Panel Rules Case is Better Suited for Court

Steve Levy ⬥ 22 September

When reading the “Parties’ Contentions” section of this decision over the domain <>, my mind was starting to fill up with all the potential issues: common-law trademarks, who registered first, fair use, the use of whois privacy services, and the rarity of government agencies asserting their trademarks. However, the panel decided to address none of this.

The complainant, the U.S. Department of Health and Human Services, has been using the AREDS2 mark since 2007 in connection with information relating to the age-related eye disease. It also owns a trademark registration for this name. The respondent, whose name doesn’t appear in the case title or the whois record, registered in 2005 and hosts what it claims to be an informational page about the AREDS2 study. However, the page also displays a link to a Google search results page that contains links to companies who sell vitamins related to the study.

I see all sorts of questions here. Did the complainant develop common-law trademark rights to the AREDS2 name before it filed its trademark application? Is the respondent’s registration of the domain prior to the complainant’s first claim of trademark rights a bar to finding bad faith? Does the respondent hiding its identity suggest that it acted in bad faith? Is it truly fair use of the AREDS2 name to host an informational site with a disclaimer at the bottom but also to offer a link to Google search results where vitamins are sold (possibly by another one of the respondent’s companies?).

However, it is this last issue that the panel focuses on.  It notes that the question of fair use creates a legitimate legal dispute which should be decided by the courts as it is outside the scope of the UDRP, which was created only to decide more obvious cases of abusive domain registrations.  The claim was ultimately denied and it was suggested that “the parties should resolve the matter in another forum such as a court of mutual jurisdiction or before the USPTO.”

What I find odd about this decision is that it fails to even mention the well-established line of UDRP cases that deal with a very similar area of fair use and which could have been considered here.  The seminal case is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the panel formulated a 4-part test for determining whether a domain owner is making a bona fide offering of goods and services though fair use of a complainant’s trademark. I think this test could be adapted to the AREDS2 case as follows:  1) Is the respondent actually posting content related to the AREDS2 mark? 2) Does the site only promote the AREDS2 study? 3) Is there a disclaimer clearly explaining the lack of respondent’s relationship with the complainant? And 4) has the respondent tried to corner the market by registering a bunch of other AREDS2 domains?

The only real question here seems to be whether the Google search link on the un-named respondent’s website could be viewed as only promoting the AREDS2 study and products related thereto or whether it runs afoul of the second part of the Oki Data test. I suppose it’s possible that the search results show a company that is also owned by the respondent and that is selling unrelated vitamins or products. However, that would be for the complainant to investigate and argue in its pleadings.

For now, the U.S. Department of Health and Human Services will have to decide if it wants to follow the panel’s advice and take this mystery domain owner to court – a far more expensive and distracting process than pursuing a UDRP complaint.

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