SHA Wellness Clinic Foolishly Attempts to use the UDRP
In a recent domain name dispute over the domain, www.sha.com, a three member Panel not only denied a request to transfer but slammed the Complainant for improperly bringing the dispute in the first place. See Albir Hills Resort, S.A. v. Telepathy, Inc. WIPO Case No. D2012-0997, August 3, 2012). Complainant Albir Hills Resort, S.A. owns a few Community Trademarks and an International Trademark for the mark SHA relating to a host of different goods and services. Complainant owns the domains www.shawellnessclinic.es and www.shawellnessclinic.com.The disputed domain was registered on August 7, 1998. Respondent, Telepathy, Inc., owns over 3,000 three letter dot com domain names.
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.
In addressing the first element the Panel noted that Complaint had a valid trademark for SHA and that the domain name was identical under Policy paragraph 4(a)(i). Trhe crux of the case was focused on the remainder of the elements.
The Panel’s discussion of the second element began with a review of some relevant UDRP precedent.
It is also well established that a respondent may well have a right to register and use a domain name to attract Internet traffic based solely on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, provided that the domain name was registered because of its attraction as a descriptive phrase comprising dictionary words and not because of its value as a trademark and further provided that the website to which the domain name resolves is then used to post links that are relevant only to the common meaning of the phrase comprising dictionary words.
The Panel noted that the disputed domain was registered in 1998, which was many years prior to the existence of Complainant’s company and trademark rights. Further it noted there was no evidence that Respondent had any intention to target Complainant or its Mark. As a result, the Panel found that Respondent in fact had a right or legitimate interest in the domain.
Moving to the final element, the Panel continued with the factual analysis, again noting the disparity between Respondent’s domain registration and Complainant’s rights. Specifically, the Panel noted that Complainant’s mark SHA was filed for in 2006 and the Complainant has not submitted evidence of prior use of its trademark. The Panel took it a step further though, noting that since it was a three letter domain, the result of multiple acronym uses for SHA yielded possibilities such as “Secure Hash Algorithm”, the “Saskatchewan Hockey Association” and the “Society for Historical Archaeology”. Ultimately, the Panel settled on the fact that there was no evidence to establish that Respondent tried to generate confusion with Complainant’s mark and found this factor favored Respondent.
The Panel was not finished yet, since it then turned its attention to the Reverse Domain Name Hijacking claim.
In the case at hand, the registration date of the disputed domain name precedes the dates of the Complainants’ relevant trademark registrations and the evidence shows that the disputed domain name has been used as part of a bona fide business of the Respondent, which owns over 1000 three-letter-domains in its domain name portfolio. The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA. Moreover, the Complainant’s representative has misconceived the nature and the purpose of the Policy according to which the Complaint was brought.
The Panel found Complainant’s assertion of 15 years of market presence to be misleading since the evidence instead pointed to the fact that Complainant opened in 2008 and the mark SHA was not even filed until 2006.
As a result, the Panel DENIED Complaint’s request to get the disputed domain. The Panel additionally found that Complainant engaged in reverse domain name hijacking.