Claim Number: FA0904001256835
Complainant is California Association of Marriage and
Family Therapists (“Complainant”),
represented by Holly Pranger, of Pranger Law Group,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therapistfinder.net>, registered with Wild West Domains, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge and have no known conflict in serving as Panelist in this proceeding.
David P. Miranda and G. Gervaise Davis III, as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2009.
On April 9, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <therapistfinder.net> domain name is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West 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 April 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 6, 2009 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on May 6, 2009.
Complainant filed a timely additional submission on May 11, 2009.
Respondent filed a timely additional submission on May 18, 2009.
All submissions were considered by the Panel.
On May 18, 2009, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David P. Miranda and G. Gervaise Davis III, as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant is the California Association of Marriage and Family
Therapists (“Complainant” or “CAMFT”), a
CAMFT is the exclusive owner of Registration Nos. 3,560,755 (Principal Register) and 2,394,392 (Supplemental Register) for the service mark THERAPISTFINDER. Complainant has made continuous use of the mark THERAPISTFINDER in connection with “providing an interactive electronic database in the nature of an information directory of licensed marriage, family and child counselors, provided by means of a global computer network” (“Services”) since 1996. CAMFT applied for the THERAPISTFINDER service mark on December 9, 1996, with a first-use date of September 1, 1996, and the service mark was registered on the Supplemental Register on October 10, 2000. On January 13, 2009, the service mark was registered on the Principal Register. CAMFT has been utilizing <therapistfinder.com> for over twelve years, and <therapistfinder.org> for over five years. CAMFT has invested, and continues to invest, in the THERAPISTFINDER service mark and URLs in order to keep them informative, competitive and current.
The Domain Name <therapistfinder.net> was first registered on December 21, 1999. By at least December 2006, <therapistfinder.net> pointed directly to <findcounseling.com>, which means that any user who entered the domain name <therapist finder.net> would be automatically redirected to <findcounseling.com>, a competing website to that of CAMFT’s <therapistfinder.com>.
There is no legal purpose to Respondent’s use of <therapistfinder.net> except to re-direct traffic to Respondent’s competing website. The only purpose of Respondent’s use of <therapistfinder.net> is to deceive visitors by making them believe they are on a website affiliated with or sponsored by CAMFT.
Respondent registered the <therapistfinder.net> domain name and is using the domain name in bad faith in order to attract, for commercial gain, Internet users to its web site, by when creating a likelihood of confusion with Complainant’s service mark.
The <therapistfinder.net> domain name is identical and confusingly similar to CAMFT’s THERAPISTFINDER service mark and common law marks.
Respondent has no rights to or legitimate interest in the<therapistfinder.net> domain name or any other domain name confusingly similar to CAMFT’s service mark and common law marks.
Respondent is not using the domain name <therapistfinder.net> in connection with a bona fide offering of goods or services.
Respondent has not licensed or obtained permission to use the THERAPISTFINDER service mark, in which Complainant has exclusive rights, and this is evidence that Respondent lacks a legitimate interest in<therapistfinder.net>.
When Respondent registered <therapistfinder.net>, it either knew that <therapistfinder.com> was being used by Complainant, or it learned that Complainant had registered <therapistfinder.com>, and this knowledge means that Respondent did not act in good faith.
B. Respondent’s Contentions
This action is a case of reverse domain name hijacking in which Complainant attempts to wrest the domain name therapistfinder.net from a legitimate business that has used the mark THERAPIST FINDER since 1996. Complainant relies on a recent trademark registration for THERAPIST FINDER that Complainant procured by submitting a fraudulent declaration to the U.S. Patent and Trademark Office. That registration is now the subject of a cancellation proceeding filed by Respondent on April 15, 2009.
Mir Internet Marketing, Inc. ( “Mir” or “Respondent”) was formed in
Although Mir’s principal service offering was always the THERAPIST FINDER (eventually the CHICAGOLAND THERAPIST FINDER) online directory, it initially operated at the domain name mirconnect.com. By August 23, 2000, Mir was using the domain name therapistfinder.net to offer its THERAPIST FINDER services. By 2000, Mir had as customers over one hundred therapists who paid to be listed in the THERAPIST FINDER to offer its online directory services.
Mir has been commonly known as THERAPIST FINDER and CHICAGOLAND THERAPISTFINDER since 1996.
In 1996, Complainant attempted to register the mark THERAPIST FINDER on the Principal Register of the U.S. Patent and Trademark Office; however, the PTO refused to register the mark on the grounds that it was merely descriptive.
While the domain name, <therapistfinder.net> may be similar to <therapistfinder.com> and <therapistfinder.org>, the Policy also requires that this similarity extend to a “trademark or service mark” in which the Complainant “has rights”.
Complainant does not have trademark rights to the term THERAPIST FINDER because respondent is the prior user, the term is merely descriptive (if not generic) for the relevant services, and the registration on which Complainant relies was procured by fraud and is subject to a cancellation proceeding.
The term “therapist finder” is merely descriptive (if not generic) of an outline directory for therapists. A search on Google, MSN and other search engines reveals many third parties using the term “therapy finder” in just this fashion. A merely descriptive or generic term cannot be protected as a trademark.
Respondent has a legitimate interest in its domain name. Mir established a legitimate business in July of 1996 to offer THERAPIST FINDER online directly services. In 2000, over 400,000 people used Mir’s THERAPIST FINDER services.
Under URDP, use of the domain name before notice of the dispute is grounds for concluding that Mir has a legitimate interest in the domain name therapistfinder.net. The earliest date on which Mir had notice of any dispute with complainant was on December 27, 2007, when Catherine Atkins, an attorney for Complainant, contacted Mir demanding that Mir stop “cybersquatting” of “our protected trademark” THERAPIST FINDER.
Mir’s use of the domain name began before December 27, 2007. Complainant’s application for registration on the Principal Register was not even filed until June of 2008, eight years after Mir’s use of the domain name.
It is well-established case law under the UDRP that, in general, a finding of bad faith registration cannot be made with respect to trademark rights that are not established at the time of registration. The domain in this case was registered before 1999 and first used by Respondent in 2000.
C. Additional Submissions
Complainant’s Additional Submission
Respondent, knowing that Complainant was running a business (not-for-profit) at TherapistFinder.com, took the action of establishing the exact competing business (for profit) at the “.net.” Respondent uses the “.net” version of Complainant’s domain to re-direct traffic to its for-profit business, FindCounseling.com.
Respondent is the owner of over 5,000 domain names and has a history of infringing intellectual property for the purpose of promoting Respondent’s business. In addition to registering domain names that contain the Intellectual property of others and redirect Internet users, Respondent has made many copyright infringement claims under the digital Millennium Copyright Act.
Complainant has been using the mark THERAPISTFINDER since at least 1995 which predates Respondent’s alleged date of first use of July 25, 1996.
The PTO has agreed to register THERAPISTFINDER on the Principal Register, and due to Complainant’s use of THERAPISTFINDER, it has acquired distinctiveness and secondary meaning. Complainant’s trademark registration was not procured by a fraudulent declaration.
Between 1996 and 2000, Respondent’s only use of THERAPISTFINDER was as a small button on a website. On August 23, 2000, the day when Respondent decided to create an entire website at the .net, a full-fledged site was operating at Therapistfinder.com.
Respondent’s Additional Submission
Mir’s founders were dedicated full time between 1996 and 2000 to the development and promotion of the THERAPIST FINDER service. During this time period, Mir promoted the THERAPIST FINDER.
Between 1996 and 2000, Mir made consistent and increasingly prominent use of the THERAPIST FINDER mark.
In late 1999, Mir has an opportunity to acquire the domain <therapistfinder.net> and decided to change the name of its flagship service from THERAPIST FINDER to THERAPIST FINDER.NET.
On October 10, 2000, the magazine
Evidence in support of Respondent comes from Mir’s clients, the doctors, psychologists and other licensed clinicians who have purchased listings in Mir’s THERAPIST Finder directory. Their testimonials were compiled in 2006 and are set forth in the Newton Supplemental Declaration.
It is completely irrelevant that Mir has more than one mark and more than one line of business. Mir has assembled a large portfolio of descriptive domain names, which it makes available for use by its customers to promote their practices (hence the large number of registrations).
It is well-established law that a senior user of a descriptive mark cannot assert trademark infringement against a junior user that adopts a mark before secondary meaning is established. Thus, even assuming Complainant can prove a date of first use preceding Mir’s, Complainant must also show that it had established secondary meaning before Mir commenced its use (which occurred at least as early as July of 1996). Complainant states that promotion of its mark involved the placement of ads in its monthly magazine publication starting in January of 1996. Complainant would have advertised at most four times (in January/February, March/April, may/June and June/July issues of its magazine) before the latest date on which Mir launched its site. These four ad placements did not create secondary meaning sufficient to give Complainant an exclusive trademark right to the descriptive term THERAPIST FINDER.
It was Mir not Complainant that had the “full-blown” THERAPIST FINDER website, not just on August 23, 2000, but for four years earlier when C.J. Newton launched the world’s first online therapist directory, which he branded THERAPIST FINDER.
When Mir acquired the domain name, Complainant’s registration on the Supplemental Register had not issued. Bad faith cannot arise when a domain name is registered before Complainant acquires rights in the mark. Because the mark THERAPIST FINDER is descriptive, Complaint did not acquire exclusive trademark rights in the mark until the mark acquired secondary meaning. There is no evidence that this occurred before Mir acquired the domain name <therapistfinder.net>.
For the reasons set forth below the panel finds that Complainant is not entitled to the relief requested.
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.
Since the Panel has found Complainant has not proven bad faith, no decision is made on this element.
Since the Panel has found Complainant has not proven bad faith, no decision is made on this element.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent asserts that its registration of the disputed domain name in 1999 predated Complainant’s rights in the mark in that Complainant did not obtain sufficient distinctiveness until after 2000, as the USPTO denied Complainant’s mark for being descriptive in 2000. The Panel finds that Complainant does not have sufficient rights in its mark that predate the registration of the disputed domain name, therefore the Panel finds that Respondent lacks the requisite intent to register the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the respondent registered the domain name in question before application and commencement of use of the trademark by the complainant).
Complainant has not proven this element.
Reverse Domain Name Hijacking
the Panel finds that Complainant has failed to satisfy its burden under the
Policy, this does not necessarily require a finding of reverse domain name
hijacking on behalf of Complainant in bringing the instant claim.
The Panel finds Reverse Domain Hijacking has not been proven.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <therapistfinder.net> domain name remain with Respondent.
Honorable Karl V. Fink (Ret.), Chair
David P. Miranda, Panelist
G. Gervaise Davis III, Panelist
Dated: June 1, 2009
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