Decisions: Colorblind

Steve Levy ⬥ 18 March

The University of Miami filed two UDRP complaints with the National Arbitration Forum (NAF) and, and although the domain names and complaints were similar, the outcomes were decidedly different.

It’s important to note that while the Complainant, the University of Miami, was the same in both complaints, the Respondents were different. Marchex Sales was the Respondent in the complaint, and DNS Manager/Sentri group was the Respondent in the complaint. In both cases, a three-person panel from the NAF decided the outcome of the case, and one Panelist, Wolter Bettink, sat on both panels.

Despite the similarities on the surface, there were a number of factors that distinguished the complaints and led to the different results. The University of Miami registered the trademark UHEALTH UNIVERSITY OF MIAMI HEALTH SYSTEM in 2007, and at that point, was already in existence, while changed ownership and content after the trademark went into use. This distinction, along with an orange and green color scheme that mirrored the University’s official colors, was one of the reasons that the Respondent of the .ORG complaint was found to be using the domain name in bad faith and had no rights or legitimate interests.

In fact, the connection between the term UHEALTH and the colors was a point of contention in both complaints. While both Respondents argued that the connection between an established mark and specific colors should not affect domain name disputes, the .ORG Respondent’s use of the colors on a similar pay-per-click page ultimately contributed to losing the complaint.

In the end, the .COM domain name was ordered to stay with the Respondent, while the University of Miami acquired the .ORG domain name. It’s worth noting that in the transfer, however, there was a dissenting opinion by one Panelist that echoed many of the reasons that the University did not win the .COM complaint, which reinforces the inherently subjective nature of UDRP decisions.

The case highlights the critical factor of timing in UDRP disputes. If a domain was owned by a respondent before the complainant’s trademark rights were created it is nearly impossible to show that bad faith was involved.

Tags: .com, .ORG, DNS Manager, domain names, enforcement, Marchex Sales, NAF, National Arbitration Forum, pay-per-click page, Sentri group, trademark, UDRP, University of Miami, Wolter Bettink

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