NCS Pearson, Inc. and Regents of the University of Minnesota v. Take MMPI
Claim Number: FA1711001758486
Complainant is NCS Pearson, Inc. and Regents of the University of Minnesota (“Complainant”), represented by Patrick J. Gallagher of Cozen O'Connor, Minnesota, USA. Respondent is Take MMPI (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <takemmpionline.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2017; the Forum received payment on November 14, 2017.
On Nov 16, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <takemmpionline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2017 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@takemmpionline.com. Also on November 16, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 24, 2017.
A timely Supplemental Statement was received from Complainant and deemed to be complete on November 29, 2017.
On December 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant Regents of the University of Minnesota is the developer and trademark owner for the MMPI mark and various versions thereof. Complainant NCS Pearson, Inc. is the exclusive licensee of Complainant Regents and has exclusive rights to distribute the MMPI test commercially in English-speaking jurisdictions. Complainant has rights in the MMPI mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,486,888, registered May 3, 1988). See Compl. Ex. B. Respondent’s <takemmpionline.com> is confusingly similar to Complainant’s MMPI mark, as the domain name incorporates the mark in its entirety, merely adding the common or generic terms “take” and “online,” as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <takemmpionline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MMPI mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website on which it purports to sell “cheat sheets” for Complainant’s test product and link Internet users to a website where they can take the MMPI test online for free. See Compl. Ex. E. Respondent also uses the domain name and resolving site to tarnish Complainant’s brand. Id. The disclaimer on the resolving website does not overcome the harm caused by Respondent’s use of the mark.
Respondent registered and is using the <takemmpionline.com> domain name in bad faith. Respondent is using Complainant’s mark to divert Internet users from Complainant’s own site in an apparent attempt to disrupt Complainant’s business for commercial gain. Additionally, Respondent clearly had constructive and actual knowledge of Complainant and its rights in the MMPI mark at the time it registered and subsequently used the <takemmpionline.com> domain name.
B. Respondent
Respondent made the following contentions.
Respondent’s <takemmpionline.com> domain name is clear and descriptive term of one of the aspects of the function of the website. Additionally, the domain name is not similar to Complainants’ domain names <https://www.pearsonclinical.com/psychology/products/100000461/minnesota-multiphasic-personality-inventory-2-mmpi-2.html> or <http.mmpi.umn.edu>, as each of the domain names are not easily identified as separate from their respective parent domains. Further, the MMPI trademark has been around since the 1940’s and has no brand identity or recognition to the vast majority of Internet users.
Respondent uses the <takemmpionline.com> domain name to provide the bona fide service and product in a facsimile and updated version of the MMPI test and a cheat sheet to appear to pass the test. This purpose is clearly stated on the website. See Resp. App. B. Respondent offers a genuine and unique product, namely a service to study and practice for the product of Complainant. Complainant refuses to provide its product online and is attempting to stifle the business interests of an alternative which is filling the market need.
The domain name is not being used in bad faith, as Complainant only sells its version of the MMPI test to psychologists who have already paid a registration fee to Complainant to administer the test. Complainant’s customers are registered psychologists who have been trained in the administration of the test, and the sale of a practice version to the common person is not an infringement or attempt to disrupt Complainant’s business. Further, Respondent makes no attempt to cause confusion, as the resolving website clearly indicates the offered exam is only a facsimile designed to allow users to prepare for the real MMPI test.
C. Additional Submissions
Complainant filed a supplemental submission in which it elaborated on its arguments in the Complaint.
Respondent sent two email communications to the FORUM. In its first email, dated November 18, 2017, Respondent requested a template for a Response and added, inter alia,
“But it is true about my domain name. I do use the letters “MMPI” just like the 1000’s of books and psychological studies about the MMPI, and the 10,000’s of blogposts and youtube videos. And my articles about the MMPI and how to beat the test also use the letters MMPI.”
In its second email, dated November 24, 2017, Respondent stated:
“Enclosed is the best I can do as member of the public without the resources to seek and obtain legal submissions.
I have filled in your response template to the best of my ability.
However as this domain name was set to expire on the 16th December 2017 – probably before your decision will be made, I see no point engaging any additional time or expense of my time. Filing this claim so close to the expiration date seems like an expensive waste of time and money for the people they are supposed to represent.
While it would be nice to maintain the domain name for consistency –I have acquired the domain name using the term MPI not MMPI. If I am unsuccessful in my defense I trust this should satisfy the Complainant.”
2. Complainants have established their trademark rights in the MMPI mark by virtue of the registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,486,888, registered May 3, 1988).
3. Respondent registered the disputed domain name on December 16, 2015. The domain name resolves to the website at www.takemmpionline.com.
4. The evidence shows that the domain name is confusingly similar to the MMPI trademark.
5. The evidence shows that Respondent has no rights or legitimate interests in the domain name and that Respondent has registered and used the domain name in bad faith.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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: Multiple Complainants
There are two Complainants in this matter: NCS Pearson, Inc. and Regents of the University of Minnesota. Complainant Regents of the University of Minnesota is the developer and trademark owner for the MMPI mark and various versions thereof. Complainant NCS Pearson, Inc. is the exclusive licensee of Complainant Regents and has exclusive rights to distribute the MMPI test commercially in English-speaking jurisdictions. Both Complainants have a long history of usage and promotion of the MMPI test and mark. See Compl. Ex. D (Printouts of Complainants’ webpages).
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and accordingly it will treat them all as a single entity in this proceeding. Nonetheless, throughout the below memo, the Complainants will be collectively referred to as “Complainant.”
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the MMPI mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,486,888, registered May 3, 1988). See Compl. Ex. B. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the MMPI mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MMPI mark. It is clear that the string of the domain name is meant to convey the notion of a user taking the MMPI test online. That being so, Complainant argues that Respondent’s domain name is confusingly similar to the MMPI mark, as the name incorporates the mark in its entirety, merely adding the common or generic terms “take” and “online,” as well as the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis as an objective bystander would naturally assume that the domain name was an official domain name of Complainant, dealing with its MMPI test and that it was related to a candidate participating in the test online, meaning by means of the internet. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). The Panel therefore finds the <takemmpionline.com> domain name is confusingly similar to the MMPI mark within the meaning of Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under 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 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Clearly, Complainant has established a prima facie case because Respondent has, on the evidence, taken Complainant’s trademark without permission or authority, used it in the domain name and by that means exhorted internet users to take the MMPI test on the internet. Respondent is therefore using the MMPI trademark for a purpose not in the interests of Complainant but solely in the interests of Respondent. In reply, Respondent claims, in effect that its product is simply a “facsimile and updated version of the MMPI test and a cheat sheet to appear pass this test” and its case on this issue elaborates on that proposition. The Panel has given careful consideration to Respondent’s case, but finds that it does not rebut Complainant’s prima facie case. That is so because the domain name incorporates Complainant’s trademark, advocates a means of frustrating the use of Complainant’s product by cheating and for a payment and promotes the sale of Respondent’s own product. Moreover, as will be seen when the issue of bad faith is dealt with in this decision, Respondent’s clear intention has been to disrupt Complainant’s business and its method of administering the MMPI test.
Complainant argues in particular that Respondent has no rights or legitimate interests in the <takemmpionline.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MMPI mark in any way. WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Take MMPI.” Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in said domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <takemmpionline.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <takemmpionline.com> domain name is demonstrated by its failure to use the domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, Complainant contends Respondent uses the domain name to lure consumers looking for Complainant’s genuine goods and services, then divert them to its own related goods and services, for commercial gain. Use of a disputed domain name to attract potential customers and divert them from a complainant’s legitimate website may not be considered a use demonstrating rights or legitimate interests within the meaning of Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant claims Respondent uses the domain name to resolve to a website on which it purports to sell “cheat sheets” for Complainant’s test product and link Internet users to a website where they can take the MMPI test online for free. See Compl. Ex. E.
The Panel has examined this exhibit and concludes that it puts beyond doubt that Respondent is not using the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. That is so for at least two reasons. First, it contains the statement:”Take the… (test)…Online for Free when you purchase the Cheat Sheet for just $3.49.” In other words, Respondent is encouraging internet users to cheat when preparing for or otherwise being involved with the MMPI test. Respondent is therefore trading on Complainant’s trademark by encouraging the public to cheat and is asking for $3.49 to show them how to cheat. Nothing could be further from bona fide than such a suggestion. Secondly, the button on the exhibit contains the words “Practice the MMPI $3.49.” On the website at the present the words are “Get the MMPI $3.49.” It is clear from both sets of words that Respondent is offering its unauthorized services for money, adding to the conclusion that its activities cannot remotely be described as bona fide or legitimate.
Complainant argues this conduct by Respondent amounts to an attempt to confuse and divert its customers for commercial gain. The Panel agrees with this interpretation of the facts and finds Respondent therefore lacks rights and legitimate interest in the domain name per Policy ¶ 4(c)(i) and (iii).
Complainant further submits that while there is a disclaimer on the website resolving from the <takemmpionline.com> domain name, it is not sufficient to mitigate consumer confusion. A disclaimer posted on the website resolving from a disputed domain name may not be sufficient to mitigate confusion. See AltaVista Co. v. AltaVisa, FA 95480 (Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also Coachella Music Festival, LLC v. Beaudoin, Denis / Denis Beaudoin, FA 1724063 (Forum May 9, 2017) (finding respondent’s disclaimer insufficient because “[t]he disclaimer is in small print, although it can be read, and it is in a position at the bottom of each page where it may well be overlooked and in any event it comes after the services offered on each page of the site… [t]he result is that each page starts with Complainant’s unique stylized trademark and ends with a less than prominent or effective disclaimer.”). The website resolving from the disputed domain name has a purported introduction to a disclaimer which reads “You understand that the use of the online test are for Entertainment and Educational purposes only. These products are not designed for or are to be used as an accurate substitute for an MMPI test administered by a registered practitioner.” See Compl. Ex. E (emphasis in the original). Complainant argues that Respondent’s disclaimer is insufficient because it is at the bottom of the home page, below many uses of Complainant’s MMPI mark, and far below the links to Respondent’s “cheat sheet” and the offer for the online version of the test for money. The Panel agrees with this interpretation, but goes further and notes that clicking on the word “Disclaimer” takes the user to what is presumably the entire disclaimer. This is, however, scarcely a disclaimer at all, as it leaves the reader with a confusing picture of just what it is saying and in any event it is internally inconsistent; thus, for instance, having just offered a cheat sheet for sale for $3.49 the alleged disclaimer then warns that the information is not to be used for cheating. The Panel therefore finds the purported disclaimer to be insufficient to weaken the notion that Respondent is trespassing on Complainant’s trademark, encouraging cheating and selling its own product. It does not therefore protect or establish Respondent’s rights and legitimate interests within the meaning of Policy ¶ 4(a)(ii).
It is also clear that Respondent has not used the domain name for a legitimate noncommercial or fair use as Respondent is offering its product for money.
Complainant has therefore made out a strong prima facie case that Respondent has no rights or legitimate interests in the domain name and Respondent has not rebutted that case.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends Respondent uses the <takemmpionline.com> domain name and resolving website to divert users from Complainant’s own site in an apparent attempt to disrupt Complainant’s business for commercial gain. Use of a confusingly similar domain name to disrupt a complainant’s business for commercial gain can be evidence of bad faith per Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 31, 2017 (“Generally, there is no restriction on what constitutes a disrupting of a Complainant’s business, and using a confusingly similar domain name to disrupt a complainant’s business can evince bad faith registration and use under Policy ¶ 4(b)(iii).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Complainant contends that Respondent’s use of the domain name serves to direct Internet users to an online version of Complainant’s MMPI test outside of Complainant’s secured process and without the supervision of a qualified professional, and profits from consumer confusion through its sale of “cheat sheets”. See Compl. Ex. E. The Panel determines that this behavior amounts to an attempt to disrupt Complainant’s business and attract Internet users for commercial gain and thus demonstrates Respondent’s bad faith within the meaning of Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the MMPI mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <takemmpionline.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 6, 2017
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