WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Egton Medical Information Systems Limited v. Eric Strikowski / Health Axis Group LLC, Shilen Patel

Case No. D2014-0384

1. The Parties

The Complainant is Egton Medical Information Systems Limited of Yeadon, Leeds, United Kingdom of Great Britain and Northern Ireland (the “UK”), internally-represented.

The Respondents are Health Axis Group LLC, Eric Strikowski and Shilen Patel, Health Axis Group of Tampa, Florida, United States of America (the “USA”), represented by Tutunjian & Bitetto, P.C., USA.

2. The Domain Name and Registrar

The disputed domain name <patient.com> (the “Disputed Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2014. On March 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced April 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response April 22, 2014. The Response was filed with the Center April 22, 2014.

The Center appointed Gabriela Kennedy, Nick J. Gardner and David E. Sorkin as panelists in this matter on May 14, 2014. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a UK company. Since 1997, the Complainant has owned and operated the website “www.patient.co.uk”, which provides medical and healthcare related information to patients and healthcare professionals in the UK.

The Respondents are HealthAxis, LLC, a USA company involved in the health care information technology field; Eric Stritowski, the Chief Technology Officer for HealthAxis, LLC; and Shilen Patel, who is the Chairman and Founder of HealthAxis, LLC.

The Disputed Domain Name was first registered on June 10, 1997 and was acquired by the Respondent in April 2012.

5. Parties’ Contentions

A. Complainant

The Complainant’s submissions can be summarized as follows:

(a) The Complainant claims to have rights in several marks comprising the word “patient” including “patient”, “patient access” and “patient.co.uk”. It argues in particular that it has unregistered trade mark rights in PATIENT.CO.UK. It claims to have also applied to register several trademarks incorporating the word “patient” in the UK.

(b) The Complainant argues that the Disputed Domain Name is identical to the Complainant’s unregistered PATIENT.CO.UK mark, and the Respondents’ registration and use of the Disputed Domain Name amounts to passing off. This is based on the Complainant’s assertions that it has been using PATIENT.CO.UK since it launched its website in 1997, and the website has since become a market-leading independent healthcare site, which attracts millions of visitors, has won several awards and been mentioned in several newspapers.

(c) The Respondents’ use of the Disputed Domain Name will allegedly mislead and confuse the public, since it is intended to be used as a patient portal. The Complainant will also lose significant advertising revenue if it cannot use the Disputed Domain Name.

(d) The Disputed Domain Name currently resolves to a holding page, and the Respondents have shown no demonstrable preparations to use the Disputed Domain Name for a bona fide offering of goods or services.

(e) The Complainant alleges that the Respondents registered and are using the Disputed Domain Name with the intent of selling it for profit, based on the parties’ email correspondence. The Respondents indicated that it would be interested in selling the Disputed Domain Name for USD 500,000. They then later said that they would not be interested in discussions regarding the sale of the Disputed Domain Name for a price less than USD 2,000,000.

(f) Further, the history of the use of the Disputed Domain Name dating back to 2006 has not been in connection with a bona fide offering of goods or services. The Respondents also hold several other domain names, including <patient.me>, which allegedly shows that the Respondent is engaged in cybersquatting.

B. Respondent

The Respondent’s contentions can be summarized as follows:

(a) The Complainant alleges that it has trade mark rights in PATIENT based on its use of the website “www.patient.co.uk”. The word “patient” is a generic term meaning a “person who receives medical care or treatment”. It is the name of the service being provided on the Complainant’s website, namely, patient-related services and the provision of patient information. A Google search reveals that there are over 917 million web pages that include the word “patient”, without the term “patient.co.uk”. The Complainant also uses the word “patient” as a generic term on its website. The Respondent argues that trade mark protection is not available for a generic term by itself.

(b) In addition or alternatively, the word “patient” is merely descriptive of the Complainant’s services. Therefore, the Complainant cannot have trade mark rights in PATIENT without establishing a secondary meaning. The Respondent contends that the Complainant has failed to provide sufficient evidence to show that PATIENT has acquired distinctiveness, i.e. there is no evidence that suggests that PATIENT by itself has come to signify the Complainant.

(c) The Respondent also argues that the UK trade mark applications filed by the Complainant do not in themselves prove or grant any trade mark rights to the Complainant in the UK.

(d) Further, the Respondent alleges that any rights that the Complainant may have in PATIENT.CO.UK do not extend to the distinct and separate name “patient.com”. The trade mark rights asserted by the Complainant must be narrowly construed as “patient” is a generic word that has important significance in the health care industry.

(e) Since 2010, the Respondents have been developing a system to provide a unified database for patient records. The system was initially called PATIENT 2.0. In February 2011, the Respondents sought to register several domain names that contained the word “patient” in order to use them for the consumer-facing side of the system. Therefore, in 2012, the Respondents decided to purchase the Disputed Domain Name. The system is still under development, and the Disputed Domain Name has been used in relation to a prototype of the system. The Respondents have provided evidence in support of this.

(f) The Disputed Domain Name was registered without the Respondents having any knowledge of the Complainant or its website. The Respondents claim that whilst it was contacted numerous times by the Complainant which invited them to sell the Disputed Domain Name in 2012 and 2013, the Respondents did not respond until later on when it decided to offer to sell the Disputed Domain Name for USD 500,000 and then USD 2,000,000. The Respondents claim that these amounts reflect the value of the Disputed Domain Name to the Respondents since they consist of the generic word “patient”, and because of the amount invested by the Respondent in the Disputed Domain Name and the system which they were developing.

(g) Regarding the other domain names held by the Respondents, these are not held by the Respondents for cybersquatting purposes but in relation to the patient system being developed by the Respondents. Further, any uses of the Disputed Domain Name prior to April 2012, which were presented by the Complainant, are irrelevant since the Respondent only acquired the Disputed Domain Name after this date.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used by the Respondents in bad faith.

A. Identical or Confusingly Similar

The Complainant claims to have rights in several marks comprising the word “patient”, including PATIENT, PATIENT ACCESS and PATIENT.CO.UK. The Complainant filed applications to register PATIENT and other marks incorporating the word “patient” in the UK in February 2014. However, the Panel notes that these applications were made only one month prior to the filing of the Complaint, and 17 years after the Complainant launched its “www.patient.co.uk” website. Either way, the applications are still pending, and cannot amount to relevant registered trade mark rights for the purposes of this Complaint.

The Complainant contends that it has unregistered rights in the PATIENT.CO.UK mark by virtue of its use of the mark since 1997 in connection with the provsion of medical information to patients and healthcare professionals via its website “www.patient.co.uk”, and any use of the Disputed Domain Name by the Respondents will amount to passing off.

It is well established that common law or unregistered trade mark rights can be relied on for the purposes of the first limb. However, in order to establish that unregistered trade mark rights exist, the Complainant must show that its use of the word has been such that it has become a distinctive identifier associated with the Complainant or its services (see Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview”); Tough Traveler, Ltd. v. Kelty Pack, Inc., Mike Scherer, and Inkling Pen Co., WIPO Case No. D2000-0783); and Amsec Enterprises, L.C. v. Sharon McCall,WIPO Case No. D2001-0083. The threshold is higher where a complainant seeks to claim unregistered trade mark rights in a generic or descriptive word, which is inherently not distinctive (see Essential Travel Ltd v. essentialtravel.com and Underground Digital Media Ltd, WIPO Case No. D2004-0205).

In this case, the word “patient” is clearly a generic word and is the main component of the PATIENT.CO.UK mark in which the Complainant is claiming unregistered trade mark rights. The Complainant itself frequently uses the word “patient” to refer to its generic and dictionary meaning on its website. Further, PATIENT.CO.UK is not used by the Complainant in a distinctive manner that disassociates it from the generic meaning of the word “patient” – in fact, it “plainly describes the very service in connection with which it is used by Complainant”, i.e. as a website that provides medical or health information to patients (see Media West-GSI, Inc., and Gannett Satellite Information Network, Inc., d/b/a The Burlington Free Press v. EARTHCARS.COM, INC., WIPO Case No. D2000-0463).

In The Church in Houston v. Jim Moran, Light of Truth Ministries, WIPO Case No. D2001-0683, regarding the domain name the <localchurch.org>, the panel held that:

“Complainant has presented evidence of its use of the name to provide religious services, as well as some vaguer assertions that the phrase "The Local Church" is used generally to describe or identify Complainant’s movement. Respondent has countered, however, with considerable evidence that the phrase is used descriptively. Given the conflicting evidence on the point and that the Complainant bears the burden of proof, the Panel concludes that Complainant has not adequately established a service mark in the name. Moreover, Complainant itself says the phrase is descriptive of a local that is community based, church movement.”

It is curious that the Complainant never filed trade mark applications to register PATIENT.CO.UK or any related marks until 17 years after it launched the “www.patient.co.uk” website and one month before the Complaint was filed. This seems to be an indication to the Panel that the Complainant themselves did not believe they had any protectable rights in the mark. This is further supported by the fact that during the Complainant’s correspondence with the Respondent between August 29, 2012 to December 20, 2014, where the Complainant introduced itself and explained its business, seeking to purchase the Disputed Domain Name from the Respondent, the Complainant did not once allege that it held any unregistered trade mark rights or accuse the Respondent of passing off. The Complainant merely explained that it wished to purchase the Disputed Domain Name as it wished to “position [themselves] more appropriate for [its] international audience”. In addition, the Complainant’s “www.patient.co.uk” website also does not appear to assert any form of trade mark rights to PATIENT.CO.UK; the furthest that it goes is found in the small print of its Terms of Use which merely state that “Patient.co.uk is a brand name” of the Complainant.

Secondly, although the Complainant has provided evidence to show that its website, “www.patient.co.uk”, has been in use for many years, with a large number of visitors, and may have garnered a reputation and be known in relation to the health industry, at least in the UK, this does not equate to the Complainant having a monopoly over the word “patient” or “patient.co.uk”. To establish unregistered trade mark rights, which will effectively prevent all other users from being able to use a generic word, the threshold is significantly higher. PATIENT.CO.UK is descriptive of the services and the means by which the services are being provided, and based on the evidence submitted it would be difficult to see how the public around the world would be equating the use of the word “patient” in any domain name to the Complainant (see Keystone Publishing, Inc. v. UtahBrides.com, WIPO Case No. D2004-0725). Furthermore the service provided by the Complainant via its website is essentially an information portal which is, as far as the Panel can determine, provided either entirely or almost entirely free of charge to users of the site. The Complainant’s business model would appear to be to derive income from advertisers on the website. Whilst the Complainant’s evidence establishes that significant revenue is derived in this manner – approximately GPB 891,000 in 2013 – no evidence has been adduced as to how such advertisers perceive the Complainant. The Panel accepts that such advertisers are no doubt attracted by the fact that the Complainant has a successful and popular website, and they presumably are aware of the domain name at which that web site is found, but that by itself does not in the Panel’s opinion equate to the Complainant having protectable goodwill in the name PATIENT.CO.UK. The Complainant’s name is of course very different – Egerton Medical Information Systems Limited. The Panel has not however, been provided with any information from any advertisers (or indeed any third parties of any kind) as to the extent to which they distinguish between the Complainant itself, and its website.

Even if the Complainant could convincingly show it has unregistered trade mark rights in PATIENT.CO.UK (which the Panel does not believe it has succeeded in demonstrating) the Panel does not believe that such rights would extend to preventing others using the word “patient” (particularly in relation to medical services) given its manifestly generic nature. In any event the Panel does not consider that the Disputed Domain Name <patient.com> is confusingly similar to the trade mark “PATIENT.CO.UK” (even assuming in the Complainant’s favour that it has sufficient unregistered rights in this term to qualify for protection). PATIENT.CO.UK is clearly used in relation to a UK website primarily directed at providing medical information to patients in the UK. The website describes itself as “The UK’s leading independent health site”. In contrast, the Disputed Domain Name (discounting the generic top-level domain extension, i.e. “.com”) consists solely of the generic word “patient”, and there is no indication whatsoever that the services to be provided eventually on this site would be targeted at the UK market (see Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001).

The Panel accordingly finds that the Complainant has failed to establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In light of the Panel’s finding under the first limb, the Panel need not consider whether or not the Respondent has any rights or legitimate interests in respect of the Disputed Domain Name. However, the Panel notes that even if it had been required to consider it on the evidence submitted it would have found that the Complainant did not satisfy the requirement. The evidence submitted by the Respondents demonstrates that Health Axis Group LLC is a substantial provider of information technology services to the health care industry in the USA with over 100 employees in five offices and an annual turnover of some USD 15 million. In 2010 it (or its predecessors) started developing an information system which it named “Patient 2.0”, the name being chosen because of its generic meaning in connection with healthcare. In connection with this development the Respondents sought to obtain domain names including the word “patient” and when in February 2012 they discovered a third party was prepared to sell them the Disputed Domain Name they purchased it. They say that they had no knowledge of the Complainant or its business when they did so. The Panel sees no reason to doubt their account. Further, even if they had learned of the Complainant, the Panel sees no reason why knowledge of its existence, and its UK related business, should have led the Respondents to conclude they could not purchase a generic domain name.

In these circumstances, the Panel considers the Respondents have established that they satisfy paragraph 4(c)(i) of the Policy viz: “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” and hence have demonstrated rights or legitimate interest in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Based on its finding under the first limb, the Panel also need not consider whether or not the Disputed Domain Name was registered and used in bad faith, but if the Panel had been required to consider it, the Panel would have determined that the Complainant failed to satisfy this third element as well. As indicated above the Respondents’ acquisition and use of the Disputed Domain Name has been in respect of bona fide plans by the Respondents to develop their own patient information system. Although the Disputed Domain Name has been used to display a parking page (and there is nothing per se objectionable about that) the Respondents’ evidence establishes they have also been using the Disputed Domain Name for testing of early versions of a patient portal as they develop their system. The Panel considers there to be ample evidence of good faith use.

It is true that there has been email correspondence where the Respondents suggested they would sell the Disputed Domain Name to the Complainant and substantial sums have been suggested as the price they would require. However this correspondence needs to be viewed in context. This occurred after the Complainant had made several approaches asking to acquire the name without at any stage suggesting it had rights entitling it to acquire the name, or to prevent the Respondents using it. The Complainant’s initial approaches were simply essentially anonymous enquiries – an email from a hotmail account saying “I am interested in purchasing the <patient.com> domain name from you. How much would you be prepared to sell it for? Thanks Ben”. Even when the Complainant identified itself more fully it did not seek to suggest it had any relevant rights. For example in its e-mail of November 11, 2013, it stated “[…] we get many visits from overseas to the medical information at ‘www.patient.co.uk’. As such we are looking to move to a “.com” domain to position us more appropriately to an international audience. I noticed your domain name <patient.com> had been advertised for sale in the past. Please can you advise as to how much you would want to sell the domain name to me? Kind regards. Ben [F]. Operations Director, Patient.co.uk EMIS.”

Eventually the Respondents acceded to the Complainant’s requests and named a price at which they would be prepared to sell the Disputed Domain Name. The fact that the price was high, does not in itself amount to bad faith – the Panel can readily infer that value in the name no doubt arises from its highly generic nature and the fact it would be an attractive name for many businesses to use, in relation to services relating to patients or medicine.

Accordingly, the Panel declines to find the Respondents have either registered or used the Disputed Domain Name in bad faith.

7. Decision

For the foregoing reasons, the Complaint is denied.

Gabriela Kennedy
Presiding Panelist

Nick J. Gardner
Panelist

David E. Sorkin
Panelist

Date: May 28, 2014