Hummer Whole Health Management Inc. v.
Richard Enlow
Claim Number: FA0602000638995
PARTIES
Complainant is Hummer Whole Health Management Inc. (“Complainant”), represented by
Jude A. Fry, of Fay, Sharpe, Fagan,
Minnich & McKee, LLP, 1100 Superior Avenue, Seventh Floor, Cleveland,
OH 44114-2579. Respondent is Richard Enlow (“Respondent”),
represented by Thomas E. Nutter, of Gallop, Johnson & Neuman, L.C., 101 S. Hanley, Suite
1600, St. Louis, MO 63105.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wholehealth.com>,
registered with Register.com, Inc.
PANEL
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.
Joel M. Grossman as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on February 3, 2006; the National Arbitration Forum received a
hard copy of the Complaint on February 7, 2006.
On February 8, 2006, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <wholehealth.com>
domain name is registered with Register.com, Inc. and that the Respondent is
the current registrant of the name. Register.com,
Inc. has verified that Respondent is bound by the Register.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On February 9, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of March 1, 2006 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@wholehealth.com by e-mail.
A timely electronic copy of the Response was received on March 1, 2006. However, a hard copy of the Response was not
received in a timely manner, thus the Forum does not consider the Response to
be in compliance with ICANN Rule #5 (a).
Nevertheless, the Panel will consider the content of the Response. See, J.W. Spear & Sons PLC v. Fun
League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003).
Complainant timely submitted an Additional Submission on March 7, 2006,
and Respondent timely submitted a Response to Additional Submission on March
13, 2006.
On March 9, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts that is owns a registered trademark for the term
WHOLE HEALTH, which it registered on November 29, 2005. Complainant states that Respondent’s domain
name, <wholehealth.com>, is identical to and confusingly
similar with its mark. Complainant
argues that the addition of the top level domain “.com” may be ignored for
purposes of determining whether the domain name is identical to its mark. Complainant states that while it did not
register its marks until late 2005, its business has been known by the term
WHOLE HEALTH since at least 1992, prior to the original registration of the
domain name by Respondent’s predecessor in interest in 1995. Secondly, Complainant asserts that
Respondent has no rights or legitimate interests in the domain name, since this
domain name is not being used by Respondent for any bona fide offering
of goods or services and Respondent was not known by that name prior to
registration. Additionally, Complainant
asserts that Respondent has for years been passively holding the name, which
when accessed leads only to an error message.
Finally, Complainant asserts that the domain name was registered and is
being used in bad faith. Complainant
argues that the passive holding is evidence of bad faith, as is the fact that
Respondent offered to sell it to Complainant at an inflated price.
B. Respondent
Respondent first argues that its domain name is not identical to or
confusingly similar to Complainant’s mark.
Next, Respondent asserts that it does have legitimate rights in the name
and that it is using, or actively preparing to use the name for a non-profit
venture to inform consumers about health issues. Finally, Respondent denies that it has either registered the name
or is continuing to use the name in bad faith.
Respondent points out that while Complainant purports to have used WHOLE
HEALTH as a trade name since 1992, it did not protest the domain name, registered
originally in 1995, for over 10 years.
Moreover, Respondent asserts that Complainant did not own its mark until
late 2005, and therefore neither the original registration in 1995, nor
Respondent’s registration in 2001, were done with knowledge of Complainant’s
mark. Respondent asserts that in light
of the lack of any mark when the domain name was registered, and in light of
its current activity in using the name, it neither registered the name in bad
faith, nor is it currently using the name in bad faith.
FINDINGS
The panel determines (1) that the domain name
is identical or confusingly similar to Complainant’s mark; (2) that Respondent
has rights and legitimate interests in the name; and (3) that Respondent did
not register the name in bad faith and is not using the name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 mark WHOLE HEALTH is identical to or
confusingly similar to the domain name <wholehealth.com>, as for this purpose the top level
domain “.com” is ignored. See
Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution
Mar. 20, 2000).
First, the words “whole” and “health” are
generic common terms as opposed to specialized or unusual terms that would be
associated with only Complainant. As
stated in CRS Tech. Corp. v. CondeNet, Inc., FA 93547 (Nat. Arb.
Forum Mar. 28, 2000): “This is not the case in which [respondent] selected a
domain name incorporating a famous or distinctive mark that, it should have
known it was not entitled to use. Rather, [respondent] selected as its domain
name a mark that is somewhat descriptive and is meant to communicate some
aspect of the services provided.” That
logic should certainly apply here considering the fact that Complainant’s mark
was not registered when the
domain name was registered in 1995.
Moreover, Respondent has shown that it owns a non-profit business, which
provides the public with information on various health topics, including
particularly so-called “alternative medicine” topics. Respondent acquired the domain name in 2001, several years prior
to the registration of Complainant’s mark in 2005. See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb.
Forum July 12, 2000), and Warm Thing, Inc. v. Weiss, D2000-1232 (WIPO
Apr. 18, 2002). Respondent did not actively
use the domain name until very recently, but it has persuaded the Panel it is
and has been engaged in preparations to do so.
In his Affidavit, attached as Annex B to the Response, Richard Enlow
declares that he acquired the domain name from the original registrant in 2001;
that he acquired it for use with his company, WholeHealth Networks, Inc; and
that he hired David Atkinson to begin developing the website in September,
2005. All of these events evidence legitimate
use of the name, or at least preparation to do so. See Ultrafem Inc. v. Royal, FA97682 (Nat. Arb. Forum Aug.
2, 2001); see also Casual Corner Group, Inc. v. Young, FA 95112 (Nat.
Arb. Forum Aug. 7, 2000). Given the preparation for use of the domain name,
which is clearly reflective of Respondent’s business, Respondent has shown that
it has rights and legitimate interests in the name.
Complainant sat on its rights in two
ways. First, it waited until late 2005
to register its marks, even though it asserts that it was known by the WHOLE
HEALTH trade name since 1992. Second,
Complainant took no action in regard to the registration of the domain name <wholehealth.com> for over 10
years. Clearly, the original
registration of the name in 1995 was a decade before the Complainant registered
its mark, and therefore the domain name was not registered in bad faith. See
New Jersey Divorce Center, Inc. v. iGenesis Ltd., FA 584783 (Nat. Arb. Forum Dec. 18, 2005) (holding that a
respondent’s lack of actual knowledge
of the complainant’s trademark rights at the time of registration of the domain
name precludes a finding of bad faith registration); see also Ode v.
Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“we are of the
unanimous view that the trademark must predate the domain name.”). Because Respondent has persuaded the panel
that it is not passively holding onto the name but it is using, or actively
preparing to use the name, the Panel concludes that the name is not being used
in bad faith.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Joel M. Grossman, Panelist
Dated: March 20, 2006
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