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Archive for August, 2010

MY HEALTH Unable To Find The Right Prescription For Success

Monday, August 30th, 2010

        

In the recent domain name dispute decision My Health, Inc. v. Top Tier Consulting, Inc. FA1332064 (Nat. Arb. Forum August 26, 2010) a single member Panel was faced with a dispute over the domain www.myhealth.com. Complainant is owns a trademark for MY HEALTH, related to, among other things, a website for medical professionals. Additionally, Complainant maintains a website at www.myhealthincorporated.com. Respondent filed a Response to the dispute, contending it registered the domain prior to the Complainant ever being in business.

Paragraph 4(a) of the ICANN UDRP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

 Both parties made objections to the level of authenticity of documents required, but the Panel explained as follows: “The Panel reminds the parties of UDRP Policy Rules ¶¶ 3(b)(xv), 5(b)(ix), and 10(d), which in sum direct all parties to submit their complete evidence and that the Panel ‘shall determine the admissibility, relevance, materiality and weight of the evidence.’”

Moving onto the substance of the dispute, the Panel quickly found that the disputed domain was identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). In addressing the next prong, whether the Respondent had any rights or legitimate interests in the domain, the Panel explained that Complainant made its prima facie case. The Panel found that “Respondent’s failure to make an active use of the disputed domain name for the last three years is evidence that Respondent lacks rights and legitimate interests in the disputed domain name as Respondent is not using the disputed domain name for either a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” The Panel also noted that the burden then shifted to Respondent to prove otherwise.

The Panel then detailed Respondents assertions about its preparations for the website as follows:

Respondent argues that it has made efforts to seek funding for its medical website and has thus demonstrated use and preparations to use the disputed domain name in connection with a bona fide offering of goods or services, namely personal healthcare and related services.  Respondent asserts that its goal has been to use the disputed domain name for a consumer healthcare portal website to put healthcare in the hands of patients and doctors, where appointments with doctors can be made, prior visits confirmed, physician consults made online, and informed decisions made when searching for a new physician.  Respondent further asserts that it has conducted a number of meetings to develop the website by either financing or joint ventures. 

Interestingly, the Panel agreed and found that these preparations were a bona fide offering of goods or services. The Panel moved onto the final prong, bad faith, and explained that there was no evidence presented by Complainant of any bad faith purchase or use of the disputed domain.

Respondent asserts, correctly, that there is no evidence that Respondent has either registered or used the domain name in bad faith as Respondent registered the disputed domain name more than fourteen months before Complainant or its MY HEALTH mark even existed.  Respondent indicates that it purchased the <myhealth.com> domain name in early February 2007 for $150,000.   Respondent further contends that this was long before Complainant’s first use of the MY HEALTH mark in mid-April 2008.  The Panel finds that Respondent’s purchase and registration of the disputed domain name nearly fourteen months before Complainant’s first use of its mark in commerce is evidence that Respondent has not engaged in bad faith registration as defined in the Policy.

The Panel, on its own noted that it could be determined that this was a case of reverse domain name hijacking, but since it was not raised nor briefed by either party it would not make such a finding. Ultimately, the Panel found that Complainant failed to establish all the elements and DENIED the request for transfer.

Fender Guitars Playing Sad Song After Losing Dispute

Tuesday, August 10th, 2010

     

In the recent case of Fender Musical Instruments Corporation v. Christopher Ruth (Nat. Arb. Forum FA1333857 August 9, 2010), a single member Panel was faced with a dispute over the domain www.fendercustomshop.com. Complainant Fender Musical Instruments Corporation, is the well known seller of musical instruments, amplifiers, and accessories.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the FENDER mark (e.g., Reg. No. 805,075 registered on March 8, 1966). Fender maintains a website at www.fender.com. Respondent registered the disputed domain in 2003 and failed to respond to this complaint.

Paragraph 4(a) of the ICANN UDRP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The Panel quickly dispensed with the first prong, noting that “Based on precedent and Complainant’s trademark registrations, the Panel finds Complainant has sufficiently proved its rights in the FENDER mark pursuant to Policy ¶ 4(a)(I).” The Panel found that Respondent merely added the descriptive phrase “custom shop “ at the end of the domain, which was not enough to distinguish it from the FENDER mark.

Moving to the second prong, the Panel explained that Fender must make a prima facie case that Respondent lacked any rights or legitimate interests in the domain. The Panel found as follows:

Here, Complainant claims Respondent made no use of, or any demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services.  However, Complainant fails to allege any facts related to Respondent’s use or provide any screen shots of Respondent’s resolving website.  The Panel finds Complainant’s assertions, without any supporting evidence or analysis, do not sufficiently establish Respondent lacks rights or legitimate interests in the <fendercustomshop.com> domain name.  Therefore, the Panel finds Complainant has failed to make a prima facie case showing Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).

For these reasons, the Panel found that Fender failed to prove up its case, and the Panel declined to review the final element. Ultimately, the Panel DENIED Fender’s request for transfer of the domain.

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