David Keirsey d/b/a R &
D Intelligent Systems v. Contactprivacy.com and R & D Intelligent Systems
Claim Number: FA0711001106080
PARTIES
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.
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.
Debrett G. Lyons, Judge Karl V. Fink (ret.)
and Diane Cabell as Panelists.
PROCEDURAL HISTORY
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 postmaster@keirsey.org and postmaster@keirsey.net 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
DISCUSSION
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.
Primary
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
Ltd. v.
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:
1.7 What needs to be shown for the
complainant to successfully assert common-law or unregistered trademark rights?
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
DECISION
Having failed to establish at least one element required under the
ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett G. Lyons
(Presiding)
Judge Karl V. Fink (ret.)
Diane Cabell
Panelists
Dated: January 22, 2008
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