U.S. Department of Health and Human Services v. none none
Claim Number: FA1407001572873
Complainant is U.S. Department of Health and Human Services (“Complainant”), represented by Kevin M. Hayes of Klarquist Sparkman, LLP, Oregon, USA. Respondent is none none (“Respondent”), represented by John E. Carlson of Carlson, Gaskey & Olds, P.C., Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <areds2.com>, registered with GODADDY.COM, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Charles K. McCotter Jr. (Ret.), Professor David E. Sorkin, and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on July 31, 2014.
On August 1, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <areds2.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 August 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2014 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 email@example.com. Also on August 7, 2014, 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 August 27, 2014.
Complainant submitted an acceptable Additional Submission on September 2, 2014.
Respondent submitted an acceptable Additional Submission on September 8, 2014.
On September 5, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Charles K. McCotter Jr., (Ret.), Professor David E. Sorkin, and Hon. Karl V. Fink (Ret.) (Chair) as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, U.S. Department of Health and Human Services, has been using the AREDS2 mark since 2007 in connection with information relating to the age-related eye disease.
ii. Complainant has a valid registration with the United States Patent and Trademark Office (“USPTO”) for the AREDS2 mark (Reg. No. 3571138, registered February 10, 2009).
iii. Complainant has common law rights in the AREDS2 mark.
iv. The disputed domain name is identical to the mark in which Complainant has rights.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent is using the disputed domain name to redirect internet users from Complainant’s website to Respondent’s website, which features Complainant’s mark and provides highly similar informational content and services to those offered by Complainant.
i. Respondent’s use of a disclaimer is insufficient to prevent a finding in bad faith.
ii. Respondent had actual or constructive knowledge of Complainant’s mark.
iii. Respondent’s use of false information in the WHOIS is evidence of bad faith.
a. The informational nature of the disputed domain name indicates a bona fide offering of goods or services.
b. Respondent has a nominative fair use right to the AREDS2 mark in the disputed domain name.
c. Respondent clearly indicates at the disputed domain name that it is not affiliated with the National Institute of Health via disclaimer.
d. The registration of the disputed domain name predates the registration of Complainant’s AREDS2 trademark.
Additional Submission from Complainant
a. The AREDS mark predates the domain name, even if the AREDS2 mark does not.
b. Respondent is using the disputed domain name to promote its own vitamin goods under the domain name; therefore, the disputed domain name is not being used only for informational purposes.
c. Nominative fair use does not extend to a domain name that is merely MARK + gTLD.
Additional Submission from Respondent
a. None of the evidence of use of “AREDS” or “AREDS2” submitted by Complainant shows any trademark use of those terms, particularly prior to 2005.
b. Respondent registered the disputed domain on September 28, 2005, before Complainant filed any applications in the USPTO.
c. Respondent’s informational website generates rights and legitimate interest in the domain name.
d. The website’s incidental commercial activity consists of a sole link to Google search results for vitamin products associated with the AREDS2 Study.
e. Respondent uses AREDS2 to refer to the study conducted by Complainant, and makes clear on its website that there is no sponsorship or endorsement by Complainant.
f. As such, Respondent has a nominative fair use right to use AREDS2 in the disputed domain.
g. Respondent did not “admit” that Complainant had prior rights or that Respondent was aware of any such rights. Rather, at the time Respondent registered the domain in 2005, Complainant had previously indicated that others could use the word “AREDS” with reference to the study “in an informational sense,” which is what the <areds2.com> website does.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Respondent claims its actions are a nominative fair use of the Complainant’s mark. In KBR, Inc. v. Jeffrey L. Raizner / Jeffrey Raizner, FA 1110001413439 (Nat. Arb. Forum December 27, 2011), the Panel stated:
Such use is protected both under paragraph 4(c)(iii) of the Policy and under the trademark laws of the United States of America, the country of residence of both Parties. Nominative use is present where the respondent needs to use the mark to describe its goods or services, uses no more of the mark than necessary, and does not falsely suggest sponsorship or endorsement by the mark owner. See Pacific-10 Conference v. Lee, D2011-0200 (WIPO May 17, 2011) (citing Toyota Motor Sales U.S.A. v. Tabari, 610 F.2d 1171 (9th Cir. 2010)).
The disputed domain name resolves to a web page that clearly states that it is a site dedicated to providing information about the AREDS2 study. The pages linked to on the landing page of the disputed domain name include “What is AREDS2 study?”, “What is AMD?”, and “AREDS2 Products”. The subheading of the landing page states “Age-Related Eye Disease Study 2 – Informational Website”.
In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Past panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
It appears to the Panel that the instant dispute constitutes a trademark dispute outside the scope of the UDRP, and the parties should resolve the matter in another forum such as a court of mutual jurisdiction or before the USPTO.
This controversy having been found not to be appropriately resolved within the mandate of the UDRP, the Panel ORDERS that the Complaint is DISMISSED without prejudice.
Hon. Karl V. Fink (Ret.) as Panelist (Chair)
Hon. Charles K. McCotter Jr., (Ret.) as Panelist
Professor David E. Sorkin as Panelist
Dated: September 16, 2014
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