A UDRP complaint for the domain name uhealth.com, that belongs to Marchex was denied by a 3 member panel at the National Arbitration Forum.
Complainant, University of Miami, filed a complaint for the domain uhealth.com owned by Marchex Sales, Inc., represented by John Berryhill, Pennsylvania, USA.
The disputed domain was originally registered by Ultimate Search Inc. in February of 2002. Respondent has owned the <uhealth.com> domain name since November 2004 after Respondent acquired it in an asset purchase.
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). Complainant registered the <uhealthsystem.com> domain name in 2007. Although Complainant argues to have used the expression UHEALTH as a trademark since 2007, there is no evidence of such use. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark UHEALTH.
It seems that John Berryhill didn’t ask for a Reverse Domain Name Hijacking (RDNH) ruling.
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.
Panel’s Discussion and Findings
A. Identical or Confusingly Similar
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. However, there is no evidence of use or secondary meaning of the expression UHEALTH.
Nonetheless, Complainant proved its rights in the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM. 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. Thus, Complainant established its rights in the trademark.
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.
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.
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.
B. Rights or Legitimate Interests
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.
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. 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.
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.
C. Registered and Used in Bad Faith
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.
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.
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.
So the complaint failed at the second and third element of the UDRP. For the foregoing reasons, the Complaint was denied.