Just days after a UDRP panel ruled in favor of the Marchex on the domain name uHealth.com, the majority of a three member panel just handed over the domain uHealth.org to the University of Miami. the same complainant in the uHealth.com case.
Here the domain holder was Centri Group which was also represented by John Berryhill.
The big differences in this uHealth.org case and the uHealth.com cases seemed to be 1. that the domain name in this case was registered in 2009 while the Domain in the uHealth.com case was registered in 2002 and in this case the uHealth.org parking page was using the same colors of the University.
Here are the relevant facts and findings by the panel, with the dissent that follows:
“The Complainant has been using the mark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM since 2007 and registered the mark in the US in 2009. The colours orange and green are claimed as a feature of the mark.
“Due to use since 2007 the Complainant also has common law rights in the mark UHEALTH.
“In 2007 the Complainant registered the domain name UHEALTHSYSTEM.COM.
“The Complainant has a registered trade mark in the USA for UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM including a stylized capital U and including colours distinctive of the Complainant green and orange. It is registered since 2009 for health care services.
The Complainant asserts that it has common law rights in UHEALTH dating back to 2007, however the Complainant has only produced one dated document evidencing fairly recent press use of UHEALTH in relation to the Complainant and the other documents, namely web pages showing use by the Complainant of UHEALTH, appear to be more or less contemporaneous with the preparation of the complaint. As such the panel finds that the Complainant has not shown common law rights in UHEALTH predating the registration of the Domain Name.
“Other universities and third party businesses use UHEALTH in relation to healthcare products and services.
“The Respondent registered the Domain Name in May 2009 and has used it for pay per click links related to healthcare which are not connected with the Complainant.
The Respondent used green and orange colours and a picture of a young woman apparently aged around twenty on its site. The Respondent has given no reason for the adoption of green and orange colours on its site
The Respondent admits he registered the Domain Name after the Complainant began using its registered mark.…
