UDRP coin flip: uhealth.org gets transferred while the complaint for uhealth.com was denied last week

Is this really what the UDRP was designed for? Is ICANN happy with this travesty?

The domain uhealth.org was transferred to the complainant in a case that was decided by a 2-1 majority of the panel. There was a dissenting decision by The Honorable Neil Anthony Brown, Q.C..

Last week, 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.

It seems that depending on who the panelists are you will get different decisions. The two cases had many similarities, yet the outcome was different. Here are a few of the similarities:

• both cases were filed at the National Arbitration Forum
• both cases were for a “uhealth” domain name
• complainant was the University of Miami
• both cases were decided by a 3 member panel
• Neil Brown QC was a panelist in both cases
• both respondents were represented by John Berryhill
• both domains had PPC links to health services and products

The only 2 differences were that the colors used in uhealth.org were claimed to be similar to the colors used by the Complainant and that the domain name uhealth.org was acquired after the Complainant registered it’s trademark. But the colors weren’t so similar after all and the subsequent registration doesn’t make any difference where the domain name is generic and it is being use in it’s descriptive sense.

About the similar colors Hon N A Brown QC said that “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.”

Hon N A Brown QC also said that his view was that the domain name is not confusingly similar to complainant’s trademark. Hon N A Brown QC said: “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. […] As such, my view is that the Respondent’s use of the domain is clearly legitimate.”

The Honorable Neil Anthony Brown, Q.C. concluded by saying:
“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.“

So what caused the 2 different decisions? The answer is simple. Just look at the 2 other panelists in each case (besides The Honorable Neil Anthony Brown, Q.C.) and you have your answer. UDRP is flawed and something must be done. And of course the solution is not the cheap UDRP (URS).

This is not the first time something like this happens this year. Mclaren.net was transferred while the complaint for Mclaren.biz was naturally denied

Let’s see all the uhealth.org case details:

Complainant, University of Miami, filed a complaint for the domain uhealth.org owned by DNS Manager / Centri Group, represented by John Berryhill, Pennsylvania, USA.

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.

The Complainant has a registered trade mark in the USA for UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM including a stylized capital U and including colours distinctive of the Complainant green and orange. It is registered since 2009 for health care services.

The Complainant asserts that it has common law rights in UHEALTH dating back to 2007, however the Complainant has only produced one dated document evidencing fairly recent press use of UHEALTH in relation to the Complainant and the other documents, namely web pages showing use by the Complainant of UHEALTH, appear to be more or less contemporaneous with the preparation of the complaint.  As such the panel finds that the Complainant has not shown common law rights in UHEALTH predating the registration of the Domain Name.

Other universities and third party businesses use UHEALTH in relation to healthcare products and services.

The Respondent registered the Domain Name in May 2009 and has used it for pay per click links related to healthcare which are not connected with the Complainant. The Respondent used green and orange colours and a picture of a young woman apparently aged around twenty on its site. The Respondent has given no reason for the adoption of green and orange colours on its site.

The Respondent admits he registered the Domain Name after the Complainant began using its registered mark. The panel accepts that there is no evidence linking the Respondent with the earlier registration of uhealth.org which was used for links to phone tricks.

Panel’s Discussion and Findings

A. Identical or Confusingly Similar

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 Complainant has since 2009 a registered trade mark in the USA for UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM including a stylized capital U and including the claim of colours distinctive of the Complainant green and orange.

However the majority of the Panel are of the opinion that the UHEALTH part of the mark is by far the dominant element of the mark appearing much larger than the subsidiary text UNIVERSITY OF MIAMI HEALTH SYSTEM which appears underneath with the appearance of a strapline. Whilst the registered mark is certainly not identical with the Domain Name, the majority of the panel find that its dominant element UHEALTH has such prominence in the mark that the mark as a whole is confusingly similar to the Domain Name.

B. Rights or Legitimate Interests

The Respondent admits he registered the Domain Name after the Complainant began using its registered mark. The Panel accepts that there is no evidence linking the Respondent with the earlier third party registration of <uhealth.org> which was used for links to phone tricks.

The Respondent has produced evidence that UHEALTH is used by other universities and third party businesses not connected with the Complainant. The Panel accepts that UHEALTH can be used as the phonetical equivalent of ‘you health’ and can, in certain circumstances, be used innocently in relation to healthcare services.

However the majority of the Panel believes that the presence of the green and orange colours on the web site used by the Respondent, colours that the Respondent admits are distinctive of the Complainant, suggest that the Respondent knew about and was targetting the Complainant hoping to attract its hits. The fact that the Complainant dominates the search results of Google for UHEALTH suggest that it is the best known or most searched for entity under UHEALTH on the popular search engine Google.

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.

C. Registered and Used in Bad Faith

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.

Decision

For the foregoing reasons, the majority of the Panel ordered that the <uhealth.org> domain name be TRANSFERRED from Respondent to Complainant.

DISSENT

The Hon N A Brown QC

IDENTICAL OR CONFUSINGLY SIMILAR

I agree with the majority that the Complainant has not established common law or unregistered trademark rights in UHEALTH. Indeed, the evidence showed that a wide range of businesses, both universities other than Miami and also other non-universities use UHEALTH to cover their goods and services that can be described as healthcare products and services.

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