American Diabetes Association v. jg a/k/a
Josh Green
Claim
Number: FA0502000431012
Complainant is American Diabetes Association (“Complainant”),
represented by Salvatore Guerriero of Caesar, Rivise, Bernstein, Cohen & Pokotilow, Ltd., 1635 Market Street, Seven Penn
Center - 11th Floor, Philadelphia, PA, 19103.
Respondent is jg a/k/a Josh Green (“Respondent”), 345 West 59 Street, New York, NY 10019.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwdiabetes.org>, registered with Enom
Inc.
The
undersigned certifies that she acted independently and impartially and that to
the best of her knowledge she has no known conflict in serving as Panelist in
this proceeding. Hon. Carolyn Marks Johnson
sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
25, 2005; the National Arbitration Forum received a hard copy of the Complaint February
28, 2005.
On
February 25, 2005, Enom Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <wwwdiabetes.org> is registered with Enom
Inc. and that Respondent is the current registrant of the name. Enom Inc.
verified that Respondent is bound by the Enom Inc. registration agreement and
thereby has 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 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 22, 2005, 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@wwwdiabetes.org by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 6, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <wwwdiabetes.org>, is confusingly similar to
Complainant’s DIABETES.ORG mark.
2. Respondent has no rights to or legitimate
interests in the <wwwdiabetes.org> domain name.
3. Respondent registered and used the <wwwdiabetes.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Since 1940,
Complainant has provided diabetes education, awareness, fundraising, research,
advocacy information and services to the public and health care professionals
as a non-profit health organization.
Since 1995,
Complainant has provided the aforementioned services at a website located at
the <diabetes.org> domain name.
More than 500,000 Internet users visit the website per month and the
website received 3.5 million page views per month in 2004.
Complainant has
used the term, DIABETES.ORG, in its promotional and printed materials, which
have been distributed throughout the United States. Complainant has provided printouts of such material in
Complainant’s Exhibit A. The first
printout is a column advertisement for Complainant’s free e-newsletter. At the top of the advertisement is
Complainant’s AMERICAN DIABETES ASSOCIATION design mark, evidenced by the ®
symbol. At the bottom of the
advertisement is the URL “www.diabetes.org”, which is in bold black letters.
A second
printout is a full-page advertisement that contains the following phrase in
large letters at the top of the page, “The #1 diabetes resource on the Web just
got better.” Directly under that
heading, in slightly smaller lettering and in orange font, is the phrase
“Introducing your new diabetes.org.” In
even smaller lettering, at the bottom of the advertisement, is the following
language, “The American Diabetes Association launched a new Web site to better
serve you. Designed with your needs in
mind, the new site is organized so that reaching your favorite areas is simpler
than ever…”
In another
full-page advertisement, there are two columns separated by a dividing
line. At the top of the first column is
an orange colored box that contains the phone number, “1-800-DIABETES,” in dark
lettering at the top of the box.
Directly underneath the phone number is white lettering that states,
“Your personal connection to successful diabetes management.” At the top of the second column is an orange
colored box that contains the domain name, “diabetes.org,” in dark lettering at
the top of the box. Directly underneath
the domain name is white lettering that states, “Your gateway to trusted
information and resources from the diabetes experts.”
In promoting its
services under the DIABETES.ORG term, Complainant’s advertising and operating
expenses exceeded $1.1 million (USD) in 2004.
Respondent
registered the <wwwdiabetes.org> domain name September 1,
2003. As of February 12, 2005,
Respondent resolved the domain name to a website that contained links to
third-party websites relating to such things as drugs, diet pills, real estate,
mortgages and casino gambling. In
addition to these links, the resolved website contained a total of three links
entitled: “American Diabetes Association,” “American diabetes association,” and
one of the links entitled, “American Diabetes Association” was listed in the
“Popular Links” category and resolves to a website located at
<freeglucosemeter.com>, which is a diabetic supply company.
As of February
25, 2005, the disputed domain name resolved to a website located at the
<prescriptions.org> domain name, which purports to provide online
prescriptions for various drugs. The
website claims to be “Your Source for Low Cost Prescription Drugs.” The website contained a variety of drugs
being sold for prices ranging from $141. to $192.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
The threshold
requirement pursuant to Policy Paragraph 4(a)(i) is for a complainant to
establish a trademark or service mark in which it has rights. See TotalFinaElf E&P USA, Inc. v.
Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002) (finding that, in order
to bring a claim under the Policy, Complainant must first establish a prima
facie case. Complainant’s initial burden is to provide proof of “valid,
subsisting rights in a mark that is similar or identical to the domain name in
question”).
Trademarks and
service marks have been generally defined as words, names, symbols, or devices
that are used in commerce to identify the source of goods or services and to
distinguish them from the goods or services sold or made by others. See 15 U.S.C. § 1127.
The registration
of a trademark with government authorities provides certain additional
advantages that unregistered trademarks do not receive (e.g. Under U.S.
trademark law, registration of a mark is prima facie evidence of its
validity and provides nationwide constructive notice, inter alia). Nonetheless, like U.S. trademark law,
trademark rights exist independently of government registration of a mark under
the Policy. See McCarthy on
Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
Complaint under the Policy); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that Complainant's trademark or
service mark be registered by a government authority or agency for such rights
to exist).
In the instant case, Complainant
claims rights in the mark, DIABETES.ORG.
Complainant has not asserted, nor has it provided evidence, that it has
registered the mark with any governmental trademark authority. Therefore, the Panel is unable to rely upon
a presumption of validity of the mark and must analyze whether trademark rights
exist.
In
analyzing whether Complainant has rights in the DIABETES.ORG mark, the Panel
must determine whether the mark is distinctive, in relation to the goods or services that the mark is used
in connection with. See U.S. Search,
LLC v. U.S. Search.com, Inc., 300 F.3d 517, 524, 63 U.S.P.Q.2d 2013 (4th Cir.
2002) (“[T]he distinctiveness of a mark is measured in connection with the
particular goods or services that are being offered. The distinctiveness of
a mark cannot be determined in the abstract, but only by reference to the goods
or services upon which the mark is used.”).
Distinctiveness
of a mark may arise if the mark is inherently distinctive (i.e. suggestive,
fanciful or arbitrary marks), or in the case of descriptive marks, if the mark
has acquired secondary meaning. Generic
terms are not protected as trademarks.
See Restatement (Third) of Unfair Competition § 13, pp. 37-38,
and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (An identifying mark is
distinctive and capable of being protected if it either (1) is
inherently distinctive or (2) has acquired distinctiveness through
secondary meaning.); see also Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763,
769 (1992), citing Restatement (Third) of Unfair Competition §
13, pp. 37-38, and Comment a (Tent. Draft No. 2, Mar. 23, 1990) (“The general rule regarding
distinctiveness is clear: An identifying mark is distinctive and capable of
being protected if it either (1) is inherently distinctive or (2)
has acquired distinctiveness through secondary meaning.”); see also Park 'N Fly v.
Dollar Park & Fly, 469 U.S. 189, 194 (1985) (“Generic terms are
not registrable...”).
Generic terms
have been defined as those terms that “refer to the genus of which the
particular product is a species.” Park 'N Fly v.
Dollar Park & Fly, 469 U.S. at 194. In the instant case, Complainant claims rights in the common term
“diabetes.” Even when an alleged
trademark holder claims trademark rights in domain name designations, such as
DIABETES.ORG, the generic top-level domain “.org” still maintains no source
identifying function. Therefore, the
Panel examines only the word “diabetes.”
See U.S. Patent and Trademark
Office Examination Guide No.
2-99, “Marks Composed, in Whole or in Part, of Domain Names,” Section I (Sept.
29,1999) (“When a
trademark, service mark, collective mark or certification mark is composed, in
whole or in part, of a domain name, neither the beginning of the URL
(http://www.) nor the TLD have any source indicating significance. Instead,
those designations are merely devices that every Internet site provider must
use as part of its address.”).
Complainant is
asserting rights in a mark that is composed of a domain name. The interaction between domain names and
trademarks has lent itself to much pontification within academic circles. One primary difference between domain names
and trademarks is that only one entity is able to use a single domain name;
whereas many different entities are capable of using the same trademark, albeit
for different goods or services. This
becomes even more important when referring to generic terms. See Susan Thomas Johnson, Internet Domain
Name and Trademark Disputes: Shifting Paradigms in Intellectual Property, 43 Ariz. L. Rev. 465, 470 (Summer 2001) (“The
uniqueness requirement of domain names creates an exclusivity that has important
economic ramifications, since only one entity can use a specific domain
name. This contrasts with trademarks,
where more than one entity can have the same trademark, depending on
circumstances, such as geographic location.”).
The term
“diabetes” is simply the common name of a well-known disease. Complainant is using the term “diabetes” in
connection with information and services relating to that disease. Therefore, the Panel concludes the term
“diabetes” is generic. As a result,
Complainant cannot establish rights in the DIABETES mark. See U.S.
Patent and Trademark Office Examination Guide No. 2-99, “Marks Composed, in Whole or in Part, of Domain Names,”
Section I (Sept. 29,1999) (“Marks
comprised of generic terms combined with TLDs are not eligible for registration
on the Supplemental Register, or on the Principal Register under Trademark Act
§2(f), 15 U.S.C. §1052(f).”); see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24,
2000) (“[G]enericness, if established, will defeat a claim of trademark
rights…”); see also Successful
Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb.
Forum Mar. 7, 2001) (finding that “seminar” and “success” are generic terms to
which Complainant cannot maintain exclusive rights).
Complainant
failed to establish Policy ¶ 4(a)(i).
Therefore it is unnecessary for the Panel to analyze Policy ¶¶ 4(a)(ii)
and (iii). See Creative Curb v.
Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
Having failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 20, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum