Marchex & Berryhill Beat Back UDRP On uHealth.com

University of Miami just lost a UDRP on the domain name uHealth.com owned by Marchex Sales, Inc. who was a usual represented by John Berryhill.

Complainant has owned the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM in the United States of America since June 2, 2009. A

lthough Complainant argues to have used the expression UHEALTH as a trademark since 2007, there is no evidence of such use.

After a review of the Exhibit B to the Complaint where, according to Complainant, there would be examples of use, the Panel only found the current screenshot of the website <www.uhealthsystem.com>. Consequently, there is neither evidence of secondary meaning nor evidence of use. Thus, Complainant has not proven common law rights regarding the trademark UHEALTH.

Respondent uses a domain name which contains a generic word as its main element.

Complainant failed to prove its assertions regarding bad faith.

“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  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.”

“Complainant argues that Respondent does not have any rights or legitimate interests regarding the disputed domain name. However, Complainant did not file any evidence to prove its assertion.”

“In this case, Respondent argues that the expression “UHEALTH” is non-distinctive. Notwithstanding, this Panel considers that the expression “UHEALTH” is neither generic nor descriptive taken as a whole.

In fact, UHEALTH is not a common word in the English, Spanish, German or French language as the Panel confirmed through searches conducted in different online dictionaries.

“Respondent established its rights and legitimate interest in the disputed domain name, as follows:

“Respondent acquired the disputed domain name before Complainant registered or used its trademark, and has used it since 2005 in connection with health-related pay-per-click advertising (Exhibits F, G and H to the Response). Thus, Respondent has used the disputed domain name before any notice of the dispute.

T”he disputed domain name contains the word HEALTH as the main element, which is generic or descriptive of the services offered through the website by means of pay-per-click advertising. ”

“The letter U at the beginning of the disputed domain name is usually used as a shorter version of “you.”

“Therefore, it is possible for anyone to have thought about combining the letter U, referring to “you” or “your,” and the word “health” to identify a website which offers links to health-related websites.”

“The disputed domain name registration dates back to 2002 , and has been owned by Respondent since 2005 ”

“That is long before any use or trademark registration of Complainant’s UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM trademark.”

“Buying and selling domain names, as Respondent does, is in principle a legitimate business, as is owning a pay-per-click website, which qualifies as a bona fide offering of goods or services. Complainant has not provided any evidence to the contrary, such as evidence that the content of the website was changed to health-related links after the registration of the trademark.

T”hus, in view of the above arguments taken together, Respondent has established rights or legitimate interests in the disputed domain name, which Complainant failed to rebut.  Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is has not been satisfied.:

“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.”