national arbitration forum

 

DECISION

 

North Broward Hospital District v. David Shiffman

Claim Number: FA1111001416226

 

PARTIES

Complainant is North Broward Hospital District (“Complainant”), represented by Janet Moreira Gamble of Stearns Weaver Miller Weissler Alhadeff & Sitterson, P.A., Florida, USA.  Respondent is David Shiffman (“Respondent”), represented by David D. Lin of Lewis & Lin LLC, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <browardhealth.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

G. Gervaise Davis and Sandra J. Franklin as Panelists and David S. Safran as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 18, 2011; the National Arbitration Forum received payment on November 18, 2011.

 

On November 18, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <browardhealth.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 21, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@browardhealth.com.  Also on November 21, 2011 the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on December 13, 2011.

 

Complainant’s Additional Submission was received on December 16, 2011 and deemed compliant with Supplemental Rule 7.

 

On December 22, 2011, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed G. Gervaise Davis and Sandra J. Franklin as Panelists and David S. Safran as Chair.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts that the domain <browardhealth.com> is confusingly similar to trademarks in which it holds common law and statutory rights. Complainant further asserts that Respondent has no rights or legitimate interests in the domain, in part in view of Complainant’s rights and otherwise because of the nature of the services being offered via the website. Essentially these assertions form the basis of Complainant’s arguments as to bad faith registration and use of the domain.

 

B. Respondent

Respondent contends that the disclaimer in the Complainant’s federal trademark registration limits the rights conferred thereby such as to preclude a finding of confusing similarity. Respondent further contends that it has rights and legitimate interests in respect of the domain name at issue because the directory of Broward County, Florida medical providers, insurance providers, and healthcare

industry careers provided at the website, to which the domain name resolves, is a legitimate use of the domain.  Additionally, Respondent asserts that the Complaint has failed to allege both registration and use of the Domain Name having produced no evidence supporting any of the bad faith factors

under Paragraph 4(b) of the Policy: that Respondent (1) registered the Domain Name primarily to sell it to the Complainant, (2) engaged in a pattern of conduct to prevent trademark owners from reflecting their marks in domain names, (3) sought to disrupt the business of a competitor, or (4) intentionally attempted to attract Internet users to her site for financial gain.

 

FINDINGS

The Panel finds that Complainant has failed to meet its burden of establishing both registration and use in bad faith. The Panel also finds that no reverse domain name hijacking has occurred.

 

DISCUSSION

Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)  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.

 

Identical and/or Confusingly Similar

 

In view of the Panel’s findings with regard to Policy Paragraph 4(a)(iii), it finds no need to evaluate whether or not this element has been proved.

 

Rights or Legitimate Interests

 

In view of the Panel’s findings with regard to Policy Paragraph 4(a)(iii), it finds no need to evaluate whether or not this element has been proved.

 

Registration and Use in Bad Faith

 

The Panel finds that Complainant failed to meet the 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).

 

Respondent alleges that Complainant initiated an offer to sell the <browardhealth.com> domain name by offering to purchase the disputed domain name for $1,000.00.  Respondent claims that it determined its expenses in registering the domain name and developing the resolving website and decided that $75,000.00 was a fair price of the disputed domain name.  Respondent further contends that Complainant made a second offer of $5,000.00.  In Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002), and Key II, Inc. v. Confino, Vico, FA 954029 (Nat. Arb. Forum June 5, 2007), the panels found no bad faith when the complainant initiated an offer for the domain name and the respondent offered to sell the disputed domain name at market price.  The Panel here similarly finds that Respondent did not register or use the <browardhealth.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).

 

Respondent alleges that it uses the disputed domain name in connection with providing information and hyperlinks relating to medical service providers in Broward County, Florida.  Respondent argues that such a use does not attempt to benefit from confusion as to Complainant’s affiliation with the domain name.  In DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000), and Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000), the panels did not find bad faith registration and use because the respondent made a legitimate use of the domain name with no intent of confusion. In this case, the registration sets forth a date of first use in 2007, less than five years ago, and at a time that the domain in dispute is shown to have been active by the Internet Wayback Machine so that the hospital should have been aware of its existence when it filed the application for trademark registration and certainly would have become aware of it when they registered <browardhealth.org> and <browardhealth.net>.  

 

Furthermore, the website to which the disputed domain resolves was used to advertise hospital jobs prior to issuance of Complainant’s trademark registration. On the other hand, Respondent ceased to advertise such jobs afterwards, i.e. made a change which would have the effect of minimizing confusion with Respondent. The Panel finds such a modification of the website to which the disputed domain resolves to mitigate against a finding of bad faith that is not overcome by any evidence provided by Complainant.   Furthermore, Complainant has failed to show any nexus between Respondent’s activities in development of its website and Complainant’s increased promotion and use of its mark. Thus, the Panel finds that the evidence provided by Complainant is insufficient to enable the panel to draw any inference of a bad faith intent on the part of Respondent in the registration and use of the domain name at issue here.

 

Respondent contends that the <browardhealth.com> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s BROWARD HEALTH mark.  Moreover, Respondent contends that the registration and use of domain name comprising such common terms is not done in bad faith.  As for the disclaimer, given the nature of the mark as shown in the registration, which emphasizes the logo and only the word Broward, the Panel finds that it would not have been unreasonable for Respondent to have viewed the words “Broward Health” as not being a protectable portion of the registered mark, particularly given that the domain name at issue had been registered and was active prior to filing of the Complainant’s application for registration and given the existence of an earlier third party registration 3,292,499 for the mark “MIAMI-DADE/BROWARD HEALTH NETWORK which also includes the words “Broward Health.”  In the absence of Complainant having provided any evidence of secondary meaning as to the words “Broward Health” by themselves, such as evidence that the words “Broward Health” mean the Complainant’s Hospital system as contrasted with the third party health network or any other healthcare provider in Broward County, the Panel finds that Complainant has failed to meet its burden of establishing that it was bad faith for Respondent to register or use a domain name containing the disclaimed words “Broward Health.”

 

Thus, the Panel finds Complainant has failed to establish that Respondent registered and is using the <browardhealth.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).

 

 

Reverse Domain Name Hijacking

 

While the Panel finds that Complainant has failed to satisfy its burden under the Policy, this does not necessarily render a finding of reverse domain name hijacking against Complainant for bringing the instant claim.  See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent). Here, the grounds put forth by Respondent as evidence of bad faith in filing of the Complaint is that Complaint did not mention the fact that the trademark application disclaimed the term “Broward Health,” and did not provide any reasons why it should be considered to have trademark rights in respect to a term that it has disclaimed. However, a disclaimer has no effect on any common law rights in the composite mark. In re Franklin Press, Inc., 201 U.S.P.Q. 662, 664 (C.C.P.A. 1979). And the standard wording of a disclaimer does not affect the rights of a registrant with respect to the scope of its protection in published registrations. In re Owatonna Tool Co., 231 U.S.P.Q. 493 (Comm'r 1983). Thus, the Panel finds that no reverse domain name hijacking has occurred because the mere fact that Complainant did not mention the disclaimer, by itself, is not evidence that Complainant was acting in bad faith and the same is true for Complainant’s failure to satisfy its burden under the Policy; see, cases cited above.

 

DECISION

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

 

Accordingly, it is Ordered that the <browardhealth.com> domain name REMAIN WITH Respondent.

On behalf of the Panel, G. Gervaise Davis and Sandra J. Franklin Panelists,

by David S. Safran, Chair

Dated:  January  12, 2012

 

 

 

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