SelectHealth, Inc. of Murray, Utah just lost a UDRP on a direct match domain of its trademark SelectHealth.com
The one member panel noted that the domain name was registered long before the trademark was filed, however the panel also noted that for at least some time the domain was used in bad faith, as the domain name was parked, the domain holder offered to sell it to the trademark holder for $30K and appeared for a time that the domain holder may have lifted some copyrighted material off the complainant website at selecthealth.org and placed it on the .com
In all seemed to be a very closed decision which as the panel advised may ultimate result in a lawsuit.
Here is some language that I wanted to point out which is the highlight of the decision:
“””When a company like Complainant chooses a brand comprised of two common terns, such as “select” and “health”, it runs the risk that third parties may have registered identical or similar domain names previously. Such is the case here. ”
“Finally, the Panel does not agree with Complainant’s contention that mere renewals of an existing domain name registration trigger bad faith registration arising as of the time of renewal.””
Here are the relevant facts and findings by the one member panel:
Complainant began using the SELECTHEALTH family of marks as early as April 2006.
Complainant applied for registration of its SELECTHEALTH trademark with logo as early as April 2007. Complainant applied for the word mark SELECT HEALTH on February 9, 2011 and the mark was registered on September 20, 2011.
The Domain Name was registered on October 14, 1997.
“In this case, the Panel finds that Complainant in its Complaint did present a prima facie case showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.”
“Complainant contends that Respondent’s only use of the Domain Name has been as a web address that resolves to a “pay-per-click” advertising site featuring advertisements for, and links to, medical, health and dental insurance services and health education services, through which Respondent earns revenue through GoDaddy’s CashParking pay-per-click service. ”
“Since Respondent acquired the Domain Name, the page has resolved to various formats of pay-per-click advertising pages, often with advertisements for Complainant’s competitors or competing goods and services. Complainant asserts that it is well-established that using a domain name to direct users to a site primarily intended to generate pay-per-click advertisement revenue is not a bona fide offering of goods and services”.
“Because Complainant has made out a prima facie case showing that Respondent does not have rights or legitimate interests in the Domain Name, Respondent now carries the burden of demonstrating rights or legitimate interests in the Domain Name. ”
“The evidence submitted by Respondent is less than conclusive in this regard. ”
“Respondent has asserted that he has used the Domain Name in connection with a website that registers clients, offers certain software and support, and has been used for marketing and communication.”
“The current website, which was put up after notice of the dispute, has information about a medical Oasis e-Form for mediaire, but it is not clear whether Respondent has simply copied content from other Internet sources as a façade, or developed legitimate content itself. ”
“The Panel observes that parts of the current site are incomplete, rambling or confusing. ”
“Respondent also admits that he has used the Domain Name in connection with GoDaddy’s CashParking service.”
“Much of the historical evidence submitted by both parties reflects content that appears to be generated by automated web parking pages with pay-per-click links. ”
“Still at other times, Respondent admits that he has used the site linked to the Domain Name to collect registration data, much of it from customers of Complainant in Utah. :
“Complainant has asserted that Respondent has used the website linked to the Domain Name to post Complainant’s copyright-protected material taken directly from Complainant’s website at ”selecthealth.org”.
“Respondent asserts that certain of the actions it has taken, which might otherwise be viewed as grounds for bad faith use under the Policy or trademark infringement under United States federal trademark law, were performed with the knowledge, consent or acquiescence of Complainant. :
“In this regard, Respondent claims that he performed certain tests to collect registration data while providing Complainant with this information. The Panel is not in an ideal position to evaluate the credibility of Respondent’s assertions on these points; however, the Panel has serious doubts as to Respondent’s assertion that the Domain Name has been used with Complainant’s alleged consent or acquiescence during those periods where Respondent copied Complainant’s copyrighted material or registered Complainant’s customers”.
“One further factor that complicates the analysis, as discussed below, is that Respondent’s registration of the Domain Name predates Complainant’s rights in its SELECTHEALTH group of trademarks”.
“Respondent registered the Domain Name in 1997 before any targeting of Complainant could have occurred. Nonetheless, there is a lack of evidence that Respondent has used the Domain Name in a manner that gave rise to any rights or legitimate interests in the Domain Name”.
“On the balance of the probabilities, therefore, the Panel finds that Respondent has failed to rebut Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy”.
“Complainant contends that the Domain Name has been registered and used in bad faith. In particular, Complainant urges that Respondent is using the Domain Name to incorporate Complainant’s marks and intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the website or the goods and services offered therein”
“Complainant further asserts that Respondent has used the website linked to the Domain Name to post Complainant’s copyright-protected material taken directly from Complainant’s site, and that consumers visiting Respondent’s site believe that it belonged to Complainant, as evidenced by Respondent’s receipt of material clearly intended for Complainant”
“Finally, as another indication of bad faith, Respondent has offered to sell the Domain Name to Complainant for US$30,000 and Respondent has a pattern of registering domain names containing third party marks”.
“The Panel finds that Respondent has, at least during certain periods, used the Domain Name in a manner that constitutes bad faith”
.”In particular, using Complainant’s copyrighted content and generating confusion with Complainant and its services, combined with offers to sell the Domain Name at an exorbitantly high price, leads the Panel to consider that the Domain Name has been used by Respondent in bad faith”.
“Moreover, Respondent is responsible for the content of any pay-per-click advertisements and links generated through a GoDaddy’s CashParking service. ”
“Finally, as noted above, the Panel considers that Respondent’s factual assertions are not credible concerning how the Domain Name has been used with Complainant’s alleged consent or acquiescence. These circumstances show bad faith use and may raise concerns of infringement under United States federal trademark law”.
“The Panel decides, however, that in this case Complainant’s claim must nevertheless be denied”.
“In the particular circumstances of this case, Complainant has failed to demonstrate that the Domain Name was registered in bad faith”.
“Respondent registered the Domain Name in October 1997, more than 8 years prior to Complainant’s earliest use of the SELECTHEALTH mark. There is no evidence before the Panel that Respondent, at that time, was infringing on any third party’s intellectual property rights”.
“Respondent makes the point that when Complainant registered the identical string in a different top-level domain in 2005, <selecthealth.org>, Complainant was likely aware that Respondent had already registered the Domain Name <selecthealth.com> in the “.com” top-level domain. Respondent used the Domain Name, a combination of the generic terms “select” and “health”, for a period of more than 8 years before Complainant acquired rights in its SELECTHEALTH mark. ”
“When a company like Complainant chooses a brand comprised of two common terns, such as “select” and “health”, it runs the risk that third parties may have registered identical or similar domain names previously. Such is the case here. Finally, the Panel does not agree with Complainant’s contention that mere renewals of an existing domain name registration trigger bad faith registration arising as of the time of renewal.
“The Panel is sympathetic to Complainant’s concern that Respondent has been using the Domain Name recently in a manner that triggers bad faith use. However, while the Panel determines that Respondent’s use of the Domain Name has been in bad faith during certain periods and may also give rise to infringement concerns under United States federal trademark law, this is a case in which the requirement under the Policy of registration in bad faith has not been met”.