An interesting decision was passed in the HEALTHWAVE.COM case this week which should act as a warning for brand owners seeking to utilize the UDRP.
The Complainant is a North Carolina, USA corporation providing cloud-based communications technology to medical practices for the purpose of two-way patient communication. The Complainant sought to rely on its US Registered Trademark no. 4221611 for the word mark HEALTHWAVE, filed on February 29, 2012 and registered on October 9, 2012, in international classes 9 and 38. claiming first use in commerce date in respect of the said mark of June 17, 2010 .
The Respondent on the other hand is an entity with an address in Panama City, Panama. According to WhoIs records, the disputed domain name was created on October 13, 2002.
“The Complainant asserts that based upon the Complainant’s ownership and use of the HEALTHWAVE mark, it has demonstrated superior rights in the said mark particularly as it relates to telecommunication services, software and systems.”
Complainant’s should be aware that the UDRP is not a test of “superior rights”, (if that was the case many legitimate domain owners would be unable to compete with many of the corporate giants) although a prior right may help to establish the Complainant’s claim when arguing bad faith registration, this in itself would not be enough to deprive a registrant of his domain name.
The UDRP outlines a non exhastive list of defences that if present are sufficient to defeat the complaint, these are:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
As can be seen, none of the defences above are affected by Respondent’s “inferior rights” nor require Respondent’s interests to have existed prior to Complainants. As long as his offering is bona fide, legitimate non commercial or fair without any indication to suggest that his intentions were to take unfair advantage of the Complaining party’s mark the complaint is defeated.
The Panel rightly mentioned; “The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety.”
In light of the question of registrantion and use in bad faith, it was unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
The panel revealed that the creation date of the disputed domain name was just “four days short of a decade prior to the registration date of the Complainant’s HEALTHWAVE trademark. It is also some seven years and eight months prior to the claimed first use in commerce of such mark by the Complainant”. Accordingly, the Respondent’s registration of the disputed domain name long pre-dates the earliest date on which the Complainant’s rights could have come into existence.
Was this overlooked by Complainant’s counsel? Perhaps they hoped that the Panel would ignore this vital element?
Complainant is inconsistent in its reasoning, as although it directs the panels attention to the supposed superiority of its trademark rights it fails to see the one thing that would actually matter; the right of seniority.
With such a right in Respondents favor he cannot lose; the panel questioned that with it being impossible to demonstrate any awareness of Complainant’s rights, “How then could the Respondent have registered the disputed domain name with an awareness of such rights? In what way could the Respondent have registered the disputed domain name with intent to sell it to the Complainant or a competitor of the Complainant at a profit?”
As such this complaint was bound to fail and the stain of Reverse Domain Name Hijacking once again tarnishes the reputation of another brand.