The Complainant is Personal Communication Systems, Inc. of Winston-Salem, North Carolina, United States of America (“USA”), represented by Bell, Davis & Pitt, P.A., USA.
The Respondent is CDN Properties Incorporated of Panama City, Panama, represented by WEBLEGAL, Roberto Manno, Italy. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2014. On April 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2014, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 12, 2014.
On May 10, 2014, the Center received an informal communication from the Respondent seeking information regarding the expected date of notification of the Complaint. The Center replied to the Respondent on May 12, 2014 stating that notification would follow the formal verification process.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on May 13, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 2, 2014. The Response was filed with the Center on May 26, 2014.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on June 10, 2014. 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. 4. Factual Background
The Complainant is a North Carolina, USA corporation. The Complainant provides cloud-based communications technology to medical practices for the purpose of two-way patient communication. The Complainant is the owner of USA Registered Trademark no. 4221611 for the word mark HEALTHWAVE, filed on February 29, 2012 and registered on October 9, 2012, in international classes 9 and 38. The Complainant claims a first use in commerce date in respect of the said mark of June 17, 2010 and states in the Complaint that it has built a strong reputation for high quality products and services since that date.
The Respondent is an entity with an address in Panama City, Panama. According to WhoIs records, the disputed domain name was created on October 13, 2002. The Respondent uses the disputed domain name to publish pay-per-click advertising links on the corresponding website. A link on the said website entitled “Inquire about this domain” leads to a web page inviting parties interested in buying the disputed domain name to complete an online form in order to contact the owner.
Neither of the parties provided any information to the Panel regarding either the registration history of the disputed domain name or the history of the content displayed on the associated website. The Panel has assumed in the absence of contrary evidence that the Respondent has been the registrant of the disputed domain name since its creation date. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to a trademark in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that the disputed domain name was registered on October 13, 2002. The Complainant asserts that based upon the Complainant’s ownership and use of the HEALTHWAVE mark, it has demonstrated superior rights in the said mark particularly as it relates to telecommunication services, software and systems. The Complainant notes that it is not necessary in a Complaint under the Policy for it to establish rights in the jurisdiction where the Respondent is based.
The Complainant notes that the disputed domain name is used in connection with what is likely to be pay-per-click links and is offered for general sale on the corresponding website. The Complainant states that the offer for sale evidences the Respondent’s true intent in registering the disputed domain name, namely to sell it for a profit. The Complainant asserts that such uses and purpose do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The Complainant submits that the Respondent cannot show that it has been commonly known by the disputed domain name and submits that there is a lack of connection between the Respondent’s name and email address, as listed on the WhoIs record for the disputed domain name, and the disputed domain name itself.
The Complainant states that the initial registration and continued use of the disputed domain name are in bad faith. The Complainant asserts that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring it to the Complainant for valuable consideration in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. The Complainant submits that the Respondent has used the goodwill associated with the Complainant’s HEALTHWAVE mark to attract traffic to the disputed domain name to benefit from the pay-per-click links on the associated website. B. Respondent
The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking.
The Respondent submits that the Complainant’s first use of the HEALTHWAVE mark dates from June 2010 and that its USA registered trademark was registered in October 2012. The Respondent notes that when the said trademark was registered, the Respondent had peacefully used and registered the disputed domain name for more than 10 years. The Respondent states that the Policy does not create a legal hierarchy among rights and opposes the Complainant’s submission that it has superior rights.
The Respondent states that when it registered the disputed domain name in 2002 it did so because of its “intrinsic descriptiveness”. The Respondent submits that generic and descriptive terms have a value for their Internet traffic and that profiting therefrom has been repeatedly regarded as a legitimate Internet business in many cases under the Policy. The Respondent asserts that previous cases under the Policy have recognized that any website operating under a generic or descriptive name could legitimately offer products corresponding to such name for sale. The Respondent submits that the disputed domain name is a “very common expression” as suggested by more than 73,000 results in a Google search relating to the health, wellness and nutrition world and that it is thereby intrinsically attractive as a premium domain name.
The Respondent states that none of the links on the website corresponding to the disputed domain name relate to the services covered by the Complainant’s trademark and asserts that this is eloquent of the lack of any interference with the Complainant’s rights. The Respondent submits that the links are automatically generated on the basis of the semantic meaning of the disputed domain name. The Respondent asserts that where such links direct to the Complainant’s competitors, this would be a consequence of the generic semantic meaning of the disputed domain name and that where such links direct to non-competing undertakings and related goods or services this demonstrates that the disputed domain name is not used as an attempt to target the Complainant’s trademark, goodwill or reputation.
The Respondent notes that it has refused to sell the disputed domain name to certain third parties and produces related correspondence in support of this assertion.
The Respondent states that the Complainant has not established that there was any reputation in the HEALTHWAVE trademark, as distinguishing the Complainant’s goods and services, at the time of registration of the disputed domain name. The Respondent states that it is impossible to understand a contention that in 2002 it could have had the intention to register the disputed domain name to sell it to the Complainant or a competitor thereof, given that the Complainant’s goodwill at that time was non-existent. The Respondent submits that any attempt to extend the scope of the Policy should be rejected as otherwise it would be possible for the holder of a descriptive or generic trademark filed well after a domain name registration to challenge legitimate transactions on such domain name.
The Respondent notes its belief that the Complainant has a deliberate will to hijack the disputed domain name, which it asserts has been used since before the Complainant existed as a company in order to profit from its “high attractivity”. The Respondent states that if the Complainant should have appreciated at the outset that the Complaint could not succeed this will be an important consideration for the question of Reverse Domain Name Hijacking. The Respondent concludes that all required elements are present to declare Reverse Domain Name Hijacking. 6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
There are two parts to the inquiry under this element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the disputed domain name is identical or confusingly similar to such trademark. The test is “a relatively low threshold test for a complainant, the object of which is to establish that there is a bona fide basis for the complaint”, The Perfect Potion v. Domain Administrator,WIPO Case No. D2004-0743.
In the present case, the Panel is satisfied that the Complainant has rights in the HEALTHWAVE trademark referred to in the factual background section above. The Panel is also satisfied that such trademark is identical to the disputed domain name, disregarding the generic Top-Level Domain (gTLD) suffix, “.com” in the disputed domain name for the purposes of the comparison, as is customary in cases under the Policy. The Panel similarly disregards the absence of white space in the disputed domain name, as this is not permitted in domain names for technical reasons.
The Panel notes that the Respondent does not take issue with the Complainant’s claim to rights in its HEALTHWAVE trademark. However, the Respondent points out that the registration date of such mark post-dates the creation date of the disputed domain name by almost exactly a decade. In the Panel’s view, the Respondent is correct to note that in such circumstances it may be difficult for the Complainant to prove that the disputed domain name was registered in bad faith under the third element of the Policy (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). This issue will be covered in the section on bad faith below.
Accordingly, the Panel finds that the disputed domain name is identical to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding on the question of registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you 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”.
On this topic, the Panel must first consider whether the Respondent registered or acquired the disputed domain name in bad faith. Secondly, the Panel must determine whether the Respondent is using the disputed domain name in bad faith. For the Complainant to prevail on this element of the Policy, the Panel must find both registration and use in bad faith.
With regard to registration in bad faith, there is a fundamental issue with the Complainant’s case which the Complainant and/or those advising it have overlooked or deliberately ignored. The creation date of the disputed domain name is just four days short of a decade prior to the registration date of the Complainant’s HEALTHWAVE trademark. It is also some seven years and eight months prior to the claimed first use in commerce of such mark by the Complainant. Accordingly, the Respondent’s registration of the disputed domain name long pre-dates the earliest date on which the Complainant’s rights could have come into existence.
How then could the Respondent have registered the disputed domain name with an awareness of such rights? In what way could the Respondent have registered the disputed domain name with intent to sell it to the Complainant or a competitor of the Complainant at a profit? The Complaint is silent on these points and thus the Panel is left at something of a loss. There is, for example, no evidence before the Panel that the Respondent selected the disputed domain name in contemplation of any potential rights of the Complainant that were yet to come into being but of which the Respondent had special knowledge (on this topic, see section 3.1 of the WIPO Overview 2.0 and in particular the qualification to the consensus view). Nor is there any evidence before the Panel that the Respondent acquired the disputed domain name from a previous registrant after the Complainant had established rights in its trademark (on this topic, see section 3.7 of the WIPO Overview 2.0). In short, there is simply no evidence indicating that the Respondent could have had any bad faith intent relative to the Complainant or its rights at the point of creation of the disputed domain name.
Turning for completeness to the question of use in bad faith, it is clear from the screenshot provided by the Complainant that the Respondent is using the disputed domain name for the provision of pay-per-click links and to make a general offer to sell the disputed domain name. There is no evidence before the Panel that the offer of sale is directed to the Complainant or one of its competitors. Furthermore, there is no evidence before the Panel that the pay-per-click links are targeting the Complainant’s line of business, specifically, the provision of telecommunication services, software and systems supplied to the healthcare industry. On the contrary, the links appear to relate predominantly to health insurance services.
The Respondent provides evidence of a Google search for the phrase “health wave” which shows that it is employed by a variety of different parties to offer products and services to the healthcare industry unrelated to the Complainant’s line of business, including dispensary services, personalized treatment plans, health insurance and nutrition products. This is supportive of the Respondent’s contention that it is using the disputed domain name in connection with its value as a generic phrase, with the principal emphasis on the word “health” which is apparently generating the pay-per-click links. Accordingly, there is no evidence before the Panel of any use of the disputed domain name which is directly or indirectly targeting the Complainant’s rights.
In all of these circumstances, the Panel finds that the Complainant has failed to prove that the disputed domain name has been registered and is being used in bad faith. Accordingly, the Complaint fails. D. Reverse Domain Name Hijacking
Paragraph 4.17 of the WIPO Overview 2.0 provides inter alia as follows:
“Paragraph 15(e) of the UDRP Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking is defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. Evidence of harassment or similar conduct by the complainant in the face of such knowledge (e.g. in previously brought proceedings found by competent authorities to be groundless, or through repeated cease and desist communications) may also constitute a basis for a finding of abuse of process against a complainant filing under the UDRP in such circumstances.
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP...”
The Respondent in the present case has requested that the Panel make a finding of Reverse Domain Name Hijacking on the grounds that the Respondent had peacefully used the disputed domain name for more than 10 years before the Complainant’s trademark rights came into being and could not therefore have registered the disputed domain name in bad faith. The Panel agrees with the Respondent’s analysis, as is borne out by its finding above.
The question before the Panel on this topic is whether the Complainant knew or should have known that it could not prove registration in bad faith at the time that it filed the Complaint. In the Panel’s opinion, the answer to that question must be in the affirmative. The content of the amended Complaint itself makes this clear. Paragraph 8 expressly sets out the date of registration of the disputed domain name, namely October 13, 2002. Paragraph 12 contains a specific averment regarding the month and year on which the Complainant is said to have adopted the use of the HEALTHWAVE mark in commerce, namely June 2010. Despite listing these dates, the Complainant makes no attempt to address the obvious issue of the lengthy intervening period between them. Nor does the Complainant attempt to demonstrate the existence of any earlier rights in its HEALTHWAVE mark. As such, the Panel considers that the Complaint was bound to fail and that the Complainant knew or ought to have known this at the point of filing.
In these circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: June 23, 2014
Full & Egal Universal Law Academy