Association of Texas Professional Educators,
Inc. v. Salvia Corporation
Claim Number: FA0604000685104
PARTIES
Complainant is Association of Texas Professional Educators, Inc. (“Complainant”), represented by W. Reid Wittliff, of Graves, Dougherty, Hearon & Moody, P.C., 401 Congress Ave., Suite 2200, Austin, TX 78701. Respondent is Salvia Corporation (“Respondent”), represented by Anatoly Ostrovsky, P.O. Box 96, Riga, Latvia, LV 1050.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atpe.com>,
registered with Dstr Acquisition Vii,
LLC.
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.
Clive Elliott as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 20, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 26, 2006.
On April 27, 2006, Dstr Acquisition Vii, LLC confirmed by e-mail to the
National Arbitration Forum that the <atpe.com>
domain name is registered with Dstr Acquisition Vii, LLC and that the
Respondent is the current registrant of the name. Dstr Acquisition Vii, LLC has verified that Respondent is bound
by the Dstr Acquisition Vii, LLC 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 May 2, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 22, 2006 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@atpe.com by e-mail.
A timely Response was received and determined to be complete on May 11,
2006.
A timely Additional Submission was received from Complainant on May 16,
2006 and determined to be complete according to Supplemental Rule #7.
On 17 May 2006, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Clive Elliott as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, the
Association of Texas Professional Educators, Inc. (“ATPE”), is a Texas
non-profit corporation based in Austin, Texas.
ATPE has operated for about twenty-five years and is the largest
independent association of public school educators in the United States. It serves over 105,000 public school
teachers in Texas and provides resources and services, including: teaching and
professional development tools, insurance services, and advocacy and legal
services.
Complainant asserts that it has used the “ATPE” trademark for approximately twenty-five years and has sought trademark protection of its “ATPE” mark before the United States Patent & Trademark Office (“USPTO”). This application is pending.
Complainant asserts that it has operated an interactive website at <atpe.org> for approximately ten years, allowing internet users to apply for ATPE membership or renew their memberships on this website. It also provides information about its organization and the services it offers on this website.
Complainant says that it is commonly known by individuals, other organizations and groups as “ATPE”.
Complainant asserts that Respondent has operated a website under the
<atpe.com> domain name that is confusingly similar to ATPE’s site
and intentionally designed to divert Internet users from Complainant’s site to
Respondent’s site. It says that prior
to receiving a cease and desist letter, Respondent used the <atpe.com>
domain name to resolve to a website entitled: “Association of Texas
Professional Educators.”
It goes on to say that after receiving the cease and desist letter,
Respondent modified its website by deleting the specific reference to
“Association of Texas Professional Educators” and by removing some of the links
from the site but that it continued to use the <atpe.com> domain name
to generate revenue by resolving the site to a revenue generating Internet
portal that paid Respondent based on “click throughs”.
Complainant submits that Respondent has no rights or legitimate interests in the <atpe.com> domain name and that there is no evidence that Respondent has ever been known or used the “ATPE” name other than to use the name to mimic Complainant’s website or to redirect visitors to a generic revenue-generating Internet portal.
Complainant points out that Respondent previously registered <vuiton.com> when it had no rights to the name. See Louis Vuitton Malletier S.A. v. Salvia Corporation, FA-600968 (Nat. Arb. Forum Jan. 5, 2006) (finding respondent Salvia Corporation had no rights or legitimate interests in <vuiton.com>).
Accordingly, it submits that Respondent must have known about Complainant’s mark when it registered the subject domain name and that Respondent intended to profit from the confusion it created by registering the <atpe.com> domain name.
B. Respondent
Respondent in turn asserts that Complainant has not established exclusive rights in the ATPE trademark. Firstly, it points out that Complainant has only recently filed an application for the ATPE trademark. Secondly, it states that at least two other entities are using the same name and that Complainant is unable to lay unique and exclusive rights to the contested domain name.
It contends that although Latvia
recognizes common law trademarks, to establish its common law trademark rights
in Latvia, Complainant must file its Complaint through a relevant judiciary
institution in Latvia, such as Arbitration at the Latvian Chamber of
Commerce.
It submits that Respondent’s registered <atpe.com> domain name cannot be deemed confusingly similar to Complainant’s trademarks due to the lack of Complainant’s exclusive rights in all domain names containing the letters in the abbreviation ‘ATPE’. It also notes that Complainant bears the burden of proof that Internet users interpret ‘ATPE’ as an abbreviation of ‘Association of Texas Professional Educators.’
It submits that Respondent has not registered the contested domain name in bad faith because Respondent could not have been reasonably aware of Complainant’s trademark rights at the time of domain name registration on January 7, 2000, since Complainant does not offer its goods and services in Latvia. It asserts that Complainant offers no evidence that its ATPE trademark is associated with Complainant in areas outside and beyond its market in United States, especially in Latvia.
It asserts that it currently rents the contested domain name to a third party Domain Sponsor, which uses an algorithm similar to popular search engines of Yahoo and Google to put up content that potential visitors may find interesting, relevant, or useful. The process is automatic and cannot account for all possible trademark infringements and dilutions.
Finally, it points out that Respondent has never contacted Complainant and has never offered
the contested domain name for sale to Complainant or to a competitor of
Complainant.
Complainant’s Additional
Submissions
Complainant reaffirms its submission that it was the first commercial
user of the ATPE mark, using the ATPE mark in commerce to offer services to
professional educators since April 1, 1980.
As to the separate jurisdictions argument, it relies on University of Houston System v. Salvia
Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), where Respondent argued
that the University of Houston System had not established trademark rights in
the call letters for its listener-supported public radio station, KUHF, because
it had not established trademark rights in “Internet commerce.” It submits that the Panel rejected
Respondent’s claim noting:
It is not necessary for Complainant
to establish trademark rights in every jurisdiction in the world, nor to file
for every imaginable domain name which could be used to find its radio
stations. To establish common law
trademark rights, one must establish commercial use and give sufficient
evidence that the mark function to identify the source of the goods or
services, which Complainant has done … It would be impossible for any
Complainant to establish commercial use across every corner of the Internet …
It submits that contrary to Respondent’s assertion, simply filing an
“intent to use” trademark application, as Respondent has done in the USA, does
not provide Respondent any legitimate interests in the ATPE mark.
It submits that Respondent has never been known by the letters ATPE and
has never used the ATPE mark to conduct any legitimate business.
It repeats that other National Arbitration Forum panels have found
Respondent does not have any rights or legitimate interests in other domain
names in circumstances similar to those here.
In particular it relies on the assertion that Respondent not only used
Complainant’s precise name on this website, it specifically designed the
website to mimic Complainant’s legitimate website at <atpe.org>.
Finally, it says that Respondent’s history of cybersquatting is further
evidence of its bad faith.
Respondent’s Additional
Submissions
Respondent asserts that Complainant offers no new evidence to support
its trademark claim of alleged reputation and actual distinctiveness and offers
no evidence in the form of business sales figures, revenues, advertising
expenditures, number of consumers served, and strong customer association.
It also notes that Complainant offers no evidence of Internet user
confusion (e.g. customer complaints) with regard to the links placed on the
website. It repeats its submission that
since Complainant has never offered its goods and services in Latvia that it
cannot claim bad faith domain name registration against its trademark rights among
equal entities with similar trademark rights.
FINDINGS
Having considered the Complaint, the Panel
finds that:
(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.
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.
Complainant asserts that it has continuously and extensively used the
ATPE mark for over twenty-five years in association with its non-profit
educational association in the state of Texas.
Complainant claims that it is the largest independent association of public
school educators in the United States and provides over 105,000 public school
teachers with a vast array of goods and services, including teaching tools,
insurance services and legal aid.
Complainant also alleges that it has filed a trademark registration
application for the ATPE mark with the USPTO (Serial No. 78/832,228 filed March
8, 2006). Complainant also claims to
have operated an interactive website at the <atpe.org> domain name for
over ten years.
The Panel finds that Complainant’s ATPE mark has acquired secondary meaning in connection with its educational products and services and thus Complainant has established common law rights in the ATPE mark sufficient to satisfy Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
The main thrust of Respondent’s argument is
essentially that Complainant has no protectable rights or interests in Latvia. Complainant is required to show that the name ATPE has
become a distinctive identifier associated with Complainant or its goods and
services. Relevant evidence of such
“secondary meaning” includes the nature and extent of the use of the
mark/name. The fact that the secondary
meaning may only exist in one country (USA) does, in and of itself not limit
Complainant’s rights in a common law trademark in another country (Latvia). The
Panel thus finds that even though Complainant does not do business in Latvia,
it has acquired common law rights in the ATPE mark sufficient to satisfy Policy
¶ 4(a)(i). See Australian Trade
Comm’n v. Reader, D2002-0786 (WIPO Nov. 12, 2002) (“[e]ven if secondary
meaning had been acquired only in a limited geographical area, Complainant
would nevertheless have established sufficient common law trademark rights
within the meaning of Paragraph 1(a)(i) of the Policy.”); see also UEFA v.
Fuzi Furniture, D2000-0710 (WIPO Oct. 22, 2000) (holding that a complainant
does not have to establish exclusive rights across all territorial boundaries,
just a bona fide basis for making the complaint).
The registration of a mark with a governmental trademark authority such as the United States Patent and Trademark Office (“USPTO”) is not required under the Policy. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).
On this basis it is found that the ground is made out.
Rights or Legitimate Interests
Respondent relies
on the fact that the burden of proof lies on Complainant. While the overall burden of proof rests with
Complainant, panels have recognized that this could result in the difficult
task of proving a negative, requiring information that is often primarily
within the knowledge of a respondent.
Therefore, Complainant is required to make out an initial prima facie
case that Respondent lacks rights or legitimate interests. Once it does so,
Respondent carries the burden of demonstrating rights or legitimate interests
in the domain name. See Do The
Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Complainant maintains that
Respondent is not commonly known by the <atpe.com> domain name,
because the WHOIS information lists “Salvia Corporation” as the registrant of
the domain name, and there is no other evidence in the record to suggest that
Respondent is commonly known by the <atpe.com> domain name. The Panel concludes that Respondent does not
have any rights or legitimate interests in the domain names pursuant to Policy
¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that
without demonstrable evidence to support the assertion that a respondent is
commonly known by a domain name, the assertion must be rejected).
Complainant also argues that prior to the filing of this Complaint, Respondent was using the disputed domain name to operate a website virtually identical to Complainant’s website at the <atpe.org> domain name. Complainant asserts that Respondent’s website at the <atpe.com> domain name displayed Complainant’s ATPE mark and had links very similar to the links and text on Complainant’s website. Complainant claims that after it filed this Complaint, Respondent changed its use of the <atpe.com> domain name to an Internet portal website displaying links to various third-party websites. The Panel finds that Respondent is diverting Internet users seeking Complainant’s products and services under the ATPE mark to its own website for commercial gain by presumably earning click-through fees for each consumer it diverts to other websites.
The Panel is of the view that under
the present circumstances that such conduct does not constitute a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Coryn
Group, Inc. v. Media Insight, FA 198959
(Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
Accordingly, for these reasons the ground is
established.
Complainant claims that Respondent is diverting Internet users seeking Complainant’s educational goods and services to its own website at the disputed domain name for commercial gain, because Respondent’s website displays Complainant’s ATPE mark and at one time displayed content virtually identical to Complainant’s own website at the <atpe.org> domain name. Complainant also alleges that the <atpe.com> domain name now resolves to a web directory featuring links to various third-party websites unrelated to Complainant.
The Panel considers that
Respondent’s past and present uses of the <atpe.com> domain name
provide evidence of bad faith registration and use under Policy ¶
4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
Furthermore, Complainant asserts that prior to its filing of the Complaint, Respondent was operating a website at the <atpe.com> domain name virtually identical to its own website at the <atpe.org> domain name. The Panel finds that Respondent has registered and used the disputed domain name for the primary purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.
In
doing so, the Panel rejects the explanations given by Respondent for its
registration and use of the disputed domain name. Nor does it accept the submissions made by Respondent.
Accordingly,
the ground is made out.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <atpe.com>
domain name be TRANSFERRED from Respondent to Complainant.
Clive Elliott, Panelist
Dated: May 31, 2006
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