Complainant is FPK Services LLC DBA HealthL, United States of America (“United States”), represented by Arnold & Porter Kaye Scholer LLP, United States.
Respondent is Contact Privacy Inc. Customer 1241257718, Canada / Michael Gillam, United States, represented by Orrick, Herrington & Sutcliffe, LLP, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 25, 2019. The first amended Complaint was filed with the Center on June 27, 2019. The second amended Complaint was filed with the Center on July 2, 2019. On July 4, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed a third amended Complaint on July 9, 2019.
The Center verified that the Complaint together with the amended Complaints 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2019. Upon request of the Parties, the due date for Response was extended to August 30, 2019, in accordance with the Rules, paragraph 5(e). The Response was filed with the Center on August 30, 2019.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 10, 2019. 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.
On September 23, 2019, Complainant sent the Center an unsolicited supplemental filing and annexes. The Panel issued that day Procedural Order No. 1, which gave Respondent until October 4, 2019 to respond to Complainant’s unsolicited supplemental filing, and which moved the Panel decision due date to October 11, 2019. On October 4, 2019, Respondent submitted a supplemental filing and annexes in reply to Procedural Order No. 1. 4. Factual Background
Complainant describes itself as “a recognized national lab testing company that specializes in testing for a range of areas for individual customers”. Complainant states that it has more than 4,500 labs across the United States, and “a large number in the Texas market where it is well-known”. Complainant has operated a website at “www.healthl” since April 2015.
According to Complainant, its “common law trademark rights are longstanding and well-established because of Complainant’s continuous use of not only the domain name www.healthl but also its continuous and ongoing use of the mark ‘Healthl’ in both word and design format on its website and on its extensive nationwide marketing materials since at least as early as April 2015”. Complainant alleges that it “is well-known nationwide (U.S.) and has thousands of clients that visit its website every day”. There is no evidence submitted with the original Complaint to corroborate Complainant’s allegations of website traffic. Nor is there any evidence submitted with the original Complaint to show any actual “marketing materials”. There is also no evidence submitted with the original Complaint to support the contention that Complainant’s alleged common law mark HEALTHLABS.COM is well known.
In its unsolicited supplemental filing (styled a “Reply”), Complainant provided some limited evidence of the alleged use and renown of its mark. According to an affidavit from Complainant’s CEO, Complainant’s website has received more than 2,600,000 unique visitors since April 2015. Complainant also provides, by way of evidence of consumer recognition of its alleged mark, instances of two universities and a state governmental agency referring or linking to Complainant’s website. There are additional pieces of supportive evidence submitted with the supplemental submission, but, for reasons that should be clear from the Panel’s findings below on the “rights or legitimate interests” issue, they need not be set out at length here.
Complainant states that it “has a pending federal trademark application [with the United States Patent and Trademark Office (‘USPTO’), Serial No. 88/358,038] for ‘HEALTHLABS.COM’ (word mark)”. This application, submitted in March 2019, describes Complainant’s activities as “medical and scientific research, namely, conducting clinical trials for others”, and related activities. (There is another USPTO application from March 2019 for a stylized mark containing more words, which is not necessary to discuss here.)
Missing from the Complaint, but contained in the Response, is a discussion of the USPTO’s actions taken vis-à-vis Complainant’s trademark application. In April 2019, the USPTO refused to register HEALTHLABS.COM as a trademark because it was “merely descriptive” of Complainant’s services. Complainant subsequently registered the HEALTHLABS.COM mark on the USPTO’s Supplemental Register, under Reg. No. 5,836,631 effective August 13, 2019.
The Domain Name was first registered on March 27, 2002. It appears common ground between the Parties, however, that Respondent first acquired the Domain Name from an unknown party in April 2017.
According to Respondent, he “provides healthcare research and innovation services to others”. Respondent states further that he “provides discovery automation software for big data and machine intelligence models in the healthcare field”. Respondent states that he has 20 years’ experience in the healthcare field, and he chose the Domain Name “to identify these services as it [Health Lab] alluded to past research and innovation labs across history (such as the NASA SkyLab, the Los Alamos National Lab, and Berkeley Lab)”.
The Domain Name resolves to a fairly simple web landing page. According to Respondent’s sworn affidavit, however, the Domain Name is used as the foundation of a separate subdomain for each of his customers. For example, a customer “ACME” would be granted the web address and ACME’s customers would be greeted with a login prompt to gain access to a web page where ACME’s data is provided by Respondent.
Complainant alleges that it made several attempts to contact Respondent in order to purchase the Domain Name, in part because some of Complainant’s customers were being confused. According to Complainant, Respondent never responded to any of these entreaties.
In its supplemental filing in reply to the Procedural Order No. 1, Respondent requests that the Complainant’s unsolicited supplemental filing not be considered. The Respondent then goes on to discuss the merits of the case in more detail, but, noting the Panel’s findings below on the “rights or legitimate interests” issue, they need not be set out at length here. 5. Parties’ Contentions A. Complainant
Complainant contends that it has satisfied all three elements required under the Policy required for a transfer of the Domain Name. B. Respondent
Respondent disputes that Complainant holds valid trademark rights, and asserts that it has a legitimate interest in the Domain Name and did not register or use it in bad faith. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; 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. A. Identical or Confusingly Similar
Without the unsolicited supplemental materials submitted by Complainant well after the Complaint was filed and the Response was received, the Panel was prepared to conclude that Complainant had failed to prove that it has rights in the claimed mark “HEALTHLABS.COM”. The mark is, at best, descriptive of the services that Complainant provides. The USPTO made this finding when rejecting Complainant’s application to register “HEALTHLABS.COM” on the USPTO’s Principal Register. Indeed, in its rejection of the application, the USPTO pointed out that several third parties were using the term “health labs” in a descriptive sense.
If a mark is merely descriptive, it lacks inherent distinctiveness and the mark owner must generally demonstrate that, despite its descriptiveness, it has acquired distinctiveness, i.e., it has acquired, through use in commerce, secondary meaning among consumers as a source identifier of the goods or services offered by the mark owner. In the original Complaint, Complainant made no showing whatever that its purported mark HEALTH LABS had acquired secondary meaning among consumers.
Complainant’s supplemental evidence – which, given the obvious weakness of this alleged trademark clearly should have been supplied in the original Complaint – at least makes the claim for trademark rights arguable. The Panel need not determine this fact-intensive issue, however, since the Complaint fails on the second element of the Policy (and would have failed under the third element if the Panel were required to decide that element). B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Complainant has failed to establish that Respondent lacks rights or legitimate interests in respect of the Domain Name. Under the above quoted Policy paragraph 4(c)(i), Respondent has stated under oath (and, in its supplemental filing pursuant to Procedural Order No. 1, has provided further evidence) that it uses the Domain Name for his discovery automation software sold to healthcare customers, each of which gets a subdomain for its own customized web page. According to Respondent, “a visitor to each subdomain is greeted by a log-in page, following which they can access data and information provided by Respondent”. This explanation appears plausible on its face, and, in the Panel’s view, constitutes a bona fide offering of services sufficient to vest Respondent with a legitimate interest in respect of the Domain Name.
Although this point is typically more germane to the “bad faith” issue under the next element, it bears noting here that there is nothing in the record to indicate that Respondent was aware of Complainant or its alleged mark at the time the Domain Name was acquired in 2017.
The Complaint fails under Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel need not address bad faith registration and use in view of its findings and conclusions above. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: October 10, 2019
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