Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1.1 The Complainant is The Managed Risk Medical Insurance Board of the State of California, a governmental entity with its principal place of business at 1000 "G" Street, Suite 450, Sacramento, California, United States of America.

1.2 The Respondents are Family Soutions, an entity giving an address at 1985 Geary Road, Walnut Creek, California, United States of America, Family Solutions, Inc., an entity giving an address at 1906 Jeanette Drive, Pleasant Hill, California, United States of America, and Patrick Hagan, an individual giving an address at 41 Will Way, Carmel, New York, United States of America.

The domain names at issue are <healthyfamilies.com>, <healthyfamilies.net>, and <healthyfamilies.org>, which domain names are registered with Network Solutions, Inc. ("NSI"), based in Herndon, Virginia, United States of America.

3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on

January 24, 2001, and the signed original together with four copies forwarded by express courier was received on January 29, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated January 29, 2001.

3.2 On January 29, 2001, a Request for Registrar Verification was transmitted to the registrar, NSI requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the persons identified as the Respondents are the current registrants of the domain names; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrants of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.

3.3 On February 2, 2001, NSI confirmed by reply email that the domain names at issue are registered with NSI by the following respective registrants: 1) <healthyfamilies.com>, Family Solutions, Inc.; 2) <healthyfamilies.net>, Family Solutions; 3) <healthyfamilies.org>, Patrick Hagan. NSI also confirmed that the domain names at issue are currently in active status, and the registrar also forwarded the requested Whois details and confirmed that the Policy is in effect.

3.4 Upon reviewing the Complaint the WIPO Center determined that the Complaint was deficient and on February 5, 2001, the WIPO Center issued a Complaint Deficiency Notification.

3.5 On February 8, 2001 the WIPO Center received electronically and on

February 12, 2001 in hardcopy an Amended Complaint.

3.6 The WIPO Center determined that the Amended Complaint (hereinafter the "Complaint") satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

3.7 No further formal deficiencies having been recorded, on February 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, NSI and ICANN), setting a deadline of March 4, 2001, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by courier and by email to the email addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondents' participation in these proceedings.

3.8 A Response was received in electronic format on March 5, 2001 and in hardcopy on March 7, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on March 7, 2001.

3.9 On March 16, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was March 29, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.

3.10 On March 27, 2001, Complainant submitted a Reply to the WIPO Center. On March 28, 2001, Respondent submitted a Petition to Consider Additional Sworn Statement of Clarification by Respondent. Since neither pleading is called for by the Uniform Rules, and since the Panel made no request for additional pleadings, the Panel will consider neither of the documents.

4.1 The California Legislature first used the term "Healthy Families" in the context of a family insurance program on September 9, 1997. Complaint, Annex 3. The Governor of California signed the Healthy Families legislation on October 10, 1997. Complaint, Annex 5. The Healthy Families program was mentioned in the press at least as early as September 12, 1997. Complaint, Annex 6.

4.2 On October 21, 1997, Complainant registered the service mark HEALTHY FAMILIES with the California Secretary of State. Complaint, Annex 8.

4.3 On April 29, 1998, Complainant registered the domain name <healthyfamilies.ca.gov> for its first official program web site. Complaint, Annex 9.

4.4 On July 1, 1998, the California Healthy Families Program commenced providing insurance coverage to enrollees.

4.5 Respondents registered the domain names at issue on September 26, 1997 (<healthyfamilies.org>), December 2, 1997 (<healthyfamilies.com>), and December 9, 1997 (<healthyfamilies.net). Complaint, Annex 1.

4.6 Respondents will hereafter be referred to collectively as Respondent, as Respondents have employed such reference in their Response.

4.7 In May 1997, Respondent enrolled in a graduate class at the University of Arizona for which Respondent authored a paper entitled "The Healthy Families Project, A Public-Private Partnership in Early Childhood Education." Response, Annex 3.

4.8 The paper described a project called "The Healthy Families Project." Under "Goals for The Healthy Families Project," the author states: "One of the goals of the healthy Families Project will be to design, fund and operate an early education service for children and their economically disadvantaged parents. This early childhood resource and referral service will be composed of a Home Page on the Internet and a toll free resource Hot Line for parents." Id.

4.9 Respondent and a colleague purportedly developed a software program in 1995 and 1996 that they called "Healthy Families." The software tracks families who complete a request for information for health insurance, provides them with an application, and schedules appointments for application assistance. The program has been marketed in New York State, beginning in December 1996, and is now incorporated into the <healthyfamilies.com> web site. Response, Annex 1.

4.10 On July 25, 1997, Respondent met with Rob Campbell of Complainant and presented Mr. Campbell with an Executive Summary and Recommendations entitled, "A Marketing Identity for the California Children's Health Insurance Program." Response, Annex 1. The purpose of the presentation was that Respondent was hoping to be awarded a contract to provide services in conjunction with the program. Id.

4.11 As Recommendation #4 of the Executive Summary, Respondent recommended that Complainant call its program "Healthy Families." Response, Annex 4. As Recommendation #9 of the Executive Summary Respondent recommended that Complainant establish "an easily acceptable web site to provide Internet access for information and eligibility determination. The domain name should be <healthyfamilies.org>."

4.12 On May 20, 1998, the California Attorney General, on behalf of Complainants, sent Respondent a letter, demanding that he cease using the mark HEALTHY FAMILIES on his web site, cease all activities that suggested any relationship to Complainant or its programs, and cease using the web site to "pre-enroll" children in the Healthy Families Program. Apparently, the letter did not touch on Respondent's use of the domain names at issue.

4.13 On June 8, 1998, Respondent sent Complainant a letter in which he offered to sell Complainant Respondent's Healthy Families web site, the three domain names at issue, the Healthy Families Source Library and Database, trained personnel to answer questions, and the toll-free telephone number 1-877-FAMILIES in return for US$32,175. Complaint, Annex 13.

4.14 Respondent was trained by the State of California to help families enroll in the Healthy Families Program, and completed such instruction on June 25, 1999, at which time he became a Certified Application Assistant. Response, Annex 2.

5.1 Complainant contends that Respondent has registered domain names which are identical to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.

5.2 Respondent contends that it has rights and legitimate interests in respect of the domain name at issue which predate Complainant's, that the domain names at issue were registered and are being used in good faith, and that Complainant is guilty of bad faith reverse domain name hijacking.

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

3) that the domain name has been registered and is being used in bad faith.

Respondent does not contest the fact that the domain names at issue are identical to Complainant's mark. However Respondent contends that he has rights and legitimate interests which predate Complainant's use of and registration of the mark. The Panel agrees. Respondent conceived of and planned for the use of the mark in a health care related program prior to any use by Complainant. Indeed, Respondent suggested to Complainant the adoption of the name "Healthy Families" for its program and the use of the domain name <healthyfamilies.org> for a web site. Respondent has made legitimate use of the domain names to resolve to a web site well prior to notice of any dispute. In fact, in Complainant's recitation as to what was contained in the May 20, 1998, letter from the California Attorney General, a copy of which was not annexed to the complaint, there was no mention of any objection to the registration and use of the domain names at issue. So far as the record is concerned, the first notice of the dispute appears to be the filing of the Complaint in this matter. Accordingly, the Panel finds that Respondent has established rights and legitimate interests in respect of the domain names at issue under paragraph 4(c)(i) of the Policy. To the extent that Complainant feels that some of the uses made by Respondent are confusing, inappropriate, or misleading, this is not the forum to determine such issues.

Because the Panel has found that Respondent has rights or legitimate interests in respect of the domain names at issue, it is unnecessary to determine whether the domain names were registered and are being used in bad faith.

Respondent asks the Panel to find that Complainant has acted in bad faith and is engaged in reverse domain name hijacking. However, in view of Respondent's offer to sell the domain names at issue, together with other items, to Complainant, it is entirely reasonable for Complainant to have believed that Respondent was acting in bad faith. Therefore, the Panel declines to find that Complainant is engaged in bad faith reverse domain name hijacking.

For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical to the mark in which the Complainant has rights, but that the Respondent has rights to or legitimate interests in respect of the domain names at issue. Accordingly, the Complaint is dismissed and any relief is denied.

M. Scott Donahey
Presiding Panelist