Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services,
StateVentures, LLC Case No. D2009-1059
1. The Parties The Complainants are Loma Linda University Adventist Health Sciences Center, Loma Linda University, and Loma Linda University Medical Center, all of California, United States of America, represented by Sidley Austin LLP, United States of America. The Complainants collectively shall be referred to in the singular as the “Complainant” herein.
The Respondent is Development Services, StateVentures, LLC of Washington, DC, United States of America, represented by ESQwire.com Law Firm, United States of America.
2. The Domain Name and Registrar The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2009. On August 6, 2009, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On August 6, 2009, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed slightly from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 11, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 11, 2009. The Center verified that the Complaint together with the amendment to 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 August 14, 2009. The Respondent requested, and the Complainant did not oppose, numerous extensions to file a response to the Complaint. In accordance with the Rules the due date for Response became October 29, 2009. The Response was filed with the Center October 29, 2009.
The Center appointed William F. Hamilton, Richard W. Page and The Honourable Neil Anthony Brown QC as panelists in this matter on November 24, 2009. 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.
On November 13, pursuant to the Rules, paragraph 12, the Complainant filed a request for permission to submit further information and submission of further information. On November 25, 2009, the Respondent filed a request for permission to submit further information in the event the Panel agrees to consider submission of further information, and submission of further information. The Panel has determined to accept and consider both Rules, paragraph 12 submissions.
4. Factual Background The Complainant is the umbrella organization of numerous educational and medical organizations founded by the Seventh-day Adventists. The Complainant’s history was closely reviewed in the decision Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez, WIPO Case No. D2009 0036. In summary, the Complainant traces its origin back to 1905 when the Southern California Conference of Seventh-day Adventists opened the “Loma Linda Sanitarium.” Nursing instruction commenced in 1906 and the first class of nurses graduated in 1907. The Loma Linda Medical College opened on September 23, 1910 and the first class of physicians graduated in 1914. The school evolved into the Loma Linda University and Loma Linda University Medical Center. The Loma Linda medical complex is a world-renowned medical facility and destination. The location of the Sanitarium was originally called Mound City featuring a hotel called Loma Linda Hotel. “Loma Linda” means “Beautiful Hill” in Spanish. In 1970 the city of Loma Linda was incorporated and now has a “thriving population of approximately 22,000 residents,” according to the city of Loma Linda’s webpage. The Complainant owns two marks registered with the United States Patent and Trademark Office: LOMA LINDA UNIVERSITY 1905 TO MAKE MAN WHOLE and LOMA LINDA UNIVERSITY TO MAKE MAN WHOLE CENTER FOR SPIRITUAL LIFE AND WHOLENESS. These mark registrations specifically disclaim any right to the exclusive use of “Loma Linda”. The Complainant is the owner of the domain names , , and which were registered according to a WhoIs search in 2006 and 2007. The Complainant is also the owner of the domain names and by virtue of a transfer ordered in the decision Loma Linda University Adventist Health Sciences Center, et al. v. JM XTrade, Inc., Joseph Martinez, WIPO Case No. D2009 0036. All these domain names resolve to the Complainant’s “primary” website at “www.lomalindahealth.org”.
The Respondent registered the disputed domain name on March 6, 2000.
5. Parties’ Contentions A. Complainant The Complainant contends that it possesses common law rights in the name “Loma Linda” based upon the secondary meaning acquired over nearly a century of use. The Complainant asserts that the mark LOMA LINDA was in use by the Complainant’s predecessors long before the founding of the city of Loma Linda. The Complainant asserts that it bequeathed to the city the name “Loma Linda.” The Complainant asserts that “Loma Linda” has attained a secondary meaning in national medical and educational communities and that many persons to refer to Complainant’s facilities as “Loma Linda.” The Complainant asserts that to say one has “gone down to Loma Linda” is commonly understood as meaning a visit the Complainant’s medical and educational complex. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as the Complainant has never licensed or granted the Respondent any right to use the LOMA LINDA mark and that the Respondent is not engaged in any bona fide business except to obtain click-through revenues from Internet users who are confused by the disputed domain name. The Complainant contends that for the past nine years the disputed domain name has been merely a landing page featuring pop-up advertisements and links which in some cases reference the Complainant’s facilities or other competing entities. The Complainant suggests that the disputed domain name potentially endangers the health of persons seeking to locate the Complainant’s services.
B. Respondent The Respondent asserts that it is in the business of developing city and geographically-oriented websites and that the Respondent purchased the disputed domain name when it became available nine years ago for the purpose of constructing a website featuring information and links about the city of Loma Linda. The Respondent asserts it was unaware of Complainant’s medical and educational services when it registered the disputed domain name. The Respondent asserts that the delay of some nine years in fully developing the site to which the disputed domain name will resolve is not dispositive of whether the disputed domain name was registered and is being used in bad faith. The Respondent asserts it has been busy developing other city-oriented websites and at one point utilized the disputed domain name in connection with providing information to visitors of a California based travel website. The Respondent contends it now has a contract with a partner to develop a city-oriented website for . The Respondent asserts that the Complainant has no protectable rights in the mark LOMA LINDA. The Respondent notes that the Complainant disclaimed any right to the exclusive use of the words “Loma Linda” when obtaining registrations for the above-referenced marks in 2001. The Respondent also asserts that although the Complainant may have originally used LOMA LINDA as early as 1905, LOMA LINDA is now in widely used in hundreds of domain names and has become the name of the city of Loma Linda. The Respondent contends that any right to the exclusive use of LOMA LINDA that the Complainant may have at some time owned has now expired as the Complainant has acquiesced to the use of LOMA LINDA by others. The Respondent contends LOMA LINDA has fallen into the public domain as it ceased long ago to be exclusively used by the Complainant and that LOMA LINDA is now merely a generic or descriptive term.
6. Discussion and Findings Paragraph 4(a) of the Policy establishes three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
The Complainant must establish rights in the LOMA LINDA mark. This task has proved difficult. The Complainant cannot rely on its United States registrations because those registrations specifically disclaimed any exclusive rights to the term “Loma Linda”. The Complainant also asserts common law rights in the mark LOMA LINDA. According to the Complainant, due to its use by the Complainant since 1905, LOMA LINDA has become associated with the Complainant’s medical and educational services and facilities. However, on this record, the majority of the Panel finds that the Complainant’s claim of secondary meaning in LOMA LINDA fails because over the years LOMA LINDA has become utilized by others in numerous contexts. Indeed, LOMA LINDA has become the name of a city with some 22,000 inhabitants. A simple Google search reveals hundreds of domain names which incorporate LOMA LINDA such as , , , , , and .
The Complainant did not coin the name “Loma Linda”. Loma Linda, meaning pretty hill, was the name of a hotel built in the 1890s that predates the existence of the Complainant. The similarly named towns of Alta Loma and Mira Loma were nearby. The Complainant purchased the Loma Linda Hotel, adopted the name Loma Linda from the hotel and then developed it into a health facility.
A historical chronology annexed to the Complaint provides examples of early uses of LOMA LINDA which are not associated with the Complainant. These listings include, for example:
1936 First Loma Linda city directory published by Wesley K. Nary;
1970 Loma Linda Plaza (also known as Alpha Beta Plaza) officially opened, March 26;
1970 Incorporation of Loma Linda certified by the California Secretary of State;
1981 Election raising Loma Linda to the status of a Charter City, June 2;
1982 Chinese Church of Loma Linda (SDA) dedicated, June 12.
The majority of the Panel thus concludes that the Complainant has failed to establish in this proceeding that it owns rights in the mark LOMA LINDA. The majority of the Panel finds that the Complainant has not met the requirements of Policy 4(a)(i).
A majority of the Panel also finds that the Complainant has failed to show that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has provided affidavit testimony from its President that the Respondent is in the business of developing geographically-oriented websites featuring information and services about municipalities and other geographic regions. The Respondent provided a list of over 400 such websites such as “www.annanpolis.com”, “www.baltimore.net”, “www.bridgeville.com”, “www.capemay.net”, “www.collegepark.com” and “www.drexelhill.com”. The Respondent asserted that it monitors city and regional website names for availability when their registrations expire. The Respondent avers that the disputed domain name was acquired in 2000 through such a process. The Respondent further provided affidavit testimony that the Respondent was unaware of the Complainant when the disputed domain name was registered. The Respondent also provided affidavit testimony that the disputed domain name was periodically used for the legitimate business purpose of providing travel related information services and that the Respondent is currently negotiating with a third party to develop the website. UDRP proceedings are designed to expeditiously address obvious cases of cybersquatting in an administrative context without hearings, testimony, cross-examination or extensive briefing. The majority of the Panel finds on the evidence presented that the Complainant has not demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. The majority of the Panel is satisfied that for the purposes of this proceeding, the Complainant has failed to establish that the Respondent lacks rights or legitimate interests in the disputed domain name as required by Policy 4(a)(ii).
As the Complainant has failed to establish that the Respondent has no rights or legitimate interests in the disputed domain name, majority of the Panel finds that the Complainant cannot establish that the Respondent has registered and used the disputed domain name in bad faith as required by Policy 4(a)(iii).
7. Decision For all the foregoing reasons, a majority of the Panel orders that the Complaint is denied.
Dated: December 18, 2009
Dissenting Opinion As the author of the previous decision Loma Linda University Adventist Health Services Center, et al. v. JM XTrade, Inc., Joseph Martinez, WIPO Case No. D2009-0036, I ruled that the Complainant does have common law rights in the name “Loma Linda,” despite the phrase now being used as a geographical name. The history of the Complainant and the name “Loma Linda” should constitute an exception to the general rule that geographic names are not subject to trademark protection. There is no persuasive evidence contradicting the Complainant’s allegation that it literally put Loma Linda “on the map.” The majority concludes that the Complainant forfeited its rights to the phrase “Loma Linda” because the phrase is not exclusively used by the Complainant.
I disagree with my brethren that the use of “Loma Linda” for a food company, newspaper, credit union or Chinese Church (which is probably Adventist) constitutes a waiver of the Complainant’s rights. The Complainant’s primary activities are in the medical, educational and complementary health lines of commerce and deserve protection for the goodwill which has been established over decades of good works. The exclusive or predominant use of “Loma Linda” in the relevant lines of commerce is in association with Complainant, who has been found even by this majority to have once established common law rights in the phrase.
The Respondent has been paid for use of the disputed domain name on a pass-through, pay-per-click basis. No assurance has been offered that there are any restrictions on the sales of these pay-per-click pass-through leads to commercial entities within the medical, educational or complementary health lines of commerce. Therefore, an inference is allowable that the Respondent is selling these leads to entities (probably competitors of the Complainant) willing to pay for Internet users looking for the Complainant’s goods and services.
Such activities do not support a bona fide use under paragraph 4(c)(i) or a legitimate non-commercial interest under paragraph 4(c)(iii). Nor do such activities protect the Respondent from bad faith under paragraph 4(b)(iv).
Therefore, I respectfully dissent and would rule for the Complainant.