WIPO Case No. D2020-2693 (UDRP Process)
The Curators of the University of Missouri
Pamela Holley, MU Healthcare Victims
The Complainant is The Curators of the University of Missouri, United States of America, while the Respondent is Pamela Holley, MU Healthcare Victims, United States. The disputed domain name is Muhealthcare.com.
The University of Missouri was founded in 1839 in Columbia, Missouri (MO), USA. In addition to the teaching Institute it also runs a Healthcare Network that includes clinics and hospitals by the name University of Missouri Health Care, and has over USD 1 billions in revenue. Though the Complainant did not hold any registered Trademarksd but has been in operation since 2000 and claims to have unregistered Trademark Rights. It has active websites at www.muhealth.org and www.umsystem.edu. The Complainant provides evidence from Archive.org (Wayback Machine). It also provided ample evidence of advertising, sales, media recognition and awards since 2000 reflecting the renown of the Complainant’s healthcare system associated with the unregistered marks MU, MU HEALTH, and MU HEALTH CARE.
The Respondent Ms. Pamela Holley seems to had a bill dispute with the Complainant and hence she registered the Domain Name in 2003. An Article from 2008 evidence the fact and the same appeared on the website as well in December 2003 as evidence from Wayback Machine. Respondent invited complaints of other users havind had bad expereince at the Complainant’s facility. The website remained active until 2013 but later it got unattended due to busy schedule of the Respondent. And since early 2020 or later 2019 it became redirecting to another controlversial site Stormfront.org. The Respondent claims it to be for testing purposes.
Respondente denied having received any financial gain from the Domain Name and argues that there is a benefit in providing a forum for public commentary about the dominant and taxpayer-supported healthcare system in the region. The Respondent concludes:
“Complainant has made no effort to contact Respondent in 17 years. Respondent owns this domain and operates the ‘Victims’ website when active. The timing of this complaint, following the redesign of its website in 2017 and the results of the Complainant’s 2019 commissioning of a study of its ‘consumer recognition and perceptions of the MU Health Care brand’, as discussed in the Complaint, appears to have been the impetus for this complaint. The Complainant’s recent awareness there is a financial advantage to owning a .com extension on a variation of one the terms it uses does not justify the forced taking of that domain from its rightful and only historic owner, a private individual, and preventing its future reuse for free speech.”
The panelist while holding the mater to be of RDNH, states as follows:
A. Identical or Confusingly Similar
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The record includes evidence that an unregistered MU mark has been used since at least 1998, and it supports the Complainant’s claim to unregistered MU HEALTH and MU HEALTH CARE marks that probably acquired distinctiveness for health care services in the mid-Missouri region by October 2003 and thus could have been protected as common law marks, despite the Complainant’s failure to mark them as such or apply for registration. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See WIPO Overview 3.0, section 1.11.2.
The Panel finds, accordingly, that the Domain Name is confusingly similar to the Complainant’s common law marks cited above and concludes that the Complainant has established the first element of the Complaint.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and the lack of permissive use on the part of the Respondent, thus shifting the burden to the Respondent.
The Respondent claims a legitimate interest essentially for nominative fair use, to employ the Complainant’s name (and asserted mark) to refer to the Complainant for the relevant purpose of legitimate criticism, for what is sometimes known as a “gripe site” (see WIPO Overview 3.0, section 2.6). This defense would likely prevail, even without incuding obviously negative words in the Domain Name string, as all Parties are located in the United States and their rights can fairly be assessed with reference to federal constitutional First Amendment rights of free speech (see id.), had the Respondent carried on as she did for the first decade using the Domain Name for a legitimate criticism site. But she did not, and the Panel shares the prevailing view that rights or legitimate interests must be assessed at the time of the UDRP proceeding (see id., section 2.11). After approximately 2013, the Domain Name has been used for PPC advertising, allowing third parties (including competitors) to profit from the Complainant’s reputation, and, briefly, to redirect users to the Stormfront website, which has no relevance to the Domain Name string and plausibly tarnishes the Complainant’s mark as well as using it to raise funds. The Respondent cannot rely on the free speech justification of a former criticism site as her current “legitimate interests”.
The Panel concludes, therefore, that the Complainant prevails on the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant cites these examples of bad faith as apposite, and the Complainant argues as well that the temporary redirection of the Domain Name to the Stormfront white supremacist website tarnished the Complainant’s marks. The difficulty for the Complainant is that the Policy requires the demonstration of bad faith both in the registration and the use of the Domain Name. One of the Complainant’s own law faculty observed in 2003, as quoted in the Complainant’s own newspaper, that the use of a domain name based on a trademark for a genuine “gripe site” is likely to be protected as free speech in the United States, as it is in UDRP proceedings between United States parties. The evidence in this case is that the criticism site was genuine and continued as such for a decade. The Respondent’s more recent use of the Domain Name would not be protected; it might even be actionable under United States law. But given the totality of the circumstances, the Panel cannot find that the Respondent likely harbored a secret intent, in 2003, to maintain a legitimate criticism website for ten years and then let it lapse into commercial exploitation or diversion to a website that the Complainant and its adherents would find particularly objectionable.
The Panel concludes that the Complainant has failed to establish the third element of the Complaint, bad faith.
For the foregoing reasons, the Complaint is denied.
Reverse Domain Name Hijacking
Although the Respondent did not request a finding of Reverse Domain Name Hijacking (RDNH), the Panel considers this an appropriate instance to enter such a finding.
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
It is generally accepted that mere lack of success of a complaint is not itself sufficient for such a finding of RDNH. Further discussion as to the nature of RDNH and examples of certain past cases under the Policy in which it has been found are detailed in WIPO Overview 3.0, section 4.16. The three-member panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091, observed that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration for the assessment regarding RDNH. The Panel believes this this is such a case.
A complainant should never underestimate the challenge of establishing bad faith in the registration of a domain name that was created nearly two decades ago. The Complainant here showed that it was capable of using available tools such as the Internet Archive’s Wayback Machine to establish its own common law trademark rights, and it is inexcusable that the Complainant did not employ such tools to establish when the Respondent obtained the Domain Name and how the Respondent used the Domain Name for ten years. Moreover, the Respondent here was not hidden; she registered the Domain Name in her own name (although also naming an organization that seems not to be established as a legal entity) and gave an interview to the Complainant’s newspaper within weeks after registering the Domain Name. She was then, and continues to be, an alumna of the Complainant and a patient in the Complainant’s medical system, about which she published comments. The Complaint attaches one of the articles published by the Complainant’s newspaper, but the Complainant apparently failed to uncover the more relevant original articles and, therefore, misleadingly speculated about the timing of the Respondent’s acquisition of the Domain Name. One of those articles even quoted a member of the Complainant’s own law faculty concerning the legal challenges that the Complainant would face in any action against the Respondent over the Domain Name, yet the Complaint does not address those obvious challenges arising from the Respondent’s registration and use of the Domain Name for a genuine criticism site. It may be possible somehow to argue for bad faith in the registration of the Domain Name on the facts of this case, but this Complaint reflects no credible effort to do so.
The Panel finds in these circumstances that the Complaint represents an instance of attempted Reverse Domain Name Hijacking.
W. Scott Blackmer
Date: December 3, 2020