Mapping Your Future,
Inc. v.
Mapping Your Future Services, LTD.
Claim Number: FA0710001104280
PARTIES
Complainant is Mapping Your Future, Inc. (“Complainant”), represented by Troy
Leonard,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mappingyourfuture.com>, registered
with Vivid
Domains, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 29, 2007; the
National Arbitration Forum received a hard copy of the Complaint on October 31, 2007.
On November 14, 2007, Vivid Domains, Inc. confirmed by e-mail to the
National Arbitration Forum that the <mappingyourfuture.com> domain name
is registered with Vivid Domains, Inc.
and that the Respondent is the current registrant of the name. Vivid Domains,
Inc. has verified that Respondent is bound by the Vivid Domains, Inc. 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 November 20, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 10, 2007 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@mappingyourfuture.com
by e-mail.
A Response was received on December 12, 2007. The Response was deficient under ICANN Rule 5
as it was late.
An Additional Submission was received from the Complainant and a Reply
thereto was received from the Respondent.
Both submissions were considered.
On December 18, 2007, 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
The Respondent’s domain name is identical in appearance and pronunciation to Complainant’s service mark. Complainant’s service mark is registered with the United States Patent & Trademark Office (USPTO), both as a composite mark and as a standard character/word mark.
Furthermore, Respondent’s domain
name is identical to Complainant’s domain name, mappingyourfuture.org. Respondent’s domain name wholly incorporates the registered
mark and does not add anything except the generic top-level domain “.com,”
which panels typically consider irrelevant to a Policy ¶ 4(a)(i) analysis.
Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint. Respondent’s only use of the domain name has been for the illegitimate purpose of confusing consumers by offering services identical to Complainant’s services. Respondent’s competing use of Complainant’s mark 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).
Initially, in March 2006, Respondent used the domain name in question to offer services virtually identical to those offered by Complainant; this use is documented in the form of a screen-print from Respondent’s website take on March 7, 2006. Respondent then, for a brief period of time in February 2007, deleted all content from its website thereby demonstrating no legitimate purpose. Respondent has, most recently, again begun offering services identical to Complainant’s services, which, as stated above, is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Respondent has intentionally attempted
to attract, for commercial gain, Internet users to Respondent’s web site or
other on-line location, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site or location or of a product or service on Respondent’s
web site or location.
B. Respondent
The term “mapping your future” is descriptive. It is composed of the three dictionary words
“mapping”, “your” and “future”.
The descriptive term “mapping your future” is in extensive common use
by numerous third parties involved in education planning, financial planning,
career planning and life goal planning, including many state and governmental
organizations. Numerous books and
articles also use the descriptive term “mapping your future” in their titles.
An advanced Google search for the term “mapping your future,” designed to eliminate
references to Complainant, yielded 48,600 third party uses of this common
descriptive term.
Respondent registered the domain name because it was a descriptive term to which it believed no party could claim exclusive rights. Respondent did not register the Disputed Domain with Complainant’s alleged common law trademark in mind and had no knowledge of Complainant, its web site, its business name or alleged common law trademark when it registered the domain name. Respondent registered the Disputed Domain when it was deleted and expired due to the prior registrant’s failure to renew it. Complainant has not proffered any evidence demonstrating that Respondent had knowledge of its trademark. Respondent uses the Disputed Domain to display sponsored search results provided by DomainSponsor.com. Respondent receives a share of the revenue earned by SmartName.com from the pay-per-click ads.
Under the Policy, a Complainant must have trademark rights that predate
the registration date of a disputed domain.
It is undisputed that Complainant’s
Complainant has not established that it had common law trademark rights
to the term “mapping your future” in existence at the time Respondent
registered the Disputed Domain. “mapping
your future” is a common descriptive term used by many in the education and
career planning industry to describe services and activities related to
planning a person’s activities and goals in their education, their career and
in their life.
There are policy reasons for finding Respondent has a legitimate
interest in using a descriptive term domain name. As the panel explained in EAuto, LLC v. EAuto Parts, D2000-0096 (WIPO
April 9, 2000), it is inappropriate as a
matter of public policy to give complainants monopolies on descriptive terms.
Respondent had absolutely no knowledge of Complainant’s alleged mark
when it registered the Disputed Domain.
Respondent simply registered the domain name because it incorporated an
undeniably descriptive term. The domain
name became available for registration when the prior registrant of the domain
name failed to renew it. As a result the
domain name expired, was deleted, and became available for anyone to register. This is a signal that any trademark claim to the domain name was abandoned
and that the domain name could be registered in good faith.
As for Complainant’s common law mark, there is no evidence that
Respondent had any knowledge of this mark when it registered the domain
name. The evidence is that Respondent
had no knowledge of this common law mark when it registered the Disputed
Domain, and that its sole basis for registering it was that it incorporated the
descriptive term “mapping your future.” Absent evidence of Respondent’s
knowledge of Complainant’s alleged mark, bad faith cannot be proven.
C. Complainant’s Additional Submission
Respondent claims that Expert Computers Inc. supports its position. That case concerns inapposite facts. In Expert Computers, Inc. v. Name Delegation c/o Domain Administrator, the registrant registered its domain name in 2001, three years prior to the Complainant’s registration, and, more importantly one year prior to the Complainant’s first use of its mark in commerce. FA 787937 (NAF Oct. 24, 2006). The Complainant had no trademark rights prior to the Respondent’s registration.
Here, it is undisputed that
Complainant first used its mark in commerce in 1996. It should be further noted that Complainant
received its own domain <mapping-your-future.org> on August 20, 1996. In the
Respondent’s efforts to avoid these fundamental principles of trademark law revolve around its contention that Complainant’s mark is “descriptive.” Complainant’s mark is not descriptive.
Complainant has twice registered its mark without being required to demonstrate acquired distinctiveness. This belies any argument that “Mapping Your Future” is a descriptive term.
A close examination of Respondent’s claimed “rights” and “legitimate interests” reveals that Respondent bases its right to trade upon Complainant’s mark on the alleged descriptive nature of the mark. Respondent has failed to allege any other right or interest. In light of the fact that Complainant’s mark is clearly at least suggestive of its services, as opposed to descriptive, these arguments fail.
The most glaring omission from Respondent’s materials is any discussion
of Complainant’s cease and desist letter, and how the timing of its response to
that letter belies any claim of legitimate interest, but instead demonstrates
bad faith. After Respondent began
offering services identical to those offered by the Complainant in 2006, the
Complainant sent a cease and desist letter dated March 14, 2006. After receipt of this letter, all content was
deleted from the site, but the registration remained active. Respondent does not dispute that this in and
of itself constitutes bad faith.
D. Respondent’s Additional
Submission
Complainant does not refute that Respondent registered the disputed domain name prior to the Complainant’s trademark registration and even prior to the Complainant’s trademark application. Respondent did not know of Complainant prior to its registration of the Disputed Domain, nor is there any reason Respondent should have known of Complainant at that time.
The term “mapping your future” is clearly descriptive of Complainant’s services as stated on Complainant’s website: “financial strategies, career options and college planning.” These same services are offered on thousands of other web pages that belong to third parties unrelated to Complainant, including the US Government, the North Dakota Department of Public Instruction, and the Delaware Department of Education.
Respondent’s website contains links to other websites offering services that relate to the descriptive meaning of the domain name including: “Online education,” “Tutoring,” “Financial planning,” “Business studies,” “College Student Loan,” and “Education software.” These links provide access to products and services related to the descriptive meaning of the term. The links are in the nature of sponsored ads, and the Respondent receives revenue from pay-per-click advertising from SmartName.
Respondent had absolutely no knowledge of Complainant’s alleged mark
when it registered the Disputed Domain and had no
basis to have heard of Complainant. Respondent registered the domain
name when it became available for registration, when the prior registrant of
the domain name failed to renew it. As a
result the domain name expired, was deleted, and became available for anyone to
register.
Although Complainant alleges that
it began using the mark mapping your future in 1996, it did not apply for a
trademark until April 30, 2002, two weeks after Respondent registered the
Disputed Domain.
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.
Respondent demonstrates that it registered the disputed domain name on April 17, 2002, two weeks before Complainant filed its first trademark registration. The Panel finds that the federal trademark registrations are insufficient to establish Complainant’s rights in the MAPPING YOUR FUTURE mark pursuant to Policy ¶ 4(a)(i). See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy
¶ 4(a)(i)
“necessarily implies that Complainant’s rights predate Respondent’s
registration . . . of the domain name”); see also
Respondent argues that
it is using the disputed domain name to post advertising links, which relate to
the descriptive meaning of the terms of which the dispute domain name is
comprised. The Panel finds that
Respondent has made demonstrable preparations to use the disputed domain name
in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that
using a domain name consisting of a common descriptive and generic expression
as a portal to a website featuring various advertisements and links is a bona
fide offering of goods or services).
Registration
and Use in Bad Faith
The Panel also
finds 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 <mappingyourfuture.com> domain name in bad faith because 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).
The Panel also determines that the disputed domain name contains commonly-used terms and that this indicates that Respondent did not register or use the <mappingyourfuture.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004).
Complainant contends that Respondent registered and is using the <mappingyourfuture.com> domain name in bad faith because Respondent is commercially benefiting from the similarity of the disputed domain name with Complainant’s mark and from the offering of competitive services through the disputed domain name. The Panel finds that this is insufficient to establish bad faith pursuant to Policy ¶ 4(b)(iv). See Caterpillar Inc. v. Off Rd. Equip. Parts, FA 95497 (Nat. Arb. Forum Oct. 10, 2000).
Respondent’s registration of the <mappingyourfuture.com> domain name predates Complainant’s common law rights and filing of its federal trademark registration application. As a result, the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001).
DECISION
Since the Complainant has not established the elements required under
the ICANN Policy, the Panel concludes that relief shall be DENIED.
Dated: December 31, 2007
National
Arbitration Forum