Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia
Claim Number: FA1112001418881
Complainant is Rocky Mountain Health Maintenance Organization, Incorporated (“Complainant”), represented by Sarah J. Miller of Sheridan Ross P.C., Colorado, USA. Respondent is Domain Administrator / PortMedia (“Respondent”), represented by Ari Goldberger of ESQWIRE.COM, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rmhp.com>, and it is registered with Moniker Online Services, LLC (“Moniker”).
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 – David H Tatham, Diane Cabell, and Daniel B Banks Jr.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 7, 2011; the Forum received payment on December 7, 2011.
On December 8, 2011, Moniker confirmed by e-mail to the Forum that the disputed domain name <rmhp.com> is registered with it and that Respondent is the current registrant of the name. Moniker has also verified that Respondent is bound by its 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 December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@rmhp.com. Also on December 13, 2011, 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 4, 2012.
Complainant’s Additional Submission was received on January 8, 2012 and deemed compliant with Supplemental Rule 7.
On January 16, 2012 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David H Tatham, Diane Cabell, and Daniel B Banks as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is based in Colorado, USA and that it was founded in 1974 as a not-for-profit organisation. It currently provides a wide range of medical benefit options to nearly 180,000 members and nearly 190,000 additional individuals through charitable contributions.
Complainant is the proprietor of a US trademark registration for RMHP which was registered in 2008 claiming first use in 2002.
Complainant contends that this trademark is identical and confusingly similar to the disputed domain name which was registered in March, 2003.
Complainant also contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because the website at the disputed domain name is a general parked search engine site which provides links to a variety of third party websites. One of these – headed ‘Insurance’ – leads to several third party links for health care insurance services that compete with Complainant, and Complainant contends that this is neither a bona fide offering of goods or services, nor a legitimate offering of goods or services, nor legitimate or fair use under the Policy.
The site also contains a link reading “To purchase this domain name, click here” which leads to a domain name broker. There is also an offer to “Contact us” which leads only to a blank e-mail with an address that is a combination of letters, numbers, and symbols and is nearly 2 lines long.
Complainant contends that Respondent clearly makes a commission from this pay-per-click site, and that this is not a bona fide offering of goods or services.
Complainant also contends:
· that Respondent is not commonly known by the disputed domain name as its registration is in the name of an entity called “Registrant [3059779] Domain Administrator, Port Media”;
· that the mere registration of the disputed domain name is not sufficient to establish rights or legitimate interests;
· that Complainant’s use of its trademark was earlier than Respondent’s registration of the disputed domain name;
· that the offer to sell the disputed domain name is also evidence of a lack of legitimate rights or interest.
In addition, Complainant attempted to contact the owner of the disputed domain name on several occasions, starting in June 2011, to request that it cease using the name and transfer it to Complainant, and the Complainant annexed copies of its several attempts to make contact. These finally resulted in an offer on behalf of Respondent to sell the disputed domain name for $25,000, although this sum was subsequently reduced to $18,000. Initial attempts to contact Respondent were thwarted by the fact that, Complainant asserts, Respondent was utilizing false contact information which, it contends, is evidence of bad faith. However Respondent pointed out that at one time, Complainant was writing, not to them, as proprietors of the disputed domain name, but to the owner of a very similar but totally unrelated name <rmph.com> NOT <rmhp.com>.
Complainant also contended that bad faith is also evidenced by Respondent’s offer to sell the domain name for more than out-of-pocket expenses.
Complainant’s research turned up a case, in which Respondent was involved, that detailed 21 decisions in which the Respondents were identified as “Port Media” or Vertical Axis, or CKM and Complainant asserts that these three entities are closely connected. Complainant also lists 10 Decisions under the Policy in which Respondent was implicated either by name or by his listed Hong Kong address. Complainant thus asserts that Respondent has engaged in a pattern of registering domain names which correspond to third party trademarks, contrary to paragraph 4(b)(ii) of the Policy.
Complainant also contends that Respondent has registered the disputed domain name in order to prevent itself from reflecting its name and service mark in the corresponding domain name. Complainant maintains that it first started using RMHP as a trade name in 1974 which is almost 30 years prior to the registration of the disputed domain name
B. Respondent
Respondent contends that its only reason for registering the disputed domain name was because it was a 4 letter combination, and it already owns close to 3000 domain names that consist of only 3 or 4 letters. Furthermore, Complainant has no monopoly of the letters RMHP as evidenced by an advanced Google search for this combination undertaken by Respondent. This, it claims, yielded 596,000 third party search results, including Reverse Home Mortgage Page, Ronald McDonald House Providence, Acorn Manufacturing RMHP, and RMHP Inc. In this context, Respondent refers to a decision under the Policy in which it was held that the public did not identify the product involved as the only one, or one of the few, for the mark.
Respondent states that it had no prior constructive knowledge of Complainant when it registered the disputed domain name in March 2003, and no intention of preventing Complainant from owning a domain name that included its trademark.
Respondent describes Complainant as not being well known outside the State of Colorado, while it operates thousands of miles away in Hong Kong or Canada.
Respondent also alleges laches on the part of Complainant since the disputed domain name was registered in 2003 which is well before the Complaint was filed. However it submits that even if the Panel were to reject this claim, the 8 year delay in bringing the Complaint raises the inference that Complainant did not truly believe that Respondent had engaged in bad faith.
Respondent points out that its registration of the disputed domain name was prior to both the filing and registration dates of Complainant’s trademark and quotes a number of Decisions under the Policy in which it was held that a prior trademark registration was a necessity for a Complaint to succeed.
Respondent contends that the significant third party use of ‘rmhp’, as evidenced by its Google search, establishes that it has legitimate rights and interest in the disputed domain name which, it contends, is being used in connection with the bona fide provision of advertising services. This, it has been held, is not necessarily illegitimate under the Policy.
Respondent further contends that there can be no bad faith if there is no direct proof that a common term domain or – in this case – a combined letter domain was registered with a view of profiting from a Complainant’s trademark rights. Nor can it be argued that Respondent should have known of Complainant’s mark, bearing in mind the geographical distance between Colorado and Hong Kong, where Respondent is based.
Respondent also contends that its use of a privacy service and its offering of the disputed domain name for sale is not evidence of bad faith because anyone has the right to register and sell a domain name.
Respondent also refutes Complainant’s attempt to lump it together with Vertical Axis or C K Ventures by quoting a number of adverse Decisions in which these entities were involved. Respondent maintains that there are as many Decisions in which its actions have been held to be legitimate and proper. Furthermore, every case should be decided on its own merits.
C. Additional Submissions
Complainant filed an Additional Submission in which it maintained that the disputed domain name, which was registered on March 25, 2003 was subsequent to its own first use of its trade name (in 1974 although it only began promoting it in 2002) , its trademark rights, and its domain name registration <rmhp.org> (on May 3, 2002). Complainant maintains that this use of the name and trademark RMPH before the disputed domain name was registered is sufficient for the UDRP.
Complainant asserts that it is no coincidence that the disputed domain name was registered shortly after its own registration of the domain name <rmhp.org> and states that it is aware that software is available which can be programmed to look for expiring domain names or domain names for which other top level domains are available.
Furthermore, RMHP is not a dictionary word, or a common or generic term, but a combination of letters that is an acronym for its own name[1]. If it was a common word then logically advertising links on its home page would direct the user to something described by that common word. But they do not. In fact some of the links on the home page at the disputed domain name relate to the health care industry and to Complainant’s competitors.
Complainant conducted its own advanced Google search for RMHP which, when words that could be connected with itself or its activities were excluded, led to a nil result. Another search for RMHP in acronym bases yielded only three results, namely itself (as the first on the list), Reserves Mental Health Programme (in the UK), and Regional Mental Health Program (in Canada). Thus, this letter combination is almost unique to itself.
Complainant dismisses Respondent’s argument that laches provides an equitable remedy. In any case, as soon as Complainant became aware of the disputed domain name registration in September 2007, it immediately sent out a cease and desist letter. It was only after receiving no reply that Complainant filed a trademark application for RMHP.
Complainant notes that Respondent is in the business of the bulk registration of, and the buying and selling of, domain names. However it contends that the true test is not whether this is a legitimate business but whether Respondent’s registration of the disputed domain name is legitimate, and it concludes that by providing links to its competitors on its website, Respondent is not making legitimate use of the domain name or a bona fide offering of goods or services.
Complainant states that a Respondent need not be specifically aware of a Complainant when registering a disputed domain name for such a registration to be in bad faith.
Complainant further believes that the disputed domain name is profitable for Respondent because users searching on the internet for Complainant are more likely to type in the name <rmhp.com> than its own domain name <rmhp.org>. As a result they will be confused into thinking that they have reached the right site when they see on it links to health insurance.
Complainant also believes that Respondent deliberately makes it difficult for trademark owners to contact it by providing incomplete or hard to find contact information, and it contends that this is contrary to the Policy.
Complainant is a not-for-profit organisation which was founded in 1974 and is based in Grand Junction, Colorado, USA. It offers a range of medical health plans to nearly 200,000 enrollees. Complainant is the owner of US trademark registration No. 3,435,676 for RMHP in respect of “Organizing pre-paid health care plans; administration of pre-paid health plans” in Class 36; and “Health care; providing health information” in Class 44. The mark was registered on May 27, 2008 claiming first use from 2002.
Respondent has, since 2002, been in the business of registering domain name consisting of common word or combined letter denominations with the ultimate goal of developing them and reselling them to other entities. It claims to own thousands of such names. Its registration of the disputed domain name <rmhp.com> was on March 25, 2003.
PRELIMINARY ISSUE
Respondent has asserted that Complainant is debarred from bringing the Complaint because of the lengthy delay between it and the registration of the disputed domain name so this is a case where the defence of laches should apply.
There are instances where this would be the case see, for example, the Decision in 2010 in New York Times Co. v. Name Admin. Inc., FA 1349045 (Nat. Arb. Forum Nov. 17, 2010), in which is was said, “While laches is not expressly recognized in the UDRP Policy as a defense to a domain name complaint, some Panel decisions have recognized its availability when a particularly compelling set of facts have been present”. The WIPO Overview is equally cautious stating the defense does not generally apply under the UDRP.
This panel is of the view that the present Complaint is not a case for applying the doctrine of laches.
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.
Disregarding the suffix ‘.com’, as is the standard practice, the disputed domain name <rmhp.com> is identical to Complainant’s trademark registration for RMHP. But this domain name was registered on March 25, 2003 whereas the trademark was not registered until 8 years later on May 27, 2008.
Complainant claims to have started to use the trademark RMHP in 1974, although it also states that it did not commence promoting it until 2002, and indeed that is the date of first use which was claimed for its trademark registration. However Complainant has provided no proof of this alleged earlier use.
There is nothing in the Policy to forbid a Complainant from relying upon common law use of, or secondary meaning for, his trademark, but he should produce some evidence thereof. A straightforward statement without proof is not sufficient. As the Second Edition of the WIPO Overview of Panel Views has it: “Panels will be unlikely to take bald claims of trademark fame for granted.”
Nevertheless, the same Overview goes on to state that “[r]egistration of a domain name before a complainant acquires trademark rights does not prevent a finding of identity or confusing similarity under the UDRP.” It was noted in Esquire Innovations, Inc. v. Iscrub.com/Whois Identity Shield, D2007-0856 (WIPO Oct. 5, 2007) that paragraph 4 of the policy does not require any particular time at which a Complainant must have rights in a trademark or service mark, it only requires that a Complainant “has” rights i.e. at the time of the Complaint. Nevertheless this same Decision – in which one of the present Panelists also acted as a Panelist – goes on to point out that it has long been recognized that in such circumstances it is a different and much more difficult matter to establish that the domain name was registered in bad faith.
Applying the above reasoning, and given the fact that the trademark and the disputed domain name are identical, the Panel finds that paragraph 4(a)(i) is proved.
It is well established that the burden for proving that a Respondent has no rights or legitimate interests in a disputed domain name rests with a Complainant. However this puts him in the almost impossible position of proving a negative. So it is customary, when a Complainant has made out a prima facie case that a Respondent lacks rights and legitimate interests in a disputed domain name, for the burden to shift to Respondent to show that it does have rights or legitimate interests. See, e.g., Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Jordan, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
In this case, the Panel believes that Complainant has made out a prima facie case and so the burden falls upon Respondent.
According to paragraph 4(c) the Policy, a Respondent can demonstrate that he has legitimate rights or interest in a disputed domain name in one of three ways:
(i) That before any notice of the dispute, he has used, or made 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.
(ii) That he has been commonly known by the trademark even if he has acquired no trademark or service mark rights in it;
(iii) That he is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
It is clear that paragraph 4(c)(ii) cannot apply as the disputed name is <rmhp.com> and Respondent’s name is Domain Administrator, PortMedia.
As for paragraphs 4(c)(i) and (iii), Respondent’s principle, if not sole, business, is the registration, buying and selling of domain names. Many of these are of only 2, 3 or 4 letters and, in an unsworn Declaration filed with the Response, from one of Respondent’s managers, he states that it has “approximately 2492” of these. He also states that they are usually hosted with domain name parking services who share any advertising revenue generated therefrom. They are invariably also offered for sale. The Panel notes that in this case, Respondent’s offer to sell the disputed domain name came only in response to Complainant’s offer to buy it.
Respondent is not alone in having such a business model and it is, by now, a not unusual practice. In the past some Panels have held that this is insufficient to establish genuine use. See Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“It is clear that no legitimate non-commercial or fair use is being made of the Domain name without intent for commercial gain. The Respondent’s business is the registration and sale of expired domain names which by definition must signify that there is commercial gain involved.” ).
The same conclusion was reached in a later case, which has echoes of the dispute we are considering here. In Trade Me Ltd. v. Vertical Axis Inc., D2009-0093 (WIPO Apr. 7, 2009) it was said,
The Respondent has been the registrant of the disputed domain name for more than seven years before the Complainant took any action. Where, as here, the disputed domain name has been for virtually all of that time parked with Hitfarm.com there is a threshold issue of whether that amounts to use or preparations to use the disputed domain name by the Respondent. Whist the issue is not beyond argument we think that a use by which the Respondent receives revenue can be use by the Respondent, even if the Respondent never as it were takes “possession” of its domain name and delegates to others the exercise of the rights attached to the domain name.
It will be noted that, in the above quotation, the Panel believes that such use “could” be legitimate but, after further discussion, it concluded that in the particular circumstances of that case, the use did not fall within any of the definitions in paragraph 4(c) of the Policy. However it concluded that the question of legitimacy hinged upon the question of bad faith.
Given the similarity between the facts in the above quoted case and those in the present case, this Panel will also not come to a final conclusion before considering the question of bad faith.
In the present case, as with the above quoted Trade Me Ltd. case, the Complainant has waited a number of years before making any complaint during which time the disputed domain name has likewise been parked with Hitfarm.com. Also, by its own admission, Complainant only applied to register its trademark after it had made an unsuccessful attempt to purchase the disputed domain and, as we have noted above, if a domain name was registered prior to a Complainant’s trademark, it is difficult to find that it was registered in bad faith.
However of course paragraph 4(b) of the Policy, which lists four ways in which various circumstances that could be evidence of bad faith, actually seeks both registration and use of the disputed domain name. Complainant addresses the use aspect by accusing Respondent of deliberately targeting itself by placing links on the site to other insurance companies including some offering health insurance. Respondent replies that this was either coincidence, or not its responsibility and indeed, although Complainant may think itself as being substantial, its activities do appear to be confined to a fairly small geographical area, and to a small section of a huge industry. Also, to qualify for bad faith under paragraph 4(b)(iv), a Respondent is required to have “intentionally” used the domain name. The Declaration filed by Respondent’s manager very clearly shows that there was no such intent. He declares that the disputed domain name was not registered with Complainant’s trademark in mind. Indeed how could it have been as the trademark was not registered until 8 years later. He also declares that his company “had no knowledge of Complainant, its web site, its business name”. If this is indeed the case – and Complainant has produced no evidence to refute these claims – it is impossible to make any finding of bad faith, and so the Panel has concluded that paragraph 4(a)(iii) of the Policy has not been proved.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rmhp.com> domain name REMAIN WITH Respondent.
David H Tatham
Chairman
Diane Cabell, and Daniel B Banks
Panelists
Dated: January 26, 2012
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