Med Help International, Inc.
v. [Unknown Registrant]
Claim Number: FA0612000868825
PARTIES
Complainant is Med Help International, Inc. (“Complainant”), represented by Gary
J. Nelson, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <medhelp.com>, registered with Go Daddy
Software, 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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 13, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 14, 2006.
On December 14, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <medhelp.com> domain name is
registered with Go Daddy Software, Inc.
and that the Respondent is the current registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On December 15, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 4, 2007 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent’s registration as technical, administrative and billing contacts,
and to postmaster@medhelp.com by e-mail.
A timely Response was received and determined to be complete on January 4, 2007.
Complainant submitted a timely and complete Additional Submission on
January 9, 2007.
On January 11, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
On January 17, 2007, the Respondent submitted an
Additional Submission. This submission
was determined to be deficient because it was filed too late. The Panel has chosen not to admit this
Additional Submission, because it does not offer any additional arguments or
information that would affect the Panel’s decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant states that it owns US trademarks for MED HELP and MED
HELP INTERNATIONAL, and that it has been using those marks in commerce since
1994. Therefore, it alleges, it has
acquired common law trademark rights.
The Complainant’s organization was founded in 1994 to provide free and
reliable medical information to patients to help them make informed decisions
about treatment. To do this, it started
a web site in 1994 at <www.medhelp.org> that provides high-quality medical
information and access to world-class medical professionals and experts.
The Complainant states that it partners with world-class medical
professionals from well-known universities, that it is a non-profit entity that
relies on its high quality reputation for support and donations, and that its
well-recognized and dependable name is an important asset.
The Complainant alleges that its trade name MED HELP has acquired
secondary meaning, and thus common law trademark rights, that its site is
widely used (over 32 million hits in 2006), and that it has been recognized by
the media and government entities.
According to the Complainant, the disputed domain name is identical or
confusingly similar to its mark MED HELP.
Further, the Respondent has no rights or legitimate interest in the
disputed domain name because it is not currently using the disputed domain name
and it has made no demonstrable preparations to use it.
Further, states the Complainant, the Respondent has elected to keep its
identity hidden in violation of its contract with the Registrar, which is
evidence that it has no legitimate interest, and is also evidence of bad faith.
According to the Complainant, the Respondent registered the disputed
domain name in order to prevent the Complainant from using it. Further, any use of the string MED HELP to
provide medical advice by any party other than the Complainant suggests bad
faith, given that Complainant’s trademark is so obviously connected with the
Complainant.
B. Respondent
According to the Respondent, the string “MED HELP” is generic and it
has acquired little secondary meaning that is directly related to the
Complainant. The Complainant does not
own any
The Respondent states that, in 2000, it began developing a business
model and related web services predicated upon the concept of providing
answer-engine services. The focus of
that service quickly became providing expert medical opinions. Domain names registered around that time
include <askadoctor.com>, <answersoft.com>, and
<getanswers.com>.
According to the Respondent, in 2002, in an effort to secure available
generic domain names that were reasonably related to its services, it identified
the Complainant as a potential competitor and/or partner and, simultaneously,
noticed that the contested domain name was for sale. The Respondent got in touch with the
Complainant and developed a mutually beneficial business relationship utilizing
the various complimentary assets of the respective companies.
In 2003, due to litigation, the Respondent reduced its web-based
operations. In 2006, the Respondent
began the process of reestablishing its Internet presence and web sites and it
intends to use the disputed domain name to provide access to medical
information.
According to the Respondent, it has made no attempt to hide it’s identity, the owner of the disputed domain name has not
changed since it was acquired by the Respondent in 2002.
The Respondent states that it has no interest in preventing the
Complainant from using an inherently generic and descriptive mark, and that it
has never disrupted nor attempted to disrupt the Complainant’s business. Further, it has not created a likelihood of
confusion: indeed, the very nature of the generic and descriptive term “med
help” creates a likelihood of confusion completely independently from the
Respondent’s use of the disputed domain name.
C. Additional Submissions
In its Additional Submission, the Respondent clarifies that it is
claiming common law trademark rights, not registered trademark rights. And it argues that it does indeed have such
common law trademark rights in the string “MED HELP”.
According to the Complainant, the Respondent only acquired the disputed
domain name when it identified the Respondent as a competitor and then
intentionally registered the disputed domain name, while being well aware of
the Respondent’s common law rights in the string “MED HELP”.
Further, states the Complainant, it protested that registration, and
for the next 18 months the Respondent redirected the disputed domain name to
the Complainant’s web site. During that
time, consumers all over the Internet built links pointing to the disputed
domain name in order to access the Complainant’s site.
In 2004, the Complainant severed relations with the Respondent after
finding out that they were being investigated by the Securities and Exchange
Commission (SEC) for violations of US securities laws. At that time, the Respondent redirected all
traffic from the disputed domain name to its site <askadoctor.com>. This caused confusion, as consumers who
accessed the links that had formerly taken them to the Complainant’s site were
suddenly diverted to the Respondent’s site <askadoctor.com>. The Respondent thus used the Complainant’s
trademark, goodwill, and reputation to divert consumers to its own
website. This clearly constitutes bad
faith disruption of a competitor’s business.
The Complainant also raises a procedural issue, arguing that the party
that filed and signed the Response is not the Respondent, because Rule 1
defines the “Respondent” as the “holder of a domain-name registration against
which a complaint is initiated”, meaning (according to the Supplemental Rules)
the entity or person listed in the WHOIS database. In the present case, the WHOIS registration
information is blank, and, since the party who filed the Response is not
listed, it cannot be considered to be the Respondent.
The Complainant argues that the business relation between itself and
the Respondent did not give the Respondent any rights in the Complainant’s
trademarks. Under the agreement between
the parties, the Complainant provided a link to the Respondent’s web site and
received some revenue each time a user accessed the Respondent’s site from the
Complainant’s site.
FINDINGS
The Complainant has applied for
The Complainant’s website at
<medhelp.org> is widely used and recognized.
A different non-profit organization appears
to offer medical information at the domain names <med-help.net> and
<med-help.com>.
Starting in 2000, the Respondent offered
various answer-engine web services on various websites, including medical
information.
From mid-2002 through mid-2003, the
Respondent provided certain services to the Complainant, with a revenue-sharing
agreement.
The disputed domain name was redirected to
the Complainant’s website from September 2002 through April 2004. It was subsequently redirected to the
Respondent’s site <askadoctor.com>, from April 2004 through December
2004. Subsequently, the disputed domain
name pointed to a blank page, and this is still the case at present.
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.
Prior to addressing those substantive issues, the Panel will address
the procedural issue raised by the Complainant, namely the allegation that the
party who filed the Response cannot be considered to be the Respondent because
that party is not shown in the WHOIS database.
The Panel dismisses the Complainant’s argument, because the Rules define the “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” It is not disputed that the holder of the disputed domain name is the party that filed the Response, so it cannot be disputed that that party is the Respondent. The Complainant correctly points out that the Supplemental Rules go further than the Rules in defining the term “Respondent.” But this Panel holds that the Rules take priority over the Supplemental Rules, and that the Supplemental Rules should not be construed in a way that would contradict the Rules.
Thus, the inaccuracy in the WHOIS
database cannot be construed to argue that the actual undisputed holder of the
disputed domain name is not the Respondent in the sense of the Rules. The WHOIS inaccuracy might or might not be
evidence of bad faith, but that is a substantive issue to be dealt with
below. Therefore, the Response is
admitted.
The Complainant claims to have common law
trademark rights in the string “MED HELP.”
This contention is disputed by the Respondent.
For the reasons set forth below, it is not
necessary for the Panel to decide this question, which is best left to the
competent national courts.
The Complainant asserts that the Respondent
has no rights in the disputed domain name, but it admits that (1) it agreed to
redirection of the disputed domain name to its own website from September 2002
through April 2004 and (2) the disputed domain name was used by the Respondent
to provide access to the Respondent’s website at <askadoctor.com> from
April 2004 through December 2004.
Thus, the Complaint’s own submissions show that the Respondent has in fact used the disputed domain name in connection with a bona fide offering of goods or services, which, under paragraph 4(c)(i) of the Policy is sufficient to establish that the Respondent has rights to the disputed domain name.
Indeed, even if it is admitted that the Complainant has a valid trademark in the string MED HELP, the Complainant has failed to show that it could somehow claim exclusive rights to that mark, and thus prevent not only the Respondent from using the disputed domain name, but also the operator of the websites <med-help.net> and <med-help.com> from using those domain names. The string “MED HELP” is indeed descriptive, and, even if the Complainant owns a valid trademark, it cannot prevent all other parties from registering related domain names, because a related domain name can be used to provide a bona fide offering of goods or services. See SFX Entm’t., Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and legitimate interests in the domain name where he began demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (finding rights and legitimate interests in the domain name where the respondent sought to develop a bona fide business use for the domain name).
It is not disputed that the agreement between the parties during the period from September 2002 through April 2004 did not contain any provisions related to the use of the disputed domain name. That agreement cannot be considered to be analogous to a distribution agreement. The Complainant states that, during this period, as a result of its complaints or requests, the Respondent redirected traffic from the disputed domain name to the Complainant’s website. That is, while there was a business relation between the parties, the Respondent redirected traffic to the Complainant’s website. When the business relation ended, the Respondent stopped redirecting the traffic to the Complainant’s website and started redirecting it to one of its own websites.
On the basis of the submissions of the parties, this Panel holds that the Respondent’s action in this respect appear to be permissible commercial behavior: a business relation had ended, so the Respondent used its asset (the disputed domain name) to increase its own direct business. There were no agreements between the parties that obliged the Respondent to use (or not to use) the disputed domain name in some particular way. As noted above, any trademark rights that the Complainant might have cannot be held to grant exclusive use to the Complainant of all domain names containing the string “MED HELP.”
In addition, as the Panel stated in Nat’l Alliance for the Mentally Ill Contra Costa v. Fouts, FA 204074 (Nat. Arb. Forum, Nov. 28, 2003):
Furthermore, there is no reason to suppose that Internet users would tend to look for information on the Complainant within the top level domain “.com.” Complainant is a non-profit organization. The types of organizations that should be registered in the several top level domain names are defined in IETF RFC 1591, clause 2 of which states:
“COM - This domain is intended for commercial entities, that is companies. … ”
Thus, Complainant could be expected to have registered a domain name in a domain other than “.com”, which is in fact the case, since the Complainant’s web site is in the top level domain “.org.”
On the other hand, the Respondent operates a for-profit web site, and thus would be expected to use a domain name under “.com.”
This Panel
concludes that the Respondent has used the disputed domain name for a bona
fide offering of services and, thus, that it has legitimate rights in the
disputed domain name. Therefore the
Complaint fails.
The Complainant raises numerous allegations
of bad faith behavior which might or might not be actionable under national
laws. Given that, as noted above, the
factual record provided by the Complainant itself clearly establishes that the
Respondent has, for the purposes of the Policy, rights to the disputed domain
name, it is not necessary for the Panel to consider the allegations of bad
faith.
DECISION
Having established that the Respondent has rights to the disputed
domain name, the Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: January 22, 2007
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