Center for the Study of
Psychiatry, Inc. d/b/a
Claim Number: FA1007001334307
PARTIES
Complainant is Center for the Study of Psychiatry, Inc.
d/b/a International Center for the Study of Psychiatry and Psychology, Inc. (“Complainant”), represented by Shawn
G. Rice, of Rice & Bohrofen,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <icspp.org>, registered with Network
Solutions LLC (R63-LROR).
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 8, 2010.
On July 9, 2010, Network Solutions LLC (R63-LROR) confirmed by
e-mail to the National Arbitration Forum that the <icspp.org> domain name
is registered with Network Solutions LLC
(R63-LROR) and that the Respondent is the current registrant of the
name. Network
Solutions LLC (R63-LROR) has verified that Respondent is bound by the Network Solutions LLC (R63-LROR) 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 July 16, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of August 5,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to postmaster@icspp.org. Also on July 16, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 5, 2010.
Complainant’s Additional Submission was received on August 10,
Respondent’s Additional Submission was received on August 16,
On August 17, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
argues that Respondent was appointed/elected by
Complainant as one of its directors and at all relevant times was acting on
behalf of Complainant as its agent when he, through his wife, registered the
disputed domain name. Complainant
further argues that neither Respondent nor his wife have any personal rights to
the <icspp.org> domain
name. Complainant asserts that it
directed Respondent to register the disputed domain name in Complainant’s name
and reimbursed Respondent for the costs of registering and maintaining the
disputed domain name, except for costs which were expressly donated to
Complainant as a charitable tax-deductible gift. Complainant contends that Respondent’s wife
acknowledged in writing that the website hosting, website, and list serve
belong to Complainant.
Complainant
argues that since the time of the disputed domain name’s registration,
Respondent has left Complainant but continues to maintain use and control of <icspp.org> without
authorization. Complainant asserts that
when Respondent left Complainant, his rights to the disputed domain name, if
any, were terminated and his professional interests in the domain name were
eliminated.
Complainant
argues that Respondent uses the disputed domain to redirect traffic away from
Complainant’s website to his own website.
Complainant
argues that the disputed domain name was registered in bad faith because
Respondent lacked any individual right to the trademark represented by the
domain name. Complainant argues that Respondent acted contrary to Respondent’s
instruction when he registered the disputed domain name. Complainant argues
that the disputed domain name is being used in bad faith because Respondents is
intentionally attempting to attract internet users to his site that are
intending to reach Complainant’s website. Complainant further argues that
Respondent, by using the disputed domain name, intends to disrupt the business
of Respondent.
B. Respondent
Respondent
argues that it has a stronger association with the ICSPP mark than does
Complainant as ICSPP is Respondent’s brand and Complainant’s success is based
on Respondent’s accomplishments, admiration, and good will that he has
generated over five decades. Respondent
asserts that from 1971-2002, Complainant never had an
office, an address, or a phone number separate from Respondent’s home office,
address, and phone number. Respondent
further asserts that the disputed domain name was originally embedded in
Respondent’s professional website, <breggin.com>. Respondent contends that most of
Complainant’s publicity and a vast majority of its activities were handled by Respondent
and his wife and that Respondent’s career and professional and public identity
are closely associated with the ICSPP mark.
Respondent contends that since 2002, Complainant has tried
unsuccessfully to build a separate identity from Respondent and has been unable
to establish itself independent of Respondent.
Respondent further contends that any continued good name and public
recognition depend upon the reputation, good will, achievements and identity of
Respondent.
Respondent
asserts that at no time from the registration of the disputed domain name in
1997 until Respondent separated from Complainant in April 2010, did Complainant
ever request that Respondent transfer ownership of the disputed domain name
from Respondent to Complainant.
Respondent further asserts that Complainant’s leadership has always been
aware that Respondent was providing the organization with only limited
technical access to the disputed domain name while Respondent maintained
control and ownership of the disputed domain name.
Respondent
asserts that web searches using the Google search engine reveal that
Respondent’s name is more closely associated with Complainant than any other of
its members.
Respondent
alleges that Complainant’s recent leadership has drastically diminished the
value of the disputed domain name and that Respondent’s personal website
received in the past year an average of 10 times more visits per month that the
disputed domain name.
Respondent
alleges that at no time he was a mere registrant, employee or agent of
Complainant and that he was at all times form 1971 until 2002 the unpaid,
volunteer founder and the International Director of CSP, and contributed with
many expenses related to Complainant’s operational costs. Respondent alleges
that at no time Complainant “directed” him to register the disputed domain name
and that he always owned, registered and controlled the disputed domain name.
Respondent asserts that no request was ever made until now to transfer control
or ownership of the disputed domain name from Respondent to Complainant. Respondent
alleges that he lent use of the disputed domain name to Complainant free of
charge from 2002-
Respondent
also alleges he had a good faith agreement with Complainant ad that such
agreement was violated through personal and professional attacks on Respondent.
Respondent claims that Complainant’s current leaders have failed to maintain
its effectiveness and ethical status.
Respondent
alleges that Complainant has not formally adopted, with any federal or state
agency, the assumed names of either “The International Center for the Study of
Psychiatry and Psychology” or “ICSPP”. Respondent does not contest that Complainant
routinely used the name “The International Center for the Study of Psychiatry
and Psychology” since late 1998. However, Respondent rejects that Complainant
has ever trademarked “The International Center for the Study of Psychiatry and
Psychology” or the acronym “ICSPP”. Respondent also contends that Complainant’s
use of the name and acronym are largely and predominantly associated with and
completely benefit from the life work and professional and public identity and
good will of Respondent.
Respondent
alleges that the acronym ICSPP is in the public domain, and would, therefore,
be difficult to trademark with federal or state authorities. Respondent alleges
that a number of organizations use the same acronym ICSPP, including the
“International Society of Crime Prevention Practitioners”; the “Interstate
Compact for Supervision of parolees and Probationers”; and “Integrated care and
Support Pathways Planning”, all active in related human service fields to
Complainant. Respondent also informs there is another organization using the
acronym ICSPP: “I Can’t Sleep Productions and Publications”.
Respondent
agrees that the disputed domain name is currently directed to his own website
named “Independent Counselors, Social Workers, Psychologists, Psychiatrists and
Educators” and disagrees there is any confusion between his website and
Complainant’s website. Respondent claims he has displayed disclaimers informing
he was no longer linked with Complainant.
C. Additional Submissions
Complainant
argues in its Additional Submission that simply because Respondent is akin to a
celebrity founder (i.e. Bill Gates as the founder of Microsoft), the disputed
domain name and mark remain with the entity and not the individual. Complainant
argues that Respondent’s allegations of being closely related to Complainant’s
name and trademark are irrelevant.
Complainant
also asserts in its Additional Submission that Complainant permitted Respondent
and his wife to maintain the website hosted at the disputed domain name and
that Respondent never informed that he considered such domain name as of his
own ownership and control. Complainant argues that, as such ownership and
control was never asserted by Respondent, Complainant did not object to it.
Complainant also contends that Respondent did not object to Complainant’s use
of the domain name until recently.
Complainant
asserts in its Additional Submission that although Respondent tries to deny
that he was ever an agent of Complainant, he concedes that he served as its
officer in the position of International Director and Complainant contends that
as an officer Respondent has certain fiduciary duties related to
Complainant.
Complainant asserts in its Additional Submission that it has not
officially registered its d/b/a/ with federal or state authorities. Complainant
argues, however, that it routinely calls itself the
Complainant asserts in its Additional Submission that Respondent is
using a URL that hosted Complainant’s website for over a decade to host the
website for another organization with the same initials, what would probably
bring confusion among consumers. Complainant argues that since Respondent is
using a another domain name,
<empathictherapy.or>, to host his new organization, there is no
legitimate reason for him to be using the disputed domain name. Complainant
contends that even if Respondent currently holds disclaimers on the website
hosted under the disputed domain name, these disclaimers could be removed at
any time.
Complainant asserts in its Additional Submission that it did not seek
to obtain ownership of the disputed domain name prior to this complaint because
it thought that it already owned the domain name.
Respondent asserts in its Additional Submission that he founded
Complainant in 1971 but that there was never any intention or effort to brand
the organization as an entity separated from his identity and reform work. The
intention was to brand Respondent as a valid reformer with the support of
well-known public figures. Respondent informs about his remarkable professional
achievements and claims that he was never merely “a founder” or “a member” of
Complainant, but that he “was” the Complainant.
Respondent, in its Additional Submission, reinforces the allegations
brought in his Response.
FINDINGS
Complainant, Center for the
Study of Psychiatry, Inc. is a non-profit organization founded in 1971.
Complainant has been doing business as “
Respondent, Peter Breggin,
was one of Respondent’s founders and significant contributor through many
years, serving as a member and director of Respondent.
Dr. Breggin separated from
the Respondent on April, 2010.
The disputed domain name was
registered on October 13, 1997.
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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the
In the present
case, both parties allege having rights and legitimate interests over the
disputed domain name. Not only that, but both parties also allege having rights
to the trademark in which the Complainant is based. The parties assert they
have had a business/contractual relationship during many years.
In one side,
Complainant argues that Respondent acted under its orders when he registered
the disputed domain name, which Respondent denies. Respondent alleges he was
never directed by Complainant to act in such way, and that Complainant was
aware at all times that the disputed domain name was owned and controlled by
Respondent and never, until recently, opposed to such situation.
In this
instance, the Panel finds that this is a business, civil and/or contractual
dispute between two entities that falls outside the scope of the
A dispute, such as the present one, between parties who each have at
least a prima facie case for rights in the disputed domain names is outside the
scope of the Policy … the present case appears to hinge mostly on a business or
civil dispute between the parties, with possible causes of action for breach of
contract or fiduciary duty. Thus, the
majority holds that the subject matter is outside the scope of the
According to
the panel in Love, complex cases such as the one presented here may be better
decided by the courts than by a
When the parties differ markedly with respect to the basic facts, and
there is no clear and conclusive written evidence, it is difficult for a Panel
operating under the Rules to determine which presentation of the facts is more
credible. National courts are better
equipped to take evidence and to evaluate its credibility.
Despite
allegations of the parties that implicate other legal issues, the
straightforward question here is if the Panel can
procede to a determination under the UDRP without being clouded by the
tangential issues. The Panel finds that
there is sufficient evidence for it to properly decide the dispute under the
As outlined
below, Complainant fails to make the necessary showing to prevail in this
Complainant
asserts common law rights in its ICSPP mark.
Complainant indicates that the ICSPP mark is an acronym for the
Respondent on the
other hand, argues that Complainant does not have rights in the ICSPP mark as
the public generally associates this mark with Respondent and not with
Complainant, thereby preventing Complainant from establishing secondary meaning
in the mark. Respondent contends that
from 1971-2002 the International Center for the Study of Psychiatry and
Psychology, Inc. never had an office, an address, or a phone number separate
from Respondent’s home office, address, and phone number. Respondent further contends that the ICSPP
website was embedded in Respondent’s personal website resolving from the
<breggin.com> domain name.
Respondent asserts that all inquiries to the organization, most of its
publicity and a vast majority of its activities were handled by Respondent and
his wife. Respondent submits evidence
that his career and professional and public identity are closely associated
with the ICSPP mark.
The Panel finds
that Complainant has provided sufficient evidence of the secondary meaning
associated with the ICSPP mark in order to establish common law rights in the
mark pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v.
Bahr, FA 595972 (Nat. Arb.
Forum Dec. 19, 2005) (finding that the complainant established common law
rights in the STELLAR CALL CENTRES mark because the complainant demonstrated
that its mark had acquired secondary meaning); see also George Weston
Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007)
(finding that the complainant could establish common law rights in its GW
BAKERIES mark through consistent and continuous use of the mark, which helped
the mark become distinctive and generate “significant goodwill”).
Complainant argues
that Respondent’s <icspp.org> domain name is identical to Complainant’s
ICSPP mark. Complainant contends that
Respondent’s disputed domain name incorporates Complainant’s mark in its
entirety and merely adds the generic top-level domain (“gTLD”) “.org.” The Panel finds that the mere addition of a
gTLD is not sufficient to distinguish a disputed domain name from a mark and
renders the disputed domain name identical to Complainant’s mark. See Sea World, Inc. v.
JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since]
[t]he top-level gTLD is merely a functional element required of every domain
name, the <shamu.org> domain name is identical to the SHAMU mark under a
Policy ¶ 4(a)(i).”); see also Koninklijke Philips
Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the
domain name <philips.org> is identical to the complainant’s PHILIPS
mark).
The Panel finds that Complainant has met the
first element of the Policy.
A complainant is required to make out an
initial prima facie case that the respondent lacks rights or legitimate
interests. Once such prima facie case is made, respondent carries the
burden of demonstrating rights or legitimate interests in the domain name. If
the respondent fails to do so, a complainant is deemed to have satisfied
paragraph 4(a)(ii) of the Policy. 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
Complainant asserts
that prior to notice of this dispute, Respondent was
not known as or affiliated with any entity utilizing ICSPP’s initials other
than Complainant. Additionally, the
WHOIS information indicates the registrant of the disputed domain name is
“Peter Breggin.” Complainant argues that
Respondent was acting on behalf of Complainant when he, through his wife,
registered the disputed domain name and that neither Respondent nor his wife
had any personal rights in the disputed domain name. Complainant further argues that it directed
Respondent to register the disputed domain name and reimbursed Respondent for
the costs of registering and maintaining the disputed domain names and that
Respondent’s wife acknowledged in writing that neither she nor Respondent had any
rights in the disputed domain name. The Panel holds
that Complainant has not established a prima facie case in support of
its arguments that Respondent lacks rights and legitimate interests under
Policy ¶ 4(a)(ii).
See Terminal
Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not
satisfactorily meet its burden and as a result found that the respondent had
rights and legitimate interests in the domain name under
Respondent alleges
that he is more commonly associated with the ICSPP mark and <icspp.org>
domain name than Complainant. Respondent
argues that an Internet search performed using the Google search engine using
the combined terms “Peter R. Breggin” and “ICCSP” found 22,000 results while a
search using the combined terms “Toby Watson” (Complainant’s current Executive
Director) and “ICCSP” yielded only 364 results.
Respondent argues that at no time did Complainant “direct” Respondent to
register the <icspp.org> domain name. Respondent contends that he, working with his
wife, created the disputed domain name and that Respondent has always owned,
registered and controlled the disputed domain name. Respondent asserts that he personally paid
for the registration costs associated with the disputed domain name and
absorbed all other costs and expense associated with the disputed domain name
until 2002. Respondent alleges that from
2002-2010, Respondent lent the use of the disputed domain name to Complainant
free of charge but never gave ownership, registration or control of the
disputed domain name to Complainant. Respondent indicates that he continued to
register and pay for the disputed domain name until the present time. The Panel finds that such evidence is
sufficient to determine that Respondent was commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii). Also, the Panel finds that, with respect to
paragraph 4(c)(i) of the Policy, there is enough
evidence that Respondent, before any notice of the dispute, used the disputed
domain name or a name corresponding to the domain name in connection with a bona
fide offering of goods or services. See
Am. Credit Union Buyers Ass’n
v. Acuba Ltd., FA 164306
(Nat. Arb. Forum July 16, 2003) (finding that complainant’s allegations that
“[n]o evidence indicates that Respondent has been known . . . by the Domain
Name” did not acknowledge or address evidence that respondent was known by the
disputed domain name, having registered <acuba.com> under the name Acuba
Limited, and, therefore, were not a prima facie showing under Policy ¶
4(a)(ii)).
The Panel finds that Complainant has failed
to meet the second element of the Policy.
The Panel could have declined to analyze bad
faith under the Policy, but it has decided to also analyze this last element.
The Panel finds that Complainant failed to
meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide,
Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005)
(finding that the complainant failed to establish that the respondent
registered and used the disputed domain name in bad faith because mere
assertions of bad faith are insufficient for a complainant to establish Policy
¶ 4(a)(iii); see also 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).
As the Panel has concluded, Respondent has shown rights or legitimate
interests in the <icspp.org>
domain name pursuant to Policy ¶ 4(a)(ii), which leads the Panel to also find
that Respondent did not register or use the disputed domain name 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.”).
The Panel further finds that Respondent has
not registered or used the <icspp.org>
domain name in bad faith if it finds that Respondent has not violated any of
the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would
constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v.
Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that
where the respondent has not attempted to sell the domain name for profit, has
not engaged in a pattern of conduct depriving others of the ability to obtain
domain names corresponding to their trademarks, is not a competitor of the
complainant seeking to disrupt the complainant's business, and is not using the
domain name to divert Internet users for commercial gain, lack of bona fide
use on its own is insufficient to establish bad faith); see also Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat.
Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that
respondent registered and used the disputed domain name in bad faith because
mere assertions of bad faith are insufficient for a complainant to establish
The Panel finds that based on Respondent’s
argument that it acted on behalf of Complainant as a former employee when it
registered the <icspp.org>
domain name, Respondent did not register the disputed domain name in bad faith
and that Policy ¶ 4(a)(iii) requires that Complainant establish both
registration and use in bad faith. See YourTurf, Inc. v.
Your Turf, FA 462460 (Nat.
Arb. Forum May 30, 2005) (where it was undisputed that
respondent had acted on behalf of the complainant in registering the disputed
domain name, the panel refused to find bad faith because “To be a violation of
Policy ¶ 4(a)(iii), a respondent must register and use a domain name in bad faith.”)
Complainant has alleged that Respondent
registered and is using the disputed domain name in bad faith because
Respondent is intentionally attempting to attract Internet users to the
disputed domain name for Respondent’s own commercial gain. Complainant argues that the disputed domain
name currently resolves to Respondent’s personal website which may result in Internet
users’ confusion as to Complainant’s sponsorship of or affiliation with
Respondent’s competing website.
Respondent, on the other hand, has shown sufficient evidence that the
registrations of the disputed domain name was not made in bad faith. Respondent
has also shown that its own website has ten times more average traffic than the
disputed domain name, for which the Panel finds that the disputed domain name
is not being used in bad faith.
Further, the Panel finds that Complainant was
aware at all times of Respondent’s ownership and control of the disputed domain
name and never, until recently, has opposed such situation. Complainant’s
assertions that it did not seek to obtain ownership of the disputed domain name
prior to this complaint because it thought that it already owned the domain
name are groundless. The Panel finds that Complainant’s lack of action against
any supposedly abusive behavior of Respondent demonstrates that Complainant did
not oppose such behavior and that Respondent was not acting in bad faith when
it registered and used the disputed domain name.
The Panel finds that Complainant has failed
to meet the third element of the Policy.
As outlined
above, Complainant fails to meet the criteria to prevail in this
proceeding. The Panel stresses that this
in no way reflects on the merits of future proceedings, if any, between the
parties, involving additional evidence, different claims and other factors of
proof.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <icspp.org> domain name REMAIN with Respondent.
Luiz Edgard
Dated: September 2, 2010
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