My Health, Inc. v Top Tier Consulting, Inc.

Complainant’s Additional Submission was received on August 4, 2010 in compliance with Supplemental Rule 7.

Respondent's Additional Submission was received on August 9, 2010 in compliance with Supplemental Rule 7.

On August 10, 2010 , pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael Albert as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it possesses United States Patent and Trademark Office (“USPTO”) registration of the MY HEALTH mark (“Mark”). Complainant contends that this mark was registered on November 10, 2009, and that this Mark is used in Complainant's business. Complainant contends that it has products in commerce and operates several domains not subject to this dispute.

Complainant alleges that Respondent has registered <myhealth.com> (“Domain”) and that this Domain is identical or confusingly similar to the Mark.

Complainant alleges that Domain resolves to a “parked” web page and does not offer goods or services. Complainant alleges that Respondent is not known by the name contained in Domain. Complainant alleges that Respondent has owned Domain “since 1995” and that there is no indication that Respondent uses or plans to use Domain beyond its current “parked” state. Complainant alleges that Respondent plans to use Domain in the future for financial gain by “utilizing references” to Complainant or Complainant's business.

Complainant alleges Respondent has violated copyright law and has not complied with fictitious business registration requirements. Complainant alleges that Complainant contacted Respondent on October 9, 2009 (see Exhibit D to Complaint) and that the Respondent never responded.

Complainant alleges that the sum of the above allegations “evidences [Respondent's] intentional infringement and their actions are in bad faith.”

Through Complainant's Additional Submission, Complainant further alleges that Respondent's proposed use of Domain would be in violation of Complainant's patent. Complainant further alleges that “Respondent did not object to the My Health trademark when it was published for opposition on December 30, 2008” and that Respondent's failure to use Domain “coupled with correspondence sent to Respondent” should be viewed as bad faith on part of Respondent. Complainant further amends its Complaint to allege that Respondent was made aware of the Mark on September 12, 2008. Complainant rebuts Respondent's attack on the Mark.

Both Complainant and Respondent dispute the authentication requirements of the evidence submitted to the Panel and Complainant’s satisfaction of same.

B. Respondent

Respondent's main contention is that Domain “was registered and used by Respondent more than a year before Complainant existed or its [Mark] was first used.” Respondent argues that its good faith registration, use and legitimate rights in Domain, and Complainant's generic and descriptive Mark require that Complaint be denied.

Complainant contends that it purchased Domain for $150,000 in February 2007 and has been attempting to develop a health related portal using Domain since that time. Respondent alleges that Complainant contacted Respondent “wanting to purchase the domain name or doing a joint venture” in September 2008 and that “the first objection to Respondent's use of [Domain] was . . . October 2009.” Respondent asserts that these facts entitle Respondent to a finding of good faith registration.

Respondent submits evidence in the form of slide presentation and argument that it asserts demonstrate rights and legitimate interests in the Domain.

Respondent further submits that Complainant's use of Mark is generic and not entitled to protection as a trademark.

Through its Additional Submission, Respondent further asserts that “[a]ny possible bad faith - which never occurred - is well beyond February 8, 2007, the crucial registration date in question.”

Both Complainant and Respondent dispute the authentication requirements of the evidence submitted to the Panel and Complainant’s satisfaction of same.

C. Additional Submissions

Both Complainant and Respondent have submitted substantial additional submissions with additional evidence. The Panel has carefully considered each of these submissions and notes each submission's additional allegations above.

FINDINGS

The Panel finds that notwithstanding Respondent's attack on the validity of Mark, Complainant has established that it currently owns protectable rights in the MY HEALTH Mark as a result of its federal registration of the Mark on the Principal Trademark Register.

The Panel finds that the <myhealth.com> Domain is confusingly similar to Complainant's Mark.

The Panel finds that Respondent has rights or legitimate interests in Domain.

The Panel finds that Complainant has not provided sufficient evidence that Respondent registered Domain in bad faith.

The Panel finds that Complainant has not proven two of the three elements in Policy ¶ 4(a) and DENIES the transfer of the disputed domain to Complainant.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Both parties have briefed the Panel on competing lines of precedent. The Panel notes that the UDRP does not operate on a strict doctrine of precedent. It is of course desirable that the Panel's decision is consistent with prior panel decisions dealing with similar fact situations to ensure that the UDRP system operates in a fair, effective, and predictable manner for all parties. Where a consensus opinion has developed around similar fact situations as is present in this case, the Panel endeavors to follow such opinion.

Both parties have disputed the level of authentication required in an arbitration proceeding such as the one before the Panel. The Panel reminds the parties of UDRP Policy Rules ¶¶ 3(b)(xv), 5(b)(ix), and 10(d), which in sum direct all parties to submit their complete evidence and that the Panel “shall determine the admissibility, relevance, materiality and weight of the evidence.” The Respondent in particular is reminded that this is an arbitration proceeding and is not subject to any particular authentication rules.

Identical and/or Confusingly Similar

Complainant asserts rights in its MY HEALTH mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,709,669 filed May 7, 2008; issued November 10, 2009). Notwithstanding Respondent's alleged attack on Mark, the Panel finds that Complainant’s registration of its MY HEALTH mark with a governmental trademark authority such as the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

Complainant argues that Respondent’s <myhealth.com> domain name is identical to Complainant’s MY HEALTH mark. Complainant indicates that Respondent’s disputed domain name merely deletes the space between the terms in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” to the entirety of Complainant’s mark. The Panel finds that these changes are insufficient to avoid a finding of confusing similarity for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).

While Respondent argues that its registration of the <myhealth.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).

While Respondent contends that the <myhealth.com> domain name is comprised of common and generic terms and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

For each of these reasons, the Panel finds that the Complainant has established rights in the Mark under Policy ¶ 4(a)(i) and that the Domain is identical or confusingly similar to Mark.

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does in fact have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

The Panel holds that Complainant has established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). Complainant asserts that Respondent’s disputed domain name fails to resolve to an active website and merely displays “MyHealth.com – Coming Soon!” Complainant alleges that Respondent has owned the disputed domain name since 1995 and has not made any demonstrable preparations to use the disputed domain name. While noting that the Respondent claims purchase of the domain name in 2007, The Panel finds that Respondent’s failure to make an active use of the disputed domain name for the last three years is evidence that Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not using the disputed domain name for either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

The burden to show rights or legitimate interest thus shifts to the Respondent.

The Panel holds that Respondent has shown that it does have rights or legitimate interests in Domain. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

Respondent argues that it has made efforts to seek funding for its medical website and has thus demonstrated use and preparations to use the disputed domain name in connection with a bona fide offering of goods or services, namely personal healthcare and related services. Respondent asserts that its goal has been to use the disputed domain name for a consumer healthcare portal website to put healthcare in the hands of patients and doctors, where appointments with doctors can be made, prior visits confirmed, physician consults made online, and informed decisions made when searching for a new physician. Respondent further asserts that it has conducted a number of meetings to develop the website by either financing or joint ventures.

Despite the fact that Complainant alleges that Respondent has been unsuccessful in these endeavors, the Panel finds that Respondent has demonstrated that its preparations to use the disputed domain name to create a healthcare portal site are in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name); see also Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006) (concluding that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).

Respondent asserts that Complainant’s MY HEALTH mark is generic and that Respondent has filed a petition to cancel Complainant’s trademark registration with the USPTO. Respondent contends that the terms “my” and “health” are generic as to any product addressing an individual’s health rather than identifying a specific source or origin of any product. The Panel finds no need to address this contention.

Complainant alleges that Respondent is or will be in violation of Complainant's patent. The Panel agrees with Respondent that this allegation is not relevant to this domain name dispute resolution process. Actions, if any are warranted, for alleged patent infringement may be brought in appropriate national courts.

Registration and Use in Bad Faith

The Panel finds that Complainant failed to meet its burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).

As the Panel concludes that Respondent has rights or legitimate interests in the <myhealth.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).

The Panel further finds that Respondent has not registered or used the <myhealth.com> domain name in bad faith by violating any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).

Respondent asserts, correctly, that there is no evidence that Respondent has either registered or used the domain name in bad faith as Respondent registered the disputed domain name more than fourteen months before Complainant or its MY HEALTH mark even existed. Respondent indicates that it purchased the <myhealth.com> domain name in early February 2007 for $150,000. Respondent further contends that this was long before Complainant’s first use of the MY HEALTH mark in mid-April 2008. The Panel finds that Respondent’s purchase and registration of the disputed domain name nearly fourteen months before Complainant’s first use of its mark in commerce is evidence that Respondent has not engaged in bad faith registration as defined in the Policy. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark).

Respondent also contends that the <myhealth.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s MY HEALTH mark. Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. The Panel finds it unnecessary to reach or resolve these allegations as the above facts alone suffice to establish that Respondent’s registration was not in bad faith.

Other Considerations

It appears from the facts of this case that Complainant established its business and trademark rights while aware that the disputed domain name was already registered by another entity. Indeed, it appears that Complainant brought this arbitration proceeding only after negotiations to purchase or join with Respondent failed. Lastly, as noted above, Complainant has alleged bad-faith registration notwithstanding the fact that it did not even exist (or own any trademark rights) at the time of Respondent’s registration.

Paragraph 15(e) of the Rules provides inter alia that the Panel may find that the Complainant brought an arbitration proceeding “in an attempt at Reverse Domain Name Hijacking or . . . primarily to harass the domain-name holder.” See also Sustainable Forestry Management Limited v. SFM.com and James M. van Johns “Infa dot Net” Web Services, D2002-0535 (WIPO Sept. 13, 2002). However, the Respondent has not alleged Reverse Domain Hijacking and the Panel declines to make this determination where the parties have not raised the issue or been given the opportunity to brief the Panel on their respective positions.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Michael Albert, Panelist
Dated: August 26, 2010

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