Health Management Resources Corporation just won the rights to the domain name HealthySolutions.com in a one member panel National Arbitration Forum Decision, despite the fact that the domain was registered and owned by the domain holder Todd Kingsley since March 6, 2000 and the case seemed to turn on the fact the domain name was parked and some of the links were found to be in the classes covered by the trademark.
Here are the facts and findings by the one member panel:
Complainant owns rights in the HEALTHY SOLUTIONS trademark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,149,677 registered April 7, 1998), and uses it to provide guidance on healthy diet and lifestyle choices.
There are other USPTO trademark registrations for HEALTHY SOLUTIONS (by other trademark holders)
The disputed domain name resolves to a parked page that provides commercial links, some of which appear to be in the health industry.
Complainant contends that Respondent has no rights or legitimate interests in the healthysolutions.com domain name because it is not commonly known by the disputed domain name, and there is no evidence that Respondent acquired trademark or service mark rights in the disputed domain name.
The WHOIS information for the disputed domain name lists “Todd Kingsley” as registrant, which bears no resemblance to the disputed domain name. Previous panels have found that a respondent is not commonly known by a disputed domain name if the WHOIS information, along with other information on the record does not suggest a relationship between the two.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it is not making a bona fide offering of goods or services or a noncommercial or fair use of the domain name under Policy. Complainant contends that Respondent uses the disputed domain name to draw consumers to its website to sell the disputed domain name for a profit. However, Complainant offered no evidence of Respondent’s offer to sell the disputed domain name.
Complainant also claims that Respondent’s disputed domain name resolves to a parked website featuring links to advertisements such as “Lose Weight Fast,” “Diet Solution,” “Diet Programs,” “Lose Weight Program,” “Lose the Weight, Gain the Health,” “Healthy Solutions Clinic Weight-Loss Program: A Healthy Way to Lose Weight Quickly,” and “Begin Losing Weight Now!”
The Panel notes the supporting evidence submitted by Complainant and finds that the links offer goods or services that compete with Complainant.
Previous panels have found that a respondent has no rights or legitimate interests in a domain name where the identical disputed domain name resolves to a website featuring links to third parties that compete with Complainant’s business.
The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”)
Thus, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
The Panel finds that Complainant has made its prima facie case and, in defense, Respondent asserts that it has rights and legitimate interests in the disputed domain name because it registered the disputed domain name on March 6, 2000 and has continually used it since. Respondent argues that the Doctrine of Laches should apply where Complainant waited more than 10 years to enforce its trademark rights in the HEALTHY SOLUTIONS mark in this UDRP proceeding.
Respondent also argues that Complainant does not have exclusive rights to the HEALTHY SOLUTIONS name, due to the other trademark registrations for HEALTHY SOLUTIONS, and also because the phrase is very descriptive.
While the Panel agrees with Respondent that the mark is not unique, the Panel finds that Complainant holds an incontestable USPTO trademark registration with the exclusive right to use the HEALTHY SOLUTIONS mark in class 041 for “educational services, namely, conducting classes or personal health coaching sessions about dietary and lifestyle health choices,” and in class 042 for “weight reduction diet planning and supervision featuring a structured diet program in both group and individual settings.”
Respondent registered the healthysolutions.com domain name after Complainant obtained its trademark registration for HEALTHY SOLUTIONS.
Since Respondent is using the healthysolutions.com domain name for a parked page that offers services competing in Complainant’s exclusive field of use, the Panel finds that Respondent is not making a bona fide offering of goods or services of the disputed domain name.
The Panel also notes that, where Laches has been part of a successful defense in previous UDRP cases, the respondent was able to show a bona fide offering of goods or services.
If Respondent were making a non-competing use of the disputed domain name, the result might be different.
Further, as Complainant points out, Respondent did not argue or demonstrate any prejudice as a result of Complainant’s delay in filing this UDRP case, typically found in court cases where the Laches defense succeeded.
Moreover, Laches is an equitable remedy, routinely found to be out of place in UDRP proceedings.
Respondent’s disputed domain name resolves to a parked website featuring links that compete with Complainant.
Previous panels have found bad faith under Policy ¶ 4(b)(iii) when a respondent uses a confusingly similar domain name to resolve to a website featuring links that compete with complainant.
The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).