Lewis & Lin Obtains UDRP Victory Against One of Nation's Largest Hospital Networks

In a sweeping decision by an NAF arbitration panel, Lewis & Lin obtained a victory for its client in a UDRP dispute for the domain name <BrowardHealth.com>.  Complainant, the North Broward Hospital District, claimed that the domain was confusingly similar to its "BROWARD HEALTH" mark in which it holds common law and statutory rights.  The hospital also argued that because of the services being offered on the domain name--a medical services directory--respondent had no rights or legitimate interests in the domain and therefore registered and used the name in bad faith.

Lewis & Lin argued for our client that the disclaimer in the Hospital's federal trademark registration limited its rights, precluding a finding of confusing similarity.  We also argued that the directory of Broward County, Florida medical providers, insurance providers, and healthcare industry careers provided at the website <BrowardHealth.com> was a legitimate use of the domain.  Finally, we argued that the Hospital failed to allege both registration and use of the domain name in bad faith.

The three-member arbitration panel unanimously agreed with Lewis & Lin on the its bad faith argument, and therefore did not need to address our other two arguments.  Specifically, the panel found that there was "no bad faith when the complainant initiated an offer for the domain name and the respondent offered to sell the disputed domain name at market price."  Further, the panel noted that the Hospital's first use of the "BROWARD HEALTH" mark was in 2007, "at a time that the domain in dispute is shown to have been active by the Internet Wayback Machine so that the hospital should have been aware of its existence when it filed the application for trademark registration and certainly would have become aware of it when they registered <browardhealth.org> and <browardhealth.net>."

Finally, the panel further refused to find bad faith in this case because the domain name was "comprised entirely of common terms that have many meanings apart from use in Complainant’s BROWARD HEALTH mark."  As a result, "it would not have been unreasonable for Respondent to have viewed the words 'Broward Health' as not being a protectable portion of the registered mark, particularly given that the domain name at issue had been registered and was active prior to filing of the Complainant’s application."  

Having failed to establish all three elements required under ICANN policy, the complainant's claim was denied.

The case is North Broward Hospital District v. Shiffman, No. FA1111001416226 (NAF Jan. 12, 20012).  The decision is available here.