Mills & Associates, LLC v. Center for
Internal Change Inc.
Claim Number: FA0903001251337
PARTIES
Complainant is Mills & Associates, LLC (“Complainant”),
represented by Donald EE. Morris,
of Dozier Internet Law, PC, Virginia,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onlinediscprofile.com>
and <onlinediscprofiles.com> (the
“Domain Names”), registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“NAF”)
electronically on March 9, 2009; the National Arbitration Forum received a hard
copy of the Complaint on March 10, 2009.
On March 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the NAF that
the <onlinediscprofile.com>
and <onlinediscprofiles.com> Domain
Names are registered with Godaddy.com, Inc. and that the Respondent is the
current registrant. Godaddy.com, Inc.
has verified that Respondent is bound by the Godaddy.com, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On March 16, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 6, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@onlinediscprofile.com and postmaster@onlinediscprofiles.com
by e-mail.
A timely Response was received and determined to be complete on April
6, 2009.
On April 20, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Christopher Gibson as Panelist.
PRELIMINARY ISSUE: OTHER CORRESPONDENCE
On April 13, 2009, Respondent submitted an Additional Submission that
was in compliance with Supplemental Rule 7.
The additional documentation intended to correct mistaken portion of the
Response, provide an exhibit that was incorrect, and submit substitute exhibits
for the original Response. The National Arbitration Forum notified
Respondent that this documentation initially was not submitted in accordance
with any Rules or Supplemental Rules, and Respondent then submitted the
Additional Submission in compliance with Supplemental Rule 7. The Panel will accept and consider
Respondent’s Additional Submission.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant, Mills & Associates, LLC, is a
Complainant contends that the Domain Names, minus the generic “.com,”
are identical and confusingly similar to the Marks. Complainant also contends that Respondent
does not have any demonstrable rights or legitimate interests in the Domain
Names. The Domain Names do not reflect
any name by which the Respondent is commonly known or in which the Respondent
has any rights. No corporate records,
website information, or WHOIS information reflects any association of the
Respondent with the Marks or the Domain Names, except for Respondent’s infringing
use. At the time Complainant registered
the Domain Names, Complainant had already been in
continuous and active operation of its business and had used the Marks since
2000. Complaint had already become an
industry leader. Respondent was aware of
the Marks and the Complainant’s rights therein at the time of
registration. At no time did Complainant
authorize Respondent to use the Marks or register the Domain Names.
Complainant contends that Respondent’s use of the Domain Names to offer
the same goods in direct competition with Complainant is not legitimate
noncommercial or fair use. Rather, it is
a bad faith tactic to attract Internet users to Respondent’s website by
creating a likelihood of confusion with the complainant’s Marks. With regard to bad faith, Complainant alleges
that once Respondent registered the Domain Names, Respondent immediately began
using them to redirect traffic from Complainant’s websites to Respondent’s
websites, which sell goods and services in competition with the
Complainant. The Domain Names serve to
confuse Internet users who are searching for Complainant’s websites. The use of the Domain Names makes it clear
that registration and use of them was done intentionally to attract Internet
users to Respondent’s website for commercial gain by creating a likelihood of
confusion with the Complainant’s Marks.
B. Respondent
Respondent, Center for Internal Change Inc., claims that Complainant
has no legitimate trademark rights that would warrant transferring the Domain
Names, and that Complainant has failed to establish the necessary elements for
transfer of the Domain Names. The Domain
Names, <onlinediscprofile.com>
and <onlinediscprofiles.com>
tell the observer what is being provided, not who the provider is. Respondent claims that Complainant is abusing
the UDRP to gain possession of generic, albeit valuable Domain Names. Respondent requests that the Panel make a finding
of reverse domain name hijacking.
Respondent argues that Complainant did not submit any documentation
from which the Panel could determine that the Marks have acquired secondary
meaning or are famous. Complainant owns
no federal trademark registration.
Complainant recently received its state trademark registrations (for
With respect to rights or legitimate interests, Respondent contends
that Complainant has failed to make a prima
facie showing that Respondent lacks any legitimate rights in the Domain
Names. Since as early as 2000,
Respondent has offered DISC-related products and services. The term “DISC” in this context refers to a
behavioral model based on the work of Dr. William Moulton Marston. The products offered by the Respondent relate
to personality assessment tests. In
October 2003, Respondent registered the Domain Names in good faith to use them
in connection with Respondent’s online versions of DISC-related products and
services. The terms “Online DISC
Profile” (as well as plural) and “Online DISC” describe DISC profiles that may
be purchased via the Internet or have results that are computer generated, as
opposed to paper versions that are scored by hand.
Since registration of the Domain Names, Respondent has invested
significant resources into developing and using the websites associated with
the Domain Names. Respondent’s total
investment includes expenditures of over $275,000 to promote its websites. From 2004 through to the present, Respondent
explains that it has offered various versions of DISC-related online assessment
products and services, acting as an authorized seller of DISC products from
different companies. Respondent has
provided documentary evidence in support of its assertions. In sum, Respondent’s legitimate offerings of
goods have been continuous since the time of registration, and transfer of the
Domain Names would result in significant damage to Respondent and a windfall to
the Complainant. Respondent thus claims
it possess legitimate rights in the Domain Names for at least two reasons: (i)
before any notice to Respondent of the dispute, Respondent made use of the
Domain Names in connection with a bona
fide offering of goods, and (ii) Respondent is making legitimate
noncommercial or fair use of the Domain Names, without intent for commercial
gain to misleadingly divert or to tarnish the Marks of the Complainant.
Concerning bad faith registration, Respondent urges that Complainant
bears the burden of establishing that Respondent registered and is using the
Domain Names with Complainant’s Marks as a target. Because Complainant has
provided no evidence that Respondent engaged in this activity, its Complaint
must be denied. First, Respondent
emphasizes that the Domain Names are made up of generic or highly descriptive
words. They are compound terms where
each element is generic or highly descriptive when joined to form the compound
term. The term DISC is a descriptive term in the industry of personality or
behavioral assessments. “Online”
describes products and services promoted via the Internet. The term “Profile” is commonly used to
describe the process or product of the administration of DISC assessment. The very nature of domain names requires the
formation of a continuous string of characters – the Domain Names here are thus
compound terms formed by the union of these words.
Due to the weak nature of these terms for trademark purposes, they are
not associated with any particular source and no one can claim exclusive rights
to use of the words as a trademark.
Complainant has failed to provide any evidence that it is known by these
terms, or provide evidence of secondary meaning or fame. Complainant has failed to provide any
evidence that actual confusion has occurred.
This is not a case in which Respondent selected domain names
incorporating a famous or distinctive mark that, it should have known, it was
not entitled to use.
Respondent states that descriptive use of the terms in the Domain Names
is evident throughout the industry.
Respondent has provided affidavits of a DISC-products manufacturer and
licensor and three competing DISC-product distributors, to demonstrate the
common use of the terms within the relevant field.
Respondent also argues that Complainant is estopped from denying that
the terms in the Domain Names are generic and descriptive. First, Complainant has used the terms in this
fashion on its own website. In addition,
Respondent has used the Domain Names for almost five years and Complainant did
not object. Respondent has provided
evidence that Complainant’s owner was not only aware of the Domain Names
registered by the Respondent, but complimented the Respondent’s president on
the creativity of its website and offered consultation and coaching. Complainant encouraged Respondent to register
other domain names, and Complainant itself has registered over 700 domain
names. Respondent has put in evidence of
the communications between the Complainant and the Respondent. It is clear that they know each other and
were aware of each other within the relevant industry.
Respondent explains that until approximately 2008, Complainant did not
express its objection its objection to Respondent’s use of the Domain Names. In November 2008, Respondent received a
“cease and desist” letter, to which Respondent’s attorney responded explaining
that Respondent’s registration and use of the Domain Names was in good faith
and it had a legitimate interest in using the Domain Names. No response was received until this case was
commenced. Finally, Respondent argues
that Complainant’s allegations are insufficient to prove that any of the Marks
had acquired common law rights in 2003, when the Domain Names were
registered. A complainant seeking to
assert rights in an unregistered trademark must provide evidence of use
sufficient to establish common law rights.
Here, Complainant states that it began using the Marks in 2000, which is
the same year the Respondent began using the same descriptive terms in
promoting its DISC products and services.
As such, it is incredulous for Complainant to claim it had any superior
trademark rights or priority over Respondent.
Instead, Complainant has asserted unsubstantiated and conclusory
allegations that its Marks have become strong and well-known in their
field. However, Complainant has provided
no information about the extent of its advertising, or any financial documents
or examples of advertising to support its claims. Thus, there is no meaningful way for the
Panel to find common law rights without merely accepting the word of the
Complainant.
FINDINGS
1. Complainant registered its trademarks DISCPROFILE, DISCPROFILES and ONLINEDISC marks with the state of Illinois on January 14, 2009 (Reg. Nos. 90,036,315; 90,036,250; and 90,036,242 respectively) and the state of Delaware on December 3, 2008 (Reg. Nos. 99,764; 99,762; and 99,763 respectively).
2. The
Domain Names were registered by the Respondent in October 2003 and have been
used by the Respondent since that time in relation to its business.
3. The
Complainant and Respondent are competitors in the field of DISC-related
products and services.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “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 requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
The threshold for asserting
trademark rights under the Policy is very low.
Here, the Complainant has presented evidence of trademark registrations
in
The Panel finds that, on their face, the Domain Names are confusingly similar to the Complainant’s Marks. Although the Complainant’s Marks are not very distinctive in their field, the Marks remain the dominant portion of the Domain Names. The Domain Names are thus confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
While Respondent contends that the Domain Names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s Marks, the Panel considers that such a determination is not relevant under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in a trademark and whether the disputed domain names are identical or confusingly similar to that mark. Considerations that the Domain Names <onlinediscprofile.com> and <onlinediscprofiles.com> are comprised of generic and descriptive terms will be discussed in the analysis of the Policy ¶ 4(a)(ii) below.
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under the Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
As discussed above, the Panel has determined that Respondent has rights or legitimate interests in the Domain Names pursuant to Policy ¶ 4(a) (ii). These findings also support the conclusion that Respondent did not register or use the Domain Names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
REVERSE DOMAIN NAME HIJACKING
Although the Panel has found that Complainant failed to satisfy its
burden under the Policy, this does not necessarily result in a finding of
reverse domain name hijacking on the part of the Complainant in bringing the
instant claim.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Christopher Gibson, Panelist
Dated: May 4, 2009
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[1] The Complaint does not explain anything about “DiSC” related services and products. The Response, however, explains that DiSC is an acronym which refers to the terms “Dominance,” “Influence,” “Steadiness” and “Conscientious,” commonly used in connection with a self-assessment behavioral model and test for individuals based on the work of Dr. William Moulton Marston.