David Keirsey d/b/a R & D Intelligent Systems v. Contactprivacy.com and R & D Intelligent Systems
Claim Number: FA0711001106080
Complainant is David Keirsey d/b/a R & D
Intelligent Systems (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <keirsey.org> and <keirsey.net>, registered with Tucows Inc.
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.
Debrett G. Lyons, Judge Karl V. Fink (ret.) and Diane Cabell as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 2, 2007.
On November 7, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <keirsey.org> and <keirsey.net> domain names are registered with Tucows Inc. and that the Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on December 17, 2007.
Additional Submissions were received from Complainant in a timely manner on December 26, 2007 under Rule 7 of the Forum’s Supplemental Rules.
On January 9, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons, Judge Karl V. Fink (ret.) and Diane Cabell as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant and his father are psychologists responsible for the authorship, publication and sale of a number of books and psychometric tools in the field of human personality. Complainant alleges that his father’s books and methods are widely known. Complainant asserts common law trademark rights in the name DAVID KEIRSEY and registered trademark rights in KEIRSEY and KEIRSEY TEMPERAMENT SORTER. Complainant alleges that the disputed domain names are confusingly similar to the trademarks.
Complainant alleges that named respondents are one and the same enterprise and that Respondent has no rights or legitimate interests in the domain names. Complainant asserts that the domain names were originally registered to Complainant and that Respondent opportunistically registered domain names after Complainant failed to renew them due to an oversight.
Complainant alleges that Respondent registered and is using the disputed domain names in bad faith. Amongst other allegations, Complainant argues bad faith registration because Respondent was aware, or should have been aware, of Complainant’s reputation. Complainant argues bad faith use since the domain names were parked at a site which raised pay-per-click revenue by carrying links to competitors in business to Complainant.
Respondent broadly denies Complainant’s allegations. Respondent acknowledges that it registered the domain names after they were not renewed by Complainant but did so as part of an already established bona fide business supporting vanity email.
C. Additional Submissions
Additional Submissions made by Complainant have been fully considered by the Panel and will be referred to when necessary in the following discussion.
So far as is necessary to reach its decision, the Panel finds:
1. Complainant (Dr. David Mark Keirsey) is a psychologist and publisher (if not author) of books and other works on psychology, written or created by Complainant’s father (Dr. David West Keirsey).
2. Those books are published and distributed by Prometheus Nemesis Book Company (“Prometheus”).
3. Prometheus is the proprietor of the registered trademark KEIRSEY.
4. There has been no request of either the Forum or the Panel to add or substitute Prometheus as a Complainant.
Preliminary Issue: Multiple Respondents
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities which control the disputed domain names are effectively one and the same Respondent, a matter which might ordinarily require preliminary determination, but for the reasons which follow, Panel finds that it is not necessary to reach a decision on that issue.
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 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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation of whether a complainant has rights in a trademark – and an examination of identicality or confusing similarity. In this case the Panel agrees that it should first determine the question of rights.
The Policy does not distinguish between
registered and unregistered trademark rights: see British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000). It is now widely recognized that a US
Federally registered trademark is prima
facie evidence of trademark rights under the Policy: see, for example, Innomed
Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); Reebok Int’l
The trademark KEIRSEY was registered with the United States Patent and Trademark Office on December 11, 2007 under Registration No. 3,350,634. Complainant is not the registered owner of the mark. The registration is in the name of Prometheus.
The relationship between Prometheus and Complainant is not proven. The Complaint was filed in the name of David Keirsey. The Complaint was amended so as to proceed in the name of David Keirsey d/b/a R & D Intelligent Systems.
The Complaint makes one reference to Prometheus. Complainant states that the books of David Keirsey Sr. are “published or distributed by Prometheus Nemesis Book Company (Dr. David Mark Keirsey is CEO of Prometheus Nemesis Book Company).”
The Additional Submissions later nominate “David Keirsey, Prometheus Nemesis Book Company” as complainant. There was no request made to the Forum to formally amend the complainant information and no request of any similar kind was made to this Panel. The Additional Submissions open with the words: “David Mark Keirsey, the complainant and a representative of Prometheus Nemesis Book Company, disputes several aspects of the Response…”
Later in the Additional Submissions, Complainant states, once more: “I am currently the CEO of Prometheus Nemesis Book Company (PNBC), and I have been consulting for PNBC, dba R & D Intelligent Systems…”
In the absence of better and clearer evidence to explain and corroborate a legal connection between Complainant and Promethus, the Panel is of the view that Complainant can not be considered as having rights in the trademark KEIRSEY by virtue of Registration No. 3,350,634. Complaint has petitioned the Panel to transfer the disputed domain names to it. The Forum invited Complainant to amend the Complaint as originally filed to “annex any documentary evidence, including any trademark or service mark registration” upon which Complainant intended to rely. Complainant did not amend the Complaint to include documentary evidence of its trademark rights, but continued to rely on redacted trademark information which omitted the name of the proprietor. Complainant certified that the information in the Complaint was true and accurate.
The Response challenged Complainant’s trademark rights. In reply (Additional Submissions), Complainant said he was acting on behalf of Prometheus. Complainant has not asked that Prometheus be substituted or added as complainant and the Panel has not been asked to transfer the disputed domain names to Prometheus. The Panel is not ready to transfer the domain names to a non party and it does not consider it appropriate to substitute a party when it has not asked to do so.
Nonetheless, as previously noted, Complainant need not have a trademark registered with a governmental authority in order to establish rights under Policy ¶ 4(a)(i) provided Complainant can establish common law rights: see SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) and Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007).
The issue for the Panel here is whether Complainant has done enough to show common law trademark rights. Complainant faces the added burden that the trademark in which it asserts common law rights is a not an unknown surname and so has a degree of inherent non-distinctiveness. In the Panel’s opinion, Complainant accordingly bears a higher onus of proof that the trademark has acquired secondary meaning and indicates Complainant to the exclusion of others.
Complainant asserts that the name DAVID KEIRSEY has:
acquired sufficient secondary meaning in the area of temperament (human personality) to establish common law rights based on Complainant’s father’s fame and reputation associated with his website Keirsey.com, the KEIRSEY TEMPERAMENT SORTER®, his father’s --Dr David West Keirsey-- books, the Wikipedia article’s on his father and the Keirsey Temperament Sorter.
It is claimed that over three million copies of David Keirsey Sr.’s books have sold in English, Spanish, German, Japanese and Chinese. Complainant continues:
Dr. David West Keirsey is a famous, internationally known, psychologist and has been working on his ideas for 60 years that developed the four Keirsey™ Temperaments: Artisan™, Guardian™, Idealist®, and Rational™. The Keirsey Temperment Sorter® has been taken by over 30 million people either on online via Keirsey.com, or by the international bestselling books Please Understand Me® or Please Understand Me II
Keirsey.com was first created in 1996 by Dr. David Mark Keirsey, to advertise the books and administer the Keirsey Sorters online. The Keirsey Temperament Sorter® was first created in the 1970’s, published and copyrighted in Please Understand Me® beginning in 1978.
Complainant reminds the Panel of the previous decisions under the Policy in Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist) and Estate of Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law) in aid of its submission that the name DAVID KEIRSEY has common law protection.
The Panel appreciates that there is no reason, in principle, that trademarks rights can not accrue to a personal name. However, it is equally conscious of what was said in Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products) and Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) where the panel said:
Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.
Although Complainant chose to file the Complaint with the National Arbitration Forum, Complainant references decisions under the Policy made by panelists of the other major forum, the World Intellectual Property Organisation (“WIPO”). In addition to publishing its decisions under the Policy, WIPO has also published a so-called “Overview of WIPO Panel Views on Selected UDRP Questions.”
That Overview poses a Q&A of relevance to the discussion here:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.
Complainant’s only support for the claim of repute in the name DAVID KIERSEY is bald assertion. The Panel is not aided by any physical or sworn evidence and there is nothing in the way of consumer surveys or media recognition which might act as proof that the public at large recognizes the name.
In the absence of any such material to assist the Panel, it is found that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish common law rights in the name DAVID KIERSEY. Since Complainant has neither shown any registered trademark rights, it has failed to satisfy the first limb of the Policy.
Accordingly, Panel is not required to analyze the other elements of the Policy: 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); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).
No finding required
No finding required
Having failed to establish at least one element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons
Judge Karl V. Fink (ret.)
Dated: January 22, 2008
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