National Arbitration Forum

 

DECISION

 

Advanced Drivers Education Products and Training, Inc v. MDNH, Inc. (Marchex)

Claim Number: FA0509000567039

 

 

PARTIES

Complainant is Advanced Drivers Education Products and Training, Inc. (“Complainant”) represented by Michelle L. Samonek, of McDonough Holland & Allen PC, 555 Capitol Mall, 9th Floor, Sacramento, CA 95814.  Respondent is MDNH, Inc. (“Respondent”), represented by Robert C. Cumbow, of Graham & Dunn, PC, 2801 Alaskan Way, Seattle, WA 98121.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <teensmart.com> (the “Domain Name”) registered with Moniker Online Services, LLC (the “Registrar”).

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

David H. Bernstein, Paul M. DeCicco, and Carolyn Marks Johnson, as Panelists.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 22, 2005; the Forum received a hard copy of the Complaint on September 26, 2005.  On September 28, 2005, the Forum notified Complainant that the Complaint did not properly identify Respondent.  Complainant thereafter submitted an Amended Complaint, which was received by the Forum on September 29, 2005.

 

On September 22, 2005, the Registrar confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with the Registrar and that the Respondent is the current registrant of the Domain Name.  The Registrar has verified that Respondent is bound by the Registrar 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 September 29, 2005, the National Arbitration Forum issued a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”) setting a deadline of October 19, 2005 by which Respondent could file a Response to the Complaint.  The Commencement Notification 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@teensmart.com by e-mail.

 

A timely Response was received and determined to be complete on October 19, 2005.

 

On October 24, 2005 an additional submission was timely received from Complainant, and on October 28, 2005 an additional submission was timely received from Respondent.  Because these supplemental submissions merely reargued points already made in the initial pleadings, and because they did not raise any new issues of fact or law that could not have been anticipated in the initial findings, the Panel has decided to disregard these additional submissions.  See Tan Factory v. DefaultData, FA 327674 (Nat. Arb. Forum Nov. 3, 2004).

 

On October 27, 2005, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David H. Bernstein, Paul M. DeCicco, and Carolyn Marks Johnson as Panelists.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

Complainant

 

Complainant asserts that it is the owner of the TEEN SMART trademark, used in connection with “(i) interactive CD-roms featuring automobile driving instruction and driving safety and education information and (ii) education services in the field of automobile driving instruction, workshops and seminars featuring driving safety.”  Complainant states that it registered the word mark on July 26, 2001, sold driving instruction products and services nationwide since 1999, and spent approximately $300,000 per year over the last five years marketing its products.  Complainant states that two automobile insurance companies provide insurance discounts to teenage drivers who have completed Teen Smart’s driver’s education coursework.  Complainant asserts that its TEEN SMART mark has achieved a “high degree of consumer recognition.” 

 

Complainant asserts that the Domain Name, <teensmart.com>, is identical to its TEEN SMART trademark.

 

Complainant argues that Respondent has no rights or legitimate interests in the Domain Name.  Complainant asserts that Respondent is not commonly known by the Domain Name, and is not making a legitimate noncommercial or fair use of the Domain Name, but rather is using Complainant’s mark to divert customers to its website for commercial gain.  

 

Complainant contends that Respondent is acting in bad faith because it is using Complainant’s mark to attract users to its website for commercial gain, and is therefore creating a likelihood of confusion with Complainant’s mark.  Furthermore, Complainant alleges that Respondent acquired constructive knowledge of Complainant’s mark when Complainant registered the mark and, accordingly, Respondent has necessarily acted in bad faith by registering the domain name.

 

Respondent

 

Respondent argues that its Domain Name should properly be read as “Teen’s Mart” rather than as “teen smart,” and that it is only the inability to use punctuation in a domain name that creates the apparent similarity.  Respondent also asserts that Complainant is not the exclusive user or owner of the TEEN SMART trademark, and notes that other entities presently use the words “teen smart” for various teen-related programs and services.

 

Respondent argues that it has legitimate rights in the Domain Name because the name is composed of two generic descriptive words and the website consists of a portal site that compiles links to teen-oriented websites – in other words, Respondent asserts that its website is a “mart” for teens and the mark “Teens Mart” or “teensmart” is not used in a trademark sense in its domain name, but rather as a descriptor.

 

Finally, Respondent argues that it neither registered nor is using the Domain Name in bad faith.  Respondent claims that it had no knowledge of Complainant’s TEEN SMART mark when it registered the Domain Name, and also notes that it has not offered the Domain Name for sale.  Respondent asserts that it registered the Domain Name in good faith to serve as an on-line market, or “mart,” providing links to websites of interest to teens, and that it has not intentionally attempted to attract to its site Internet users who are searching for Complainant’s mark. 

 

FINDINGS

The Panel finds that, although Complainant has shown that the Domain Name is identical to a mark in which it has rights, Complainant has failed to establish that Respondent lacks a legitimate interest and registered the Domain Name in bad faith.  Accordingly, the Panel denies the request to transfer the Domain Name to Complainant.

 

DISCUSSION

To prevail in this UDRP proceeding, Complainant must prove all of the following elements listed in Paragraph 4(a) of the Policy:

 

(1)   the Domain Name 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 Respondent registered and has used the Domain Name in bad faith.

 

Identical or Confusingly Similar to Trademark

 

Respondent argues that, because it intends the Domain Name to be read as “Teen’s Mart” rather than “Teen Smart,” the Domain Name is neither identical nor confusingly similar to Complainant’s mark.  Respondent also argues that the name is not confusingly similar because third parties have used versions of the TEEN SMART mark in connection with goods and services other than those distributed by Complainant.  These contentions are frivolous.

 

As Respondent notes, the domain name system does not permit registration of certain punctuation marks.  Thus, when comparing a domain name to a trademark, it is appropriate to disregard spaces, punctuation, capitalization, and other elements that cannot be used in a domain name.  Similarly, it is well accepted that the gTLD (here, “.com”) also should be disregarded.

 

When these elements are disregarded, it is beyond dispute that the stripped-down domain name – “teensmart” – is identical to the stripped-down trademark, “teensmart.”  Whether Respondent intends the space to be before or after the letter “s,” and whether or not it intends the use of an apostrophe is irrelevant. 

 

Equally irrelevant for purposes of determining whether the marks are identical is Respondent’s evidence that third parties are making some use of the term “Teen Smart.”  Complainant has submitted evidence of a federal trademark registration, which is prima facie evidence of the validity and existence of trademark rights.  That third parties may also be using the mark does not, on its own, vitiate Complainant’s trademark rights for the purpose of moving forward with this UDRP Complaint.  Accordingly, absent compelling evidence that the registration should be cancelled, the Panel should defer to the determination of the U.S. Patent and Trademark Office. 

 

Complainant has thus prevailed under the first factor of showing that it owns trademark rights in the TEEN SMART mark and that the Domain Name is identical to its trademark.

 

Rights or Legitimate Interest

 

Respondent’s website provides links to other sites that may be of interest to teenagers.  Although the site is hardly sophisticated and the links are hardly the most pertinent, the Policy does not require that a respondent’s use be either sophisticated or the most pertinent available.  Rather, the inquiry under the second factor is whether Complainant can prove that Respondent lacks any rights or legitimate interest in the Domain Name. 

 

The concept of hosting a web site with paid links to relevant sites can be a legitimate interest, and the teen-oriented nature of at least the majority of the links on the site supports Respondent’s assertion that its site is a “mart” for teen users.  It is irrelevant that the site consists largely of paid advertising rather than original content.  Further, it is not clear that the Domain Name is being used in the trademark sense.  Rather the Domain Name can be reasonably seen as a descriptor of the site’s intended content or theme.  Absent indicia of trademark infringement or dilution, the Respondent does have a legitimate interest in using a domain name consisting of terms descriptive of the site, even if the second level domain name string may be disaggregated to read as Complainant’s mark.  Also see U.S. Nutraceuticals, LLC v. Telepathy, Inc., FA 365884 (Nat. Arb. Forum Jan. 17, 2005) (<naturedirect.com>).

 

Because there is some reasonable connection between Respondent’s use and the Domain Name and for the other reasons set out above, Complainant has not succeeded in proving that Respondent lacks any rights or legitimate interests in the Domain Name.  See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (respondent had legitimate interest in <groceryoutlet.com> domain name because site consisted of portal providing links to groceries and similar goods); Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) (respondent had legitimate interest in <landmarks.com> domain name because site contained paid links to “landmark”-related websites.). 

 

Bad Faith

 

As evidence of Respondent’s alleged bad faith registration and use of the Domain Name, Complainant first argues that “Respondent’s use of Complainant’s mark in the domain name creates an initial likelihood of confusion as to whether Complainant endorsed or somehow sponsored Respondent’s website or the links provided on the website.” 

 

Section 4(b)(iv) of the Policy provides that an “intentional[] attempt[] to attract, for commercial gain, Internet users to [the respondent’s] website … by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site … or of a product or service on [respondent’s] web site” shall be evidence of bad faith.  For such bad faith to exist, it is axiomatic that the Respondent must have been aware of the Complainant’s mark (or at least Complainant’s intent to adopt the mark) at the time Respondent registered the Domain Name.

 

Such evidence is lacking in this case.  There is no indication that Respondent knew of Complainant’s rights in the TEEN SMART trademark and intentionally registered the Domain Name to attract to its website, for commercial gain, Internet users who are searching for the Complainant’s trademark.  To the contrary, Respondent has certified in its Response that it had never heard of Complainant or its mark at the time it registered the Domain Name, and, in fact, that it had no knowledge of Complainant or its TEEN SMART mark until it received notification of this UDRP dispute.  If Respondent never heard of Complainant or its mark, then its registration of the Domain Name could not possibly have been part of a bad faith scheme to confuse Internet users into believing the Respondent’s site was, or was affiliated with, Complainant.  See Twindent AB v. twinkles.com, FA 391308 (Nat. Arb. Forum Feb. 11, 2005) (absent evidence that respondent was aware of existence of complainant’s mark when respondent registered domain name, “it is impossible for respondent to have registered the disputed domain in bad faith”); Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004); see also Kazi v. Domain Deluxe, FA 488845 (Nat. Arb. Forum July 18, 2005) (denying request to transfer domain name in part because “complainant failed to meet its burden in proving bad faith registration and use because complainant failed to point to particular facts and circumstances supporting its allegations”). 

 

Complainant attempts to avoid this conclusion by arguing that actual knowledge by Respondent is not required.  Rather, Complainant argues, by registering the TEEN SMART mark, it placed Respondent on constructive notice of the existence of the mark, and therefore Respondent’s registration of the Domain Name containing Complainant’s mark is necessarily evidence of bad faith. 

 

The Panel acknowledges that the concept of constructive notice is sometimes used in United States trademark law.[1]  The Policy, though, is designed to prohibit cases of abusive cybersquatting, and has as its centerpiece a requirement that Respondent be found to have acted in bad faith.  Indeed, to prevail, the Policy requires the Complainant to prove both bad faith registration and bad faith use.  The Policy makes no mention of constructive notice being enough to satisfy this requirement. 

 

Moreover, if Complainant’s position were adopted, it would essentially establish a per se rule of bad faith any time a domain name is identical or similar to a previously-registered trademark, since constructive notice could be found in every such case.  Such a result would be inconsistent with both the letter and the spirit of the policy, which requires actual bad faith.

 

If Complainant believes that its constructive notice argument is sufficient under U.S. trademark law, it may test that proposition by seeking appropriate relief in the U.S. courts under the Lanham Act.  Because constructive notice is not enough under the Policy, and because Respondent has certified that it had no knowledge of Complainant or its mark prior to these proceedings, Complainant has failed to sustain its burden of proving that Respondent registered and used the Domain Name in bad faith. 

 

DECISION

Because Complainant has failed to prove that Respondent lacked a legitimate interest and registered and used the Domain Name in bad faith, Complainant’s request to transfer the Domain Name is DENIED.

 

 

 

 

 

David H. Bernstein, Paul M. DeCicco, Carolyn Marks Johnson, Panelists
Dated:  November 10, 2005

 

 

 

 

 

 

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