SelectHealth, Inc. of Murray, Utah just lost a UDRP on a direct match domain of its trademark SelectHealth.com
The one member panel noted that the domain name was registered long before the trademark was filed, however the panel also noted that for at least some time the domain was used in bad faith, as the domain name was parked, the domain holder offered to sell it to the trademark holder for $30K and appeared for a time that the domain holder may have lifted some copyrighted material off the complainant website at selecthealth.org and placed it on the .com
In all seemed to be a very closed decision which as the panel advised may ultimate result in a lawsuit.
Here is some language that I wanted to point out which is the highlight of the decision:
“”"When a company like Complainant chooses a brand comprised of two common terns, such as “select” and “health”, it runs the risk that third parties may have registered identical or similar domain names previously. Such is the case here. ”
“Finally, the Panel does not agree with Complainant’s contention that mere renewals of an existing domain name registration trigger bad faith registration arising as of the time of renewal.”"
Here are the relevant facts and findings by the one member panel:
Complainant began using the SELECTHEALTH family of marks as early as April 2006.
Complainant applied for registration of its SELECTHEALTH trademark with logo as early as April 2007. Complainant applied for the word mark SELECT HEALTH on February 9, 2011 and the mark was registered on September 20, 2011.
The Domain Name was registered on October 14, 1997.
“In this case, the Panel finds that Complainant in its Complaint did present a prima facie case showing that Respondent does not have rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.”
“Complainant contends that Respondent’s only use of the Domain Name has been as a web address that resolves to a “pay-per-click” advertising site featuring advertisements for, and links to, medical, health and dental insurance services and health education services, through which Respondent earns revenue through GoDaddy’s CashParking pay-per-click service. ”
“Since Respondent acquired the Domain Name, the page has resolved to various formats of pay-per-click advertising pages, often with advertisements for Complainant’s competitors or competing goods and services. Complainant asserts that it is well-established that using a domain name to direct users to a site primarily intended to generate pay-per-click advertisement revenue is not a bona fide offering of goods and services”.…
