Complainant is SelectHealth, Inc. of Murray, Utah, United States of America, represented by Stoel Rives, LLP, United States of America.
Respondent is James E Risinger II of Austin, Texas, United States of America, represented by Chuck D. Lopez, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2012. On November 20, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2012. The Response was filed with the Center on December 13, 2012.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on December 19, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel is aware that Complainant inquired with the Center about the possibility of submitting a supplemental filing; however, the Panel did not receive a supplemental filing from either party. 4. Factual Background
Complainant, SelectHealth, is a Utah corporation and wholly-owned subsidiary of Intermountain Health Care, Inc. (“ Intermountain”), also a Utah corporation.
Complainant began using the SELECTHEALTH family of marks as early as April 2006. Complainant applied for registration of its SELECTHEALTH trademark with logo as early as April 2007. Complainant applied for the word mark SELECT HEALTH on February 9, 2011 and the mark was registered on September 20, 2011.
The Domain Name was registered on October 14, 1997. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar to a trademark: Complainant states that its parent company, Intermountain, is a well-known healthcare company that has provided a variety of healthcare-related services in the Intermountain West region of the United States since at least as early as 1975 and is currently the largest healthcare provider in the region.
As part of its services, Intermountain both directly and through Complainant and Complainant’s predecessors in interest has long offered health insurance and related services to its consumers. Complainant explains that Intermountain and, since 2006, Complainant have branded the insurance services with a number of trademarks that contain the terms “selecthealth” and “select,” including
SELECTHEALTH, SELECTHEALTH TRANSITION, SELECTHEALTH HEALTHSAVE, SELECTHEALTH SIGNATURE, SELECTHEALTH ESSENTIALS, SELECTHEALTH ADVANTAGE, SELECTHEALTH COMMUNITY CARE, SELECTHEALTH PRESCRIPTIONS, SELECTHEALTH GROUP LIFE, SELECTHEALTH LIFE, SELECTHEALTH TERM LIFE, SELECTHEALTH DENTAL, SELECTHEALTH MEMBER ADVOCATES, SELECTHEALTH HEALTHY BEGINNINGS, SELECTHEALTH DENTAL, SELECTHEALTH AN INTERMOUNTAIN HEALTHCARE COMPANY, SELECTHEALTH EYEWEAR, AND SELECTHEALTH PRESCRIPTIONS; and
SELECTMED, SELECTMED PLUS, SELECT: MED, SELECT: MED +, SELECT CHOICE, SELECT: CHOICE, SELECT CARE, SELECT CARE PLUS, SELECT: CARE, SELECT: CARE +, SELECT VALUE, SELECT: VALUE, SELECT: ACCESS, SELECT LIVING, SELECT CARE HEALTHSAVE, SELECT: PRESCRIPTIONS AND RXSELECT.
Complainant contends that through continuous and extensive use since at least as early as August 1996, Complainant, in part through Intermountain and Complainant’s other predecessors in interest, has established rights in these marks in the United States and has applied to register each of them with the United States Patent and Trademark Office (“USPTO”). Twenty-nine of these applications have matured to registration, including three registrations for SELECTHEALTH. Complainant began using the SELECTHEALTH family of marks as early as April 2006 for the same goods and services. The marks have been used in connection with medical, insurance and education services, including health, life, prescription drug, vision and dental insurance services, physician referral services, health education services and entertainment services related to health education.
Owning a trademark registration satisfies the requirement that Complainant possesses rights in a trademark. Complainant asserts that the Domain Name registered by Respondent is confusingly similar to Complainant’s marks. Except for the addition of “.com”, the sight, sound and meaning of Complainant’s SELECTHEALTH marks, the dominant portion of each of the other SELECTHEALTH marks and the Domain Name are identical. The “.com” top-level domain suffix should be disregarded in the test for confusing similarity.
Complainant further contends that the Domain Name is confusingly similar to Complainant’s SELECT family of marks, in particular the SELECTMED and SELECTMED PLUS marks. The dominant portion of the Domain Name is identical to the dominant portion of Complainant’s SELECT marks, which fact weighs heavily in favor of finding confusing similarity. The first word, prefix, syllable or letter in a mark is generally the dominant part of the mark, in part, because it is often the first part of a mark that is impressed upon the mind of a purchaser. In addition, “select”, when used in connection with health care and health insurance services, is distinctive and non-descriptive, whereas terms such as “health”, “care” or “med” are descriptive of such services. Confusion is generally not avoided by using different descriptive terms when the distinctive portions of the marks are identical and the marks are used on closely-related goods or services. Finally, the meaning or connotation of the word “health” in the Domain Name is closely related to the meaning or connotation of most of the second words in the Complainant’s SELECT family of marks, including the words “care” in SELECTCARE and similar marks and “med” in SELECTMED and similar marks. Accordingly, the Domain Name is confusingly similar to the SELECT Family of Marks, including the marks SELECTMED and SELECTMED PLUS.
No rights or legitimate interests: Complainant states that it has no relationship with Respondent and has never authorized Respondent to use the Domain Name. Nowhere in the record, including information from the WhoIs database, does it indicate that Respondent is or ever has been commonly known by “Select Health” or any derivation thereof. Respondent’s only use of the Domain Name is a web address that resolves to a “pay-per-click” advertising site featuring advertisements for, and links to, medical, health and dental insurance services and health education services, through which Respondent earns revenue from Google AdSense for Domains either directly or through GoDaddy CashParking, a pay-per-click service offered by the Registrar. Since Respondent acquired the Domain Name, the page has resolved to various formats of pay-per-click advertising pages, often with advertisements for Complainant’s competitors or competing goods and services. The advertising links include advertisements for health and dental insurance services and health education services, both of which are directly competitive with Applicant’s insurance and education services.
Respondent has never used the Domain Name in connection with a bona fide offering of goods and services. The current webpage to which the Domain Name resolves is used for pay-per-click advertisements, and all copies of the past versions of the webpage to which the Domain Name resolved as available on the Internet Archive show that the Domain Name was used for pay-per-click advertisements. It is well-established that using a domain name to direct users to a site primarily intended to generate pay-per-click advertisement revenue is not a bona fide offering of goods and services.
Finally, the Domain Name is not a noncommercial or fair use of Complainant’s marks. Respondent’s use of pay-per-click and banner advertisements on the linked website is proof of commercial use of the Domain Name. Because Respondent does not identify Complainant on the site, Respondent’s use is not a nominative or fair use of Complainant’s marks. Further, the marks are also not suggestive or descriptive of the services Respondent purports to offer on the site, therefore precluding any claims that the marks are used in a merely descriptive or suggestive manner.
Registered and is being used in bad faith: Complainant contends that Respondent is using the Domain Name to incorporate Complainant’s marks and intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the website or the goods and services offered therein, and as to Complainant’s authorization, licensure or sponsorship thereof.
Complainant states that Respondent has shown bad faith by offering a page resolving from the Domain Name, which is nearly identical to Complainant’s marks, that contains links to third party advertisers, many of which offer goods and services competitive with or similar to the goods and services offered by Complainant. Respondent is pirating Complainant’s goodwill and consumer recognition for their own financial gain by capitalizing on consumers entering Complainant’s mark SELECTHEALTH. In fact, Respondent is generating revenue with a pay-per-click system by receiving compensation from Google AdSense for Domains and/or GoDaddy’s CashParking in exchange for the posting of ads for competitive and other similar goods and services on the webpage. Such activity is frequently cited by UDRP panels as evidence of bad faith.
Complainant states that, to the extent applicable, the use of automatically generated content will not excuse Respondent’s bad faith. Indeed, Respondent has specified in the metadata for the Domain Name website that the advertisements be based on the keyword “health insurance”. Further, in response to receiving a demand letter sent on Complainant’s behalf on October 17, 2012, which letter gave notice of Complainant’s intent to file this Complaint, Respondent changed the website at the Domain Name in an effort to appear to make legitimate use of the Domain Name. Altering a disputed webpage in response to a UDRP complaint is evidence of bad faith.
Complainant asserts that Respondent has also used the Domain Name website to post Complainant’s copyright-protected material taken directly from Complainant’s website at “”. Consumers visiting the Domain Name believed that it belonged to Complainant as evidenced by Respondent’s receipt of material clearly intended for Complainant. Complainant provided copies of emails sent from Respondent to Complainant’s employee with attached documents addressed to Complainant. In these emails, Respondent admits to receiving over 1,200 emails in July and August of 2012 regarding the Domain Name, in addition to other prior emails which Respondent had lost. Respondent further admits that over the course of three months in 2012, 637 people subscribed to an email marketing list advertised on the Domain Name’s website. Of those 637 subscribers, 622 provided addresses in the state of Utah, which is Complainant’s home state and the area where Complainant provides the bulk of its services. Respondent presented those numbers to Complainant in an effort to induce Complainant to purchase the webpage by showing that the Domain Name is valuable to Complainant at least in part because consumers visited the Domain Name looking for Complainant. Respondent’s use of Complainant’s copyrighted material and Respondent’s emails admitting actual consumer confusion show that Respondent uses Complainant’s marks to attract users to the website for the purpose of realizing commercial gain based on consumer confusion as to Complainant’s sponsorship, affiliation, or endorsement of the website, which constitutes bad faith use under paragraph 4(b)(iv) of the Policy.
Complainant argues that as another clear indication of his bad faith, Respondent has offered to sell the Domain Name directly to Complainant for US$30,000 and made this offer by telephone to Complainant’s employee. Respondent has also made the offer to sell public. This amount is considerably higher than Respondent’s estimated costs for the Domain Name, which, because Respondent has done nothing more than use a parked page with pay-per-click advertisements on the Domain Name, would only include the cost of registering and maintaining the registration for the Domain Name. Based on the Registrar’s currently advertised price of US$9.99 per year for a “.com” domain name registration and ignoring the offsetting effect of revenue generated by the pay-per-click advertisements, Registrant’s out-of-pocket costs for the Domain Name likely do not exceed US$200. The offer to sell for an amount 150 times greater than Respondent’s estimated costs is evidence that Respondent’s primary purpose for acquiring the Domain Name was to transfer it to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name. Such intent is proof of bad faith registration and use of the Domain Name under paragraph 4(b)(i) of the Policy.
Complainant further urges that Respondent has a pattern of registering domain names containing third party marks. Respondent owns registrations for and , among other domain names. These domain names are confusingly similar to the third-party trademarks ASSISTRX (United States Reg. No. 3,899,558), owned by National Health Information Network, Inc. for use in connection with “[h]ealth insurance plan reconciliation services for others, namely, reconciliation of third-party receivables for pharmaceutical claims”, and EVRX (United States Reg. No. 3,893,098), owned by Global VetLink, LLC for use in connection with “computerized online ordering services featuring prescription drugs and over the counter medication” and EVRX (United States Reg. No. 4,142,904), owned by Electric Visual Evolution, LLC, for use in connection with “[o]ptical goods, namely, eyeglass and optical frames, eyeglasses, sunglasses; structural and replacement parts for all of the foregoing, namely, lenses, frames, ear stems, and nose pieces; cases for eyeglasses and sunglasses”. Such behavior constitutes a pattern of registering domain names in order to prevent the owner of the mark from registering the domain name, which is proof of bad faith under paragraph 4(b)(ii) of the Policy.
Further, Complainant states that the Domain Name is not a noncommercial or fair use of Complainant’s mark. Respondent’s use of pay-per-click and banner advertisements on the website is proof of commercial use of the Domain Name. Because Respondent does not identify Complainant or its mark on the website, Respondent’s use is not a nominative or fair use of the mark. The mark is also not suggestive or descriptive of the services Registrant purports to offer on the website, therefore precluding any claims that it is used in a descriptive or suggestive manner.
Although the Domain Name was first registered on October 15, 1997, Complainant states it is unable to determine exactly when Respondent took control of the Domain Name as the available records date only back to December 4, 2001. In addition, records from the Internet Archive’s Wayback Machine show no use of the Domain Name prior to October 5, 2001. As a result of this evidence, Complainant asserts that Respondent took control of the Domain Name sometime in 2001, by which time Complainant had already began using its SELECT family of marks, including SELECTMED and SELECTMED PLUS, which marks had been in use since August 31, 1996. Even if Respondent was the original registrant of the Domain Name, Complainant had been using at least SELECTMED and SELECTMED PLUS for more than a year prior to the original registration of the Domain Name.
Complainant argues that regardless of the date Respondent acquired rights to the Domain Name, Respondent did so in bad faith. First, prior to using the Domain Name to collect pay-per-click revenue, Respondent had an obligation, pursuant to paragraph 2 of the Policy, to conduct a due diligence review to determine whether the registration and use of the Domain Name infringed any third-party trademark rights. Such a review would have likely revealed the trademarks in use by Complainant’s parent company, Intermountain Health Care. In addition, Respondent renewed the Domain Name at least six times after Complainant began using SELECTHEALTH and the other marks in the SELECTHEALTH family of marks. Complainant states that renewal is equivalent to registration of a domain name, and bad faith at the time of renewal satisfies paragraph 4(a)(iii) of the Policy. Had Respondent conducted a due diligence review as required by paragraph 2 of the Policy before any of the last six renewals of the Domain Name, Respondent would have discovered Complainants rights in the marks.
Complainant states that regardless of Respondent intent when registering the Domain Name, Respondent’s current bad faith use of the Domain Name, as evidenced by the use of pay-per-click advertisements and links to Complainant’s competitors and by Respondent’s offer to sell the Domain Name to Complainant, violates the Registration Agreement and breaches the representation and warranties made by Respondent under paragraph 2 of the Policy, thereby retroactively constituting bad faith registration. By showing that Registrant has breached the representation and warranties made at the time of registration, Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
Finally, Complainant argues that even if the Panel in this proceeding fails to find bad faith at the time Respondent first acquired rights to the Domain Name, paragraph 4(a)(iii) of the Policy should be not be read to require bad faith at the time of registration. Respondent’s current bad faith use of the Domain Name is a sufficient basis for satisfying the requirement of paragraph 4(a)(iii) of the Policy. Following the reasoning of a number of UDRP panels, when considering the totality of the circumstances of registrant’s use of the Domain Name, Complainant satisfies the bad faith requirement of paragraph 4(a)(iii) of the Policy. Complainant should prevail based on the overriding objective of the Policy to curb the abusive registration of domain names in the circumstances where registrant is seeking to profit from and exploit the trademark of another. B. Respondent
Respondent states that he bought the Domain Name in 1998 for US$3,000 and has conducted business under the ‘’www.’’ URL continuously since that time, maintaining clients and marketing from 1998 until today. Respondent claims that Complainant has intentionally omitted web page history in the evidence submitted, which shows that Respondent marketed health information products during periods while it owned the Domain Name.
Respondent states that Complainant was granted the trademark SELECT HEALTH on February 9, 2011, which is 13 years after Respondent started using the Domain Name.
Respondent explains that Complainant obtained the domain name in July 2002 and the domain names , and in October 2005. Respondent further assets that Complainant, without notice to Respondent, began using the name, Select Health, for marketing and business purposes from an indeterminate date. Respondent states that there are no records on the WayBackMachine to show that Complainant used its domain name on the Internet until August 27, 2010. According to Respondent, several other companies continue to this date to use the “Select Health” name in marketing their health insurance products in direct competition with Complainant, although Complainant has not filed claims against these companies.
In December 2011, Respondent states that a representative of Complainant contacted Respondent and offered to purchase the Domain Name for US$18,000. Respondent did not accept the offer. Respondent alleges that Respondent and Complainant agreed that they would revisit the offer to purchase at a later date. Respondent further states that it contacted Complainant in good faith to indicate that Respondent’s website would be used to gather visitor demographics by resembling Complainant’s ”” site, but being labeled as ”www/” and thereby determining if there was misdirecting to Respondent’s website. Respondent states that no complaint or notification was given in response by Complainant to Respondent. After the two month test Complainant was contacted and given statistics of 1,243 emails and 638 registered visitors to the “www.SelectH” website. In that email Respondent stated that none of the visitors to the site were contacted or marketed.
Respondent states that information gathered from his website linked to the Domain Name shows that there are approximately 111 registered visitors, as it promotes Respondent’s OASIS-C health software. However, 30% of the visitors are from Utah, which is a highly disproportionate number of registrants from Utah. Respondent states that this can be attributed to the confusing marketing by Complainant using instead of their other domain name, . During the test months there were 638 registered visitors, nearly a 600% increase. Of those 638 registered visitors, 96% were from Utah. Respondent alleges that this test was agreed necessary to determine that Complainant had undervalued the Domain Name in their initial offer.
On September 5, 2012, Respondent alleges that it contacted Complainant’s representative in good faith with a counter-offer to sell the Domain Name for US$30,000 in consideration of a more reasonable market value. Complainant was informed that the website linked to the Domain Name was redirected to the GoD’s CashParking system with a sales price of US$30,000 to facilitate the transaction. Complainant did not complain or give any notification to Respondent concerning the CashParking system or the two month traffic test on the site linked to the Domain Name.
On October 2, 2012, Respondent alleges that it called Complainant’s representative, asking if the September 5 email was received. Complainant’s representative confirmed receipt and stated that it was "budget season" so Complainant could see what it had "in the budget" to purchase the Domain Name. Complainant’s representative asked if the Domain Name could be taken off of GoDaddy’s CashParking system if an agreement was reached. Respondent replied that if a sales value for the Domain Name was agreed, the URL work be immediately re-directed to Complainant’s , in good faith, until the sale was complete. Respondent also replied that if the sale was not agreed, Respondent would use the Domain Name for the new web software product as was intended before Complainant contacted Respondent to purchase the Domain Name in late 2011.
According to Respondent, on October 17, 2012, Complainant's representative emailed Respondent in bad faith with a letter indicating that the ownership of the Domain Name would be challenged through a UDRP procedure. This was allegedly the first complaint by Complainant after several discussions and full disclosure by Respondent concerning the use of the Domain Name to determine the fair market value. On October 19, 2012, due to Complainant’s alleged bad faith actions, Respondent retracted the offer to sell the Domain Name. The URL was redirected to the previously developed website to market Respondent’s products. Respondent has been contacted by other individuals inquiring to purchase the Domain Name.
The Respondent responds to the statements and allegations in the Complaint as follows and requests that the Panel deny the remedy requested by Complainant:
- Complainant's parent company, Intermountain, is a well-known healthcare company that has provided a variety of healthcare insurance services. Complainant branded the insurance services with a number of trademarks that contain the terms SELECTMED and SELECTMED PLUS dating from September 2004; however, Respondent contends these marks have no connection to the Domain Name and should be considered irrelevant.
- The word "select" is a generic name and cannot be trademarked.
- Respondent does not have any records showing the mark SELECT HEALTH, applied for by Complainant on February 9, 2011, was granted. Respondent questions if the generic words “select” and “health” can be granted and defended as a trademark. If “Select Health” was registered as a mark, it is does not supersede the prior and superior registration and use of the Domain Name from 1998.
- Respondent has not used the following marks, all registered after September 2004, and considers them irrelevant to the registration of the Domain Name and rejects the idea of protection for a "family of marks": SELECTHEALTH TRANSITION, SELECTHEALTH HEALTHSAVE, SELECTHEALTH SIGNATURE, SELECTHEALTH ESSENTIALS, SELECTHEALTH ADVANTAGE, SELECTHEALTH COMMUNITY CARE, SELECTHEALTH PRESCRIPTIONS, SELECTHEALTH GROUP LIFE, SELECTHEALTH LIFE, SELECTHEALTH TERM LIFE, SELECTHEALTH DENTAL, SELECTHEALTH MEMBER ADVOCATES, SELECTHEALTH HEALTHY BEGINNINGS, SELECTHEALTH DENTAL, SELECTHEALTH AN INTERMOUNTAIN HEALTHCARE COMPANY, SELECTHEALTH EYEWEAR, SELECTHEALTH PRESCRIPTIONS; and SELECTMED, SELECTMED PLUS, SELECT: MED, SELECT: MED +, SELECT CHOICE, SELECT: CHOICE, SELECT CARE, SELECT CARE PLUS, SELECT: CARE, SELECT: CARE +, SELECT VALUE, SELECT: VALUE, SELECT: ACCESS, SELECT LIVING, SELECT CARE HEALTHSAVE, SELECT: PRESCRIPTIONS and RXSELECT.
Identical or confusingly similar to a trademark: Respondent asserts that the domain names, and , registered by Complainant, are intentionally confusing with Respondent’s Domain Name and that Complainant has used many of Respondent’s email addresses associated with the Domain Name intentionally since 2005 in disregard of using Complainant’s domain name.
Respondent further asserts that Complainant has mismanaged Complainant’s use of so that Complainant's employees use the Domain Name as their email address for marketing and conducting business. This mismanagement causes expense and confusion as Respondent must review emails to find those misdirected to Respondent. Emails are received by Respondent from Complainant's employees and representatives containing highly sensitive information including medical information protected by HIPAA and employees and individuals name, date of birth, sex, social security number and other private information. Respondent asserts that Complainant has intentionally mis-marketed the SELECT HEALTH mark to the degree that Respondent received dozens of calls a day from Complainant’s customers and employees when phone numbers were added from January-March 2012. This mismanagement causes expense and confusion as Respondent must take and/or return calls to customers attempting to reach Complainant.
Respondent states that from 2011 to June of 2012, the "Contact" page linked to Respondent’s Domain Name was marketing a home health software and provided a link to Complainant 's insurance company if the web visitor was looking for health insurance. Complainant's representative had mentioned the link and thanked Respondent for the assistance in redirecting confused individual’s to Complainant's site.
Respondent contends that Complainant’s SELECT HEALTH marks were applied for in February 2011, that the dominant portion of each of Complainant’s other SELECT HEALTH family of marks and the Domain Name are not identical; and that the ".com" top-level domain suffix should not be disregarded in the test for confusing similarity. Further, there is no evidence that Complainant has filed actions to defend their trademarks of the generic words "select” and "health" or the combination "select health" against any other companies using "select health" to sell competing insurance products on the Internet.
Rights or legitimate interests in respect of the Domain Name: Before Respondent received notice of the dispute from Complainant, the Domain Name has been used from 1998 through 2012 for marketing and customer communication. Customers of Respondent are, and will be, under contract with Respondent. Respondent's clients pay for computer software usage, programming and hardware support for their computer based health systems purchased or licensed from Respondent. A sample payment history from a client in Arkansas, United States is attached showing their payments from 2000 through 2012 for services and yearly contracts. This customer changed accounting systems in 2000 and it is inconvenient for them to give records from previous years. The client emails directly to […]@.
Registered and is being used in bad faith: Respondent makes the following points in respect of bad faith:
- That he registered the Domain Name in 1998, while Complainant registered its domain name in October 2005. It is therefore impossible for Respondent to have registered the Domain Name in order to prevent Complainant from conducting business. Further, Respondent asserts that because Complainant's registration of the domain names and/or postdate Respondent's registration of the Domain Name, Complainant necessarily discovered that Respondent’s Domain Name was already in existence and registered. Therefore, Complainant's domain name registrations are in bad faith and infringe upon Respondent’s rights to "Select Health", and Complainant's later use of its domain names was imprudent and foolish to the extent that Complainant did not contemplate a likelihood of confusion.
- Respondent has not engaged in a pattern of reflecting any mark of Complainant. A test was done to determine a counteroffer to Complainant for the Domain Name, with full notice given to the Complainant. The test website clearly displayed "www.".
- Complainant and Respondent are not competitors and Respondent has not sold health insurance. “www.god” did put pay-per-click banners on the CashParking site when Respondent put the Domain Name for sale and contacted Complainant with a counteroffer. There is no evidence that any health insurance policies were sold to anyone visiting Respondent’s site. For those who visited Respondent’s site linked to the Domain Name, it was caused by Complainant's intentionally selecting to use the domain name , instead of marketing under their domain which was also registered in October 2005.
- Due to Complainant’s bad faith and misleading actions to gain from and do business under Respondent's Domain Name, it is no longer for sale for Respondent’s counteroffer of US$30,000. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, Complainant must prove each of the following:
(i) the Domain Name is identical or confusingly similar to Complainant’s trademark; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) of the Policy are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondent may be evidence of Respondent’s rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) of the Policy above. A. Identical or Confusingly Similar
Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that the Domain Name is identical to Complainant’s SELECTHEALTH trademark, entirely incorporating the term while adding the “.com” top-level, which does not change the overall impression. The Domain Name is also confusingly similar to several of Complainant’s other SELECTHEALTH group of trademarks. Therefore, the Panel concludes that Complainant has established this element of the Policy. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, the Panel finds that Complainant in its Complaint did present a prima facie case showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy. Complainant has confirmed that it has no relationship with Respondent and has never authorized Respondent to use the Domain Name. Nowhere in the record, including information from the WhoIs database, is there evidence that Respondent is or ever has been commonly known by “Select Health” or any derivation thereof. Complainant contends that Respondent’s only use of the Domain Name has been as a web address that resolves to a “pay-per-click” advertising site featuring advertisements for, and links to, medical, health and dental insurance services and health education services, through which Respondent earns revenue through GoDaddy’s CashParking pay-per-click service. Since Respondent acquired the Domain Name, the page has resolved to various formats of pay-per-click advertising pages, often with advertisements for Complainant’s competitors or competing goods and services. Complainant asserts that it is well-established that using a domain name to direct users to a site primarily intended to generate pay-per-click advertisement revenue is not a bona fide offering of goods and services.
Because Complainant has made out a prima facie case showing that Respondent does not have rights or legitimate interests in the Domain Name, Respondent now carries the burden of demonstrating rights or legitimate interests in the Domain Name. The evidence submitted by Respondent is less than conclusive in this regard. Respondent has asserted that he has used the Domain Name in connection with a website that registers clients, offers certain software and support, and has been used for marketing and communication. The current website, which was put up after notice of the dispute, has information about a medical Oasis e-Form for mediaire, but it is not clear whether Respondent has simply copied content from other Internet sources as a façade, or developed legitimate content itself. The Panel observes that parts of the current site are incomplete, rambling or confusing. Respondent also admits that he has used the Domain Name in connection with GoDaddy’s CashParking service. Much of the historical evidence submitted by both parties reflects content that appears to be generated by automated web parking pages with pay-per-click links. Still at other times, Respondent admits that he has used the site linked to the Domain Name to collect registration data, much of it from customers of Complainant in Utah. Complainant has asserted that Respondent has used the website linked to the Domain Name to post Complainant’s copyright-protected material taken directly from Complainant’s website at ””. Respondent asserts that certain of the actions it has taken, which might otherwise be viewed as grounds for bad faith use under the Policy or trademark infringement under United States federal trademark law, were performed with the knowledge, consent or acquiescence of Complainant. In this regard, Respondent claims that he performed certain tests to collect registration data while providing Complainant with this information. The Panel is not in an ideal position to evaluate the credibility of Respondent’s assertions on these points; however, the Panel has serious doubts as to Respondent’s assertion that the Domain Name has been used with Complainant’s alleged consent or acquiescence during those periods where Respondent copied Complainant’s copyrighted material or registered Complainant’s customers.
One further factor that complicates the analysis, as discussed below, is that Respondent’s registration of the Domain Name predates Complainant’s rights in its SELECTHEALTH group of trademarks. Respondent registered the Domain Name in 1997 before any targeting of Complainant could have occurred. Nonetheless, there is a lack of evidence that Respondent has used the Domain Name in a manner that gave rise to any rights or legitimate interests in the Domain Name.
On the balance of the probabilities, therefore, the Panel finds that Respondent has failed to rebut Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the elements set out above, demonstrate that the Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, in particular:
(i) circumstances indicating that you [respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
Complainant contends that the Domain Name has been registered and used in bad faith. In particular, Complainant urges that Respondent is using the Domain Name to incorporate Complainant’s marks and intentionally attract Internet users for commercial gain by creating a likelihood of confusion as to the source of the website or the goods and services offered therein. Complainant further asserts that Respondent has used the website linked to the Domain Name to post Complainant’s copyright-protected material taken directly from Complainant’s site, and that consumers visiting Respondent’s site believe that it belonged to Complainant, as evidenced by Respondent’s receipt of material clearly intended for Complainant. Finally, as another indication of bad faith, Respondent has offered to sell the Domain Name to Complainant for US$30,000 and Respondent has a pattern of registering domain names containing third party marks.
The Panel finds that Respondent has, at least during certain periods, used the Domain Name in a manner that constitutes bad faith. In particular, using Complainant’s copyrighted content and generating confusion with Complainant and its services, combined with offers to sell the Domain Name at an exorbitantly high price, leads the Panel to consider that the Domain Name has been used by Respondent in bad faith. Moreover, Respondent is responsible for the content of any pay-per-click advertisements and links generated through a GoDaddy’s CashParking service. Finally, as noted above, the Panel considers that Respondent’s factual assertions are not credible concerning how the Domain Name has been used with Complainant’s alleged consent or acquiescence. These circumstances show bad faith use and may raise concerns of infringement under United States federal trademark law.
The Panel decides, however, that in this case Complainant’s claim must nevertheless be denied. In the particular circumstances of this case, Complainant has failed to demonstrate that the Domain Name was registered in bad faith. Respondent registered the Domain Name in October 1997, more than 8 years prior to Complainant’s earliest use of the SELECTHEALTH mark. There is no evidence before the Panel that Respondent, at that time, was infringing on any third party’s intellectual property rights. Respondent makes the point that when Complainant registered the identical string in a different top-level domain in 2005, , Complainant was likely aware that Respondent had already registered the Domain Name in the “.com” top-level domain. Respondent used the Domain Name, a combination of the generic terms “select” and “health”, for a period of more than 8 years before Complainant acquired rights in its SELECTHEALTH mark. When a company like Complainant chooses a brand comprised of two common terns, such as “select” and “health”, it runs the risk that third parties may have registered identical or similar domain names previously. Such is the case here. Finally, the Panel does not agree with Complainant’s contention that mere renewals of an existing domain name registration trigger bad faith registration arising as of the time of renewal.
The Panel is sympathetic to Complainant’s concern that Respondent has been using the Domain Name recently in a manner that triggers bad faith use. However, while the Panel determines that Respondent’s use of the Domain Name has been in bad faith during certain periods and may also give rise to infringement concerns under United States federal trademark law, this is a case in which the requirement under the Policy of registration in bad faith has not been met. 7. Decision
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Sole Panelist
Date: January 12, 2013
Full & Egal Universal Law Academy