Information/criticism website build by a law firm survives a UDRP complaint at NAF

Cedars-Sinai Medical Center submitted a Complaint to the National Arbitration Forum on July 24, 2012 for the domain name CedarsSinaiUnpaidWages.com. Respondent was the Initiative Legal Group.

The disputed domain name was registered on July 12, 2012, so this must be one of the fastest fillings, if the not the fastest. Only 12 days to find out about the domain registration and file for a UDRP complaint.

Complainant  Cedars-Sinai  operates a medical center in the United States since 1961 is accused of possible labor violations. Respondent Initiative Legal Group is a law firm currently investigating claims that  the Cedars-Sinai Medical Center may have failed to pay its employees the wages to which they were lawfully entitled and whether it could be subject to a class action lawsuit. On the  CedarsSinaiUnpaidWages.com website one will find information about these possible labor violations as well as information regarding seeking counsel about their legal rights in connection with their employment with Cedars-Sinai.

Complainant is a non-profit hospital located in Los Angeles, California with medical, hospital, research and administration facilities. Complainant provides patient care, biomedical research, medical education and community service. Complainant owns several registrations with the USPTO for marks containing the “Cedars-Sinai” name, inter alia, CEDARS-SINAI, Reg. No. 1779365, Reg. Date June 29, 1993, filed on November 3, 1992, covering medical services of International Class 42, with first use and first use in commerce in 1961.

Cedars-Sinai has registered many domains that have to do with their name and lawsuits such as: cedars-sinai-lawsuit.net, cedars-sinai-lawsuit.org, cedars-sinailawsuit.com, cedars-sinailawsuit.net, cedars-sinailawsuit.org, cedarssinailawsuit.com, cedarssinailawsuit.net, and cedarssinailawsuit.org.

Respondent is a law firm offering legal services and prosecuting class actions and other litigation on behalf of consumers, employees and others. Among Respondent’s clients are Complainant’s employees.

Cedars-Sinai in an effort to prove that Respondent is not using its website as a gripe site made the following statement:

The <cedarssinaiunpaidwages.com> website actually contains very little negative information; in fact, it expressly avoids criticizing Complainant. Aside from this information, the website requests the contact information of individuals who may be potential claimants in such a class action lawsuit. Thus, by any measure, this website is purely a commercial venture, rather than a gripe site as Respondent claims.

The Panel found that the disputed domain name was confusingly similar to Complainant’s CEDARS-SINAI mark.

The Panel found that Respondent’s use of the disputed domain name in this case satisfied the nominative use test, so Complainant did not prove the second element of the UDRP. During its independent visit to the website cedarssinaiunpaidwages.com, something that the Panel here didn’t do, the Panel confirmed that the website contains an offer of legal services to potential clients having legal claims under California’s labor law against Complainant. Moreover, the content of the website is intended for Complainant’s employees believing that their wages and other compensation for their services have not been duly paid by Complainant. In the Panel’s view, Respondent’s use of Complainant’s mark in the disputed domain name represents a nominative fair use of Complainant’s mark. Nominative fair use is protected both under paragraph 4(c)(iii) of the Policy and under the trademark law of the United States of America, the country of residence of both Parties.

Since the Panel found that the Complaint failed at the second element, the Panel did not address the issue of bad faith and the Panel concluded that relief shall be DENIED.

I guess there is a lot more to see between the 2 parties in courts.

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About Konstantinos Zournas

Konstantinos studied Computer Engineering and Computer Science in London and lives in Athens, Greece. He works on domain names, websites and software development. Has been online since 1995 & domaining since 2002.

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