The Complainant is The Curators of the University of Missouri, United States of America (“United States”), represented by Thompson Coburn LLP, United States.
The Respondent is Pamela Holley, MU Healthcare Victims, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2020. On October 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 19, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2020. The Response was filed with the Center on November 15, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 20, 2020. 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 University of Missouri in Columbia, Missouri, United States, founded in 1839, was the first public university in the United States west of the Mississippi River. It is a research as well as teaching institution, and it also operates University of Missouri Health Care, a network of hospitals and clinics in central Missouri producing over USD 1 billion in revenues in 2018. The Complainant styles itself in this proceeding as “The Curators of the University of Missouri, a public corporation”. The Panel notes that under Missouri Revised Statutes sections 172.010 and 172.020, the Complainant is treated as an instrumentality of the state and is exempt from registering as a corporation with the Missouri Secretary of State. The Complainant operates a principal university website at “www.umsystem.edu” and a principal healthcare system website at “www.muhealth.org” (the “Complainant’s MU Health Care website”). The Complainant does not hold relevant registered trademarks. According to the Complaint and the Affidavit of Mr. Willitt, the Communications Manager at MU Health Care, the Complainant has used unregistered marks “incorporating the term MU” in connection with hospital and healthcare services “since at least as early as 1998”, and has used MU HEALTH CARE “since at least as early as 2000”. These statements are supported by screenshots from the Internet Archive’s Wayback Machine in December 1998 showing that the Complainant’s MU Health Care website was displaying an “MU HEALTH” logo on the site, which advertised the Complainant’s clinics, hospitals, and outpatient care services. By October 2000, an orange and black “MU” logo appeared alone, along with the “MU HEALTH” logo. The Complainant’s MU Health Care website currently displays the letters “MU” within an orange and black graphic image of a shield within a circle, beside the words “Health Care”. This logo appears as well on linked social media sites. Although the Complainant’s MU Health Care sites do not display trademark symbols or otherwise assert trademark claims, the record includes ample evidence of sales, advertising, media recognition, and awards since 2000 reflecting the renown of the Complainant’s healthcare system associated with the unregistered marks MU, MU HEALTH, and MU HEALTH CARE. In 2019, the Complainant Commissioned a study on consumer perceptions of the MU HEALTH CARE brand. The study surveyed over 900 individuals and determined that the MU HEALTH CARE name is recognized by approximately 96% of consumers in its target service area (sixteen counties in the state of Missouri) and is the preferred provider of hospital services. The Registrar reports that the Domain Name was created on October 11, 2003 and is registered in the name of Pamela Holley of the organization “MU Healthcare Victims”, showing a postal address in the State of New Hampshire, United States. The Panel notes that no such organization appears to be registered as a legal entity in New Hampshire, according to the online database operated by the Secretary of State. The Complaint attaches a July 22, 2008 article from the Columbia Missourian (a newspaper published by the Complainant’s School of Journalism), which offers some background for Ms. Holley’s acquisition of the Domain Name, as she was interviewed for the article. According to this account, Ms. Holley acquired the Domain Name “on October 11” for a “less-than-complimentary website” following a billing dispute with the Complainant. Ms. Holley, “an MU graduate and environmental geologist”, claimed she was billed for services not received after bringing her daughter to one of the Complainant’s facilities. As recounted in the newspaper article: “Holley began work on the site in February to voice her complaints and to create a forum for other customers with similar experiences, but it ‘kind of took a back burner’ when her work hours were cut, she said. Her first choice for a domain name was muhealthcarevictims.com, but she discovered muhealthcare.com hadn't been claimed. ‘I was surprised it was still available,’ she said. ‘They probably just overlooked it.’ Following inquiries Wednesday, MU Health Care spokesman [Mr.] Manring said in an e-mail message that he bought rights to all the other available U.S. ‘muhealthcare’ domain names, which cost about $375. ‘We probably should own sites named muhealthcare,’ Manring said. ‘It just makes sense.’ Holley acknowledged that it is confusing to have a Web site name so similar to the name of the hospital system but that it could also draw more attention to her site. Holley said she would consider giving the domain name to MU Health Care free of charge if more cases like hers are settled amicably — with apologies — before going to collection. ‘If they do apologize, if they do get their stuff fixed up, I'd probably donate the site to them,’ she said.” The Complainant speculates that the Respondent may not have been the original registrant of the Domain Name, but the evidence supports the conclusion that the Respondent indeed registered the Domain Name in October 2003, as she claims. The Panel notes that the 2008 newspaper article attached to the Complaint appears to be recycled from a 2003 article. The newspaper originally published articles about the Domain Name in October 2003, when the Domain Name was registered, and subsequently after reaching the Respondent for comment. Screenshots available on the Internet Archive’s Wayback Machine from December 20, 2003 do in fact display a “gripe site” associated with the Domain Name, reciting the same story reported in the newspaper article and objecting to the Complainant’s lack of transparency in billing practices and aggressiveness in collection practices. The site featured serious discussions of the state audit of the Complainant and a report by The Hunter Group, a management consulting firm retained to make recommendations on improving the Complainant’s practices. There was no commercial advertising on the website. A later “update” on the Respondent’s website identified Ms. Holley as the site operator and quoted an article from the Columbia Missourian dated October 2003 (shortly after the Domain Name registration), reporting that “[a] ‘.com’ seems to be the official page of MUHC but really is an outside venue for complaints”. (The article even quoted a University of Missouri law professor pointing out that such “gripe sites” are usually protected as “free speech” rather than trademark infringement.) It appears that Ms. Holley sporadically updated the gripe site until sometime in 2013, and the Complainant ignored it. According to the Respondent, “[i]n the mid-2010s, the hosting program for the domain was changed and due to job workload, Respondent did not attempt to upload the ‘Victims’ website files to the new hosting program until December 2019 or early 2020 when news reports indicated that Complainant issues for the community again”. The Domain Name was parked most of that time, according to the Respondent, but in 2018 the Respondent forwarded it to Coalition for Choice, “a community group involved in fighting the Complainant’s planned acquisition of the last hospital not owned by the Complainant in Jefferson City,” Missouri. However, in late 2019 or early 2020, the Respondent was moving to a new residence and “temporarily forwarded” control of the Domain Name “to a website – Stormfront.org – which was in the national news at that time … as part of testing of domains during a demonstration to others, from multiple humorous suggestions from the group of private individuals whom were not aware of the ‘Victims’ website nor of the Complainant”. When the Domain Name started redirecting to the Stormfront website, this caught the Complainant’s attention, because Stormfront is a notorious white supremacy organization, as reported in media including a December 2019 New York magazine article cited by the Respondent. The Complainant attaches a screenshot of the Stormfront website to which the Domain Name redirected in early 2020, with a “White Pride World Wide” logo and the tag line, “Every month is white history month”. The website promotes “Stormfront Radio with Don Black and Friends”. (Don Black, a former “grand wizard of the Ku Klux Klan”, founded Stormfront.org in 1996, according to the Wikipedia article supplied with the Complaint.) The Complainant filed this UDRP Complaint in October 2020. According to the Response, this filing served to “remind” her of the Domain Name forwarding, which she then cancelled, as the Respondent denies any affiliation with Stormfront or sympathy for their views. At the time of this Decision, the Domain Name is parked with the Registrar and resolves to a landing page with third-party, pay-per-click (“PPC”) advertising links, mostly related to health care, some of which lead to the Complainant’s own website and some to those of competitors. 5. Parties’ Contentions A. Complainant The Complainant asserts that the Domain Name is confusingly similar to its (common law) trademarks MU, MU HEALTH, and MU HEALTH CARE and that the Respondent has no rights or legitimate interests in using the Domain Name to redirect Internet users to an Internet hate site espousing white supremacist views. The Complainant argues that the Domain Name was registered “primarily for the purpose of disrupting the business of a competitor”, with “competitor” understood broadly to mean “one who acts in opposition to another”, citing Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279. The Complainant argues further that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s MU marks as to “the source, sponsorship, affiliation or endorsement of Respondent’s website and the services provided thereby”. The Complainant refers to “commercial gain” because the Stormfront website solicits financial contributions. The Complainant contends as well that the Respondent shows bad faith by falsely associating the Complainant’s marks with a “racist and xenophobic” website, “thereby tarnishing Complainant’s reputation”. B. Respondent The Respondent observes that the Complainant has no registered marks and has changed its branding over time: “The Complaint’s Exhibits demonstrate that Complainant has not had a stable brand name of any type nor unique use of ‘muhealthcare’, and has had many ever-changing, concurrent identites to the public including in present day as ‘University of Missouri Health Care’ and ‘muhealth.org’. … If there had been, again, the Respondent is a private individual and does not compete with the Complainant.” The Respondent claims a legitimate interest in registering and using the Domain Name for more than a decade to criticize the Complainant, with the intent of doing so again as the need arose. As for forwarding control of the Domain Name to Stormfront for “testing” purposes, based on “humorous suggestions” of others, the Respondent hastens to explain that “[t]here was no malice involved”. “Respondent was not aware that Complainant or any person was viewing the site as it had been ‘parked’ for years … If Complainant had sent a request to Respondent or attempted to make Respondent aware prior to the Complaint, Respondent would have changed it as Respondent did when receiving the Complaint. Respondent would have changed it as a courtesy as she does not care for white supremacy … There was no intention to damage any brand as no one was viewing the site, to Respondent’s knowledge, and, if visited, it is unlikely that any reasonable visitor would conclude that the University of Missouri had ceased being an educational institution and had become a white nationalist member organization …” The Respondent states that she remains a patient of the Complainant’s health care system and is interested in seeing it function well and improve. She denies having received any financial gain from the Domain Name and argues that there is a benefit in providing a forum for public commentary about the dominant and taxpayer-supported healthcare system in the region. The Respondent concludes: “Complainant has made no effort to contact Respondent in 17 years. Respondent owns this domain and operates the ‘Victims’ website when active. The timing of this complaint, following the redesign of its website in 2017 and the results of the Complainant’s 2019 commissioning of a study of its ‘consumer recognition and perceptions of the MU Health Care brand’, as discussed in the Complaint, appears to have been the impetus for this complaint. The Complainant’s recent awareness there is a financial advantage to owning a .com extension on a variation of one the terms it uses does not justify the forced taking of that domain from its rightful and only historic owner, a private individual, and preventing its future reuse for free speech.” 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the 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. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The record includes evidence that an unregistered MU mark has been used since at least 1998, and it supports the Complainant’s claim to unregistered MU HEALTH and MU HEALTH CARE marks that probably acquired distinctiveness for health care services in the mid-Missouri region by October 2003 and thus could have been protected as common law marks, despite the Complainant’s failure to mark them as such or apply for registration. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2. The Panel finds, accordingly, that the Domain Name is confusingly similar to the Complainant’s common law marks cited above and concludes that the Complainant has established the first element of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and the lack of permissive use on the part of the Respondent, thus shifting the burden to the Respondent. The Respondent claims a legitimate interest essentially for nominative fair use, to employ the Complainant’s name (and asserted mark) to refer to the Complainant for the relevant purpose of legitimate criticism, for what is sometimes known as a “gripe site” (see WIPO Overview 3.0, section 2.6). This defense would likely prevail, even without incuding obviously negative words in the Domain Name string, as all Parties are located in the United States and their rights can fairly be assessed with reference to federal constitutional First Amendment rights of free speech (see id.), had the Respondent carried on as she did for the first decade using the Domain Name for a legitimate criticism site. But she did not, and the Panel shares the prevailing view that rights or legitimate interests must be assessed at the time of the UDRP proceeding (see id., section 2.11). After approximately 2013, the Domain Name has been used for PPC advertising, allowing third parties (including competitors) to profit from the Complainant’s reputation, and, briefly, to redirect users to the Stormfront website, which has no relevance to the Domain Name string and plausibly tarnishes the Complainant’s mark as well as using it to raise funds. The Respondent cannot rely on the free speech justification of a former criticism site as her current “legitimate interests”. The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(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 web site 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 web site or location or of a product or service on your web site or location.” The Complainant cites these examples of bad faith as apposite, and the Complainant argues as well that the temporary redirection of the Domain Name to the Stormfront white supremacist website tarnished the Complainant’s marks. The difficulty for the Complainant is that the Policy requires the demonstration of bad faith both in the registration and the use of the Domain Name. One of the Complainant’s own law faculty observed in 2003, as quoted in the Complainant’s own newspaper, that the use of a domain name based on a trademark for a genuine “gripe site” is likely to be protected as free speech in the United States, as it is in UDRP proceedings between United States parties. The evidence in this case is that the criticism site was genuine and continued as such for a decade. The Respondent’s more recent use of the Domain Name would not be protected; it might even be actionable under United States law. But given the totality of the circumstances, the Panel cannot find that the Respondent likely harbored a secret intent, in 2003, to maintain a legitimate criticism website for ten years and then let it lapse into commercial exploitation or diversion to a website that the Complainant and its adherents would find particularly objectionable. The Panel concludes that the Complainant has failed to establish the third element of the Complaint, bad faith. 7. Decision For the foregoing reasons, the Complaint is denied. 8. Reverse Domain Name Hijacking Although the Respondent did not request a finding of Reverse Domain Name Hijacking (RDNH), the Panel considers this an appropriate instance to enter such a finding. Paragraph 15(e) of the 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”. It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding of RDNH. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in WIPO Overview 3.0, section 4.16. The three-member panel in Yell Limited v. Ultimate Search,WIPO Case No. D2005-0091, observed that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration for the assessment regarding RDNH. The Panel believes this this is such a case. A complainant should never underestimate the challenge of establishing bad faith in the registration of a domain name that was created nearly two decades ago. The Complainant here showed that it was capable of using available tools such as the Internet Archive’s Wayback Machine to establish its own common law trademark rights, and it is inexcusable that the Complainant did not employ such tools to establish when the Respondent obtained the Domain Name and how the Respondent used the Domain Name for ten years. Moreover, the Respondent here was not hidden; she registered the Domain Name in her own name (although also naming an organization that seems not to be established as a legal entity) and gave an interview to the Complainant’s newspaper within weeks after registering the Domain Name. She was then, and continues to be, an alumna of the Complainant and a patient in the Complainant’s medical system, about which she published comments. The Complaint attaches one of the articles published by the Complainant’s newspaper, but the Complainant apparently failed to uncover the more relevant original articles and, therefore, misleadingly speculated about the timing of the Respondent’s acquisition of the Domain Name. One of those articles even quoted a member of the Complainant’s own law faculty concerning the legal challenges that the Complainant would face in any action against the Respondent over the Domain Name, yet the Complaint does not address those obvious challenges arising from the Respondent’s registration and use of the Domain Name for a genuine criticism site. It may be possible somehow to argue for bad faith in the registration of the Domain Name on the facts of this case, but this Complaint reflects no credible effort to do so. The Panel finds in these circumstances that the Complaint represents an instance of attempted Reverse Domain Name Hijacking. W. Scott Blackmer
Sole Panelist
Date: December 3, 2020
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