest in the domain name on the part of the Respondent on general principles and as a bona fide offering of goods and services.
BAD FAITH
It follows from the foregoing that it cannot be said that the Respondent registered or used the domain name in bad faith. The Respondent seems to have done nothing but register a domain name using a highly generic expression and used it for purposes that come within the meaning of that expression. There is no evidence that the Respondent knew of the Complainant or that it was motivated towards it by bad faith and the evidence tends to support the latter view.
The Honorable Neil Anthony Brown, Q.C., Panelist
Dated: March 12, 2013
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