The domain name MedicalPark.com was just awarded to a trademark holder Freiberger Holding GmbH (“Complainant”) in a UDRP.
The domain holder didn’t respond to the complaint yet the one member panel did some very broad over reaching in my opinion and not even consider the fact that the term “medical park” is a term often used by thousands if not tens of thousands of business and centers around the world.
Instead of looking at the case and the term the panel took the word of the complainant and adopted each of its positions.
A Google search of the direct match term “medical park” returns almost 6,000,000 results and none of the top results are going to the “trademark holder”.
Here are just a few of the brick and mortar business that are using this term as part of their name:
I could go on and on showing instances where the term Medical Park is being used, proving the generic nature of the term, but clearly the panel did not under take an independent review but instead accepted the argument of the trademark holder word for word.
Here are the relevant facts and findings of the panel:
“The complainant has a Trademark on the term medical park with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 8,479,602 registered February 22, 2010).
“Complainant also owns the MEDICAL PARK and Design mark with the following trademark authorities:Germany’s Patent and Trademark Office (“GPTMO”) (Reg. No. 397 20 832 registered July 5, 1997); OHIM (Reg. No. 1,609,999 registered July 31, 2001); World Intellectual Property Office (“WIPO”) (Reg. No. 683,819 October 27, 1997); and United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,087,832 registered May 2, 2006).”
“Respondent registered or acquired the disputed domain name in 2009, previously using it in an attempt to sell the domain name, and currently using it to offer a parked website with pay-per-click advertising.
“Complainant states that Respondent has parked the disputed domain name and is using it for ‘pay-per-click’ advertising, as shown in a screenshot of the resolving website.”
“Complainant states that Respondent’s disputed domain name previously resolved to a website stating, “DOMAIN FOR SALE,” and remains for sale via a link on the current resolving website. Complainant further states that Respondent offered to sell the disputed domain name for $25,000 and $45,600.”
“The Panel finds that these offers to sell the disputed domain name are further evidence that Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). ”
“Complainant argues that Respondent attempted to sell the disputed domain name to the general public, and to Complainant – first for $45,600 and then for $25,000. The Panel finds that Respondent’s offers to sell the disputed domain name are evidence of bad faith registration and use”
“Respondent uses the disputed domain name to direct Internet users to pay-per-click advertising, which disrupts Complainant’s business. The Panel finds that this disruption is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”
“Complainant also asserts that Respondent owns more than 1,790 domain names in addition to the name in dispute. Complainant asserts that because Respondent is a sophisticated registrant of domain names, that it cannot “willfully close his eye to colliding third-party rights in a trade mark.”
“Further, Complainant asserts that, because it has registered its marks worldwide, Respondent should have been aware of Complainant’s mark. ”
“Complainant cites several UDRP cases in support of the proposition that because Respondent is a “sophisticated domainer” there may be an inference of Respondent’s knowledge as to a trademark owners’ rights in a mark. Here, the Panel finds that Respondent had actual knowledge of Complainant’s mark prior to acquiring the disputed domain name and thus finds that Respondent registered the disputed domain name in bad faith”