MBTI Trust, Inc. v. Training Services On Demand East c/o Frank Whyte
Claim Number: FA0910001290762
Complainant is MBTI Trust, Inc. (“Complainant”) represented by Laura
A. Genovese of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mbti.us>, registered with Register.com.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 22, 2009; the Forum received a hard copy of the Complaint on October 23, 2009.
On October 22, 2009, Register.com confirmed by e-mail to the Forum that the domain name <mbti.us> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 16, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on November 12, 2009.
On November 18, 2009, Complainant submitted a reply to the Response. Complainant’s additional submission was received one day after the deadline.
On November 17, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
- Complainant contends that the disputed domain name is identical to the MBTI trademark, in which Complainant has rights.
- Complainant further contends that Respondent registered the disputed domain name long after Complainant’s first use and registration of the MBTI mark, and that Respondent has never been affiliated with Complainant, and is not authorized or licensed by Complainant or its exclusive licensee to provide services or goods under the MBTI mark. Respondent, says Complainant, has no trademark rights or any other legitimate rights in such mark. Complainant concludes that Respondent lacks rights or legitimate interests in the disputed domain name.
- Respondent has intentionally attempted to attract Internet users to Respondent’s web site for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site, products, and/or services. Respondent’s appropriation of Complainant’s well-known trademark in his domain name, coupled with the fact that Complainant has prior valid and subsisting rights in the MBTI® trademark, is a sufficient basis for establishing bad faith. This fact is especially true where, as here, Respondent was aware of Complainant’s rights. Respondent’s actions have prevented Complainant from registering the mbti.us domain name in its own name, thereby depriving Complainant of a valuable marketing tool for its products and services
- Respondent is a facilitator certified to use the Myers-Briggs Type Indicator personality assessment.
- The domain name registrant TSOD East and its employees over the years have paid Complainant’s licensee CPP, Inc. thousands of dollars for MBTI assessments and handout materials. Registrant TSOD holds out to the public that it provides MBTI-based training services, much as Ford dealers would (legitimately) advertise that they sell Ford cars.
- Rather than supporting a highly regarded, ethically stalwart organization engaged in MBTI® workshop production, CPP, Inc. has engaged in a terrorist campaign against Mr. Whyte specifically and his company tangentially. CPP has hired persons to pose as customers to harass TSOD customer service agents, used faux lawyers to make telephone threats against members of Respondent’s staff, used its monopolistic power to attempt to squash any services (e.g. book selling) Respondent provides in competition to theirs, and maliciously interfered with Mr. Whyte’s ability to provide for his family. Mr. Whyte states that he is uncertain as what initiated this malevolence other than competitive antagonism
MBTI.US has never sought to claim the MBTI® Trademark or create
brand confusion. The converse is true. Each page of MBTI.US notes that
“Myers-Briggs Type Indicator and are trademarks or registered trademarks of the
Myers-Briggs Type Indicator Trust in the
- While MBTI.US advertises some services in competition with CPP—in frustration of CPP’s antitrust schemes—the site, as a whole, is best described as a resource for persons seeking personality type resources. MBTI.US has even gone so far as to always include courtesy links—on all pages—to both CPP, Inc. and the Myers & Briggs Foundation.
C. Additional Submissions
Complainant’s reply to Respondent’s Response did not comply with the deadline established by The Forum’s Supplemental Rule # 7 for additional submissions. Absent good cause, the Panel decides not to consider Complainant’s Additional Submission.
According to Complainant, the MBTI® assessment (also known as the Myers-Briggs Type Indicator® assessment) is the best known and most trusted personality tool available in the world today. The MBTI® assessment was developed over 50 years ago by Isabel Briggs Myers and her mother, Katharine Briggs. The two women worked intensely on the project to identify how different types of healthy personalities operate in the world. Isabel Myers devoted her life’s work to the project. In the early 1970’s, the MBTI® copyrights were exclusively licensed to Consulting Psychologists Press, Inc. (now known as CPP, Inc.). Isabel Myers died in 1980, and her intellectual property is now maintained and controlled by the Complainant. CPP, Inc. remains the exclusive licensee of the MBTI® intellectual property.
After more than 50 years, the MBTI® instrument is a trusted and widely used assessment in the world for understanding individual differences and uncovering new ways to work and interact with others. More than 2 million assessments are administered to individuals annually. While the majority of MBTI® assessments are taken on paper, in 2007 Complainant’s exclusive licensee, CPP, Inc., developed an electronic version of the MBTI® instrument which is now available online.
Complainant, through its exclusive licensee, owns and controls over 170 MBTI-related domain names around the world, including www.mbti.com.
Complainant is the owner of several U.S. federal trademark registrations for the MBTI trademark including Reg. No.1,444,977, Reg. Date June 30, 1987, filed on September 26, 1986, with First Use: May, 1985, covering Int'l Class 9: Computer programs for psychological testing and answer scoring; Reg. No. 1,611,241, Reg. Date August 28, 1990, Filed on December 26, 1989, with First Use October 28, 1977, covering Int'l Class 16: Printed psychological test booklets and answer sheets; Reg. No. 1,817,190, Reg. Date January 18, 1994, filed on February 8, 1993, with First Use: April, 1989, covering Int'l Class: 41: Training workshops in the field of psychological testing and scoring; Reg. No. 2,525,809, Reg. Date January 1, 2002, filed on September 27, 1999, covering Int'l Class 42: Providing information regarding psychological testing and scoring on a global computer network; and providing psychological testing.
Respondent is a facilitator certified to use the Myers-Briggs Type Indicator personality assessment.
The disputed domain name was registered on January 5, 2005.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has demonstrated with
copies of certificates of registration with the USTPO that it owns the MBTI
trademark. See “Findings” above. The disputed domain name consists of the term
“MBTI”, plus the “
Complainant contends that Respondent registered the disputed domain name long after Complainant’s first use and registration of the MBTI mark, that Respondent has never been affiliated with Complainant, and is not authorized or licensed by Complainant or its exclusive licensee to provide services or goods under the MBTI mark. Respondent, adds Complainant, has no trademark rights or any other legitimate rights in such mark. Complainant’s contentions, taken together, amount to a prima facie case that Respondent lacks rights in the domain name. Therefore, it is up to Respondent to come forward with allegations and evidence that it does have some rights or legitimate interest in the domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent contends that he is a certified facilitator to
use the Myers-Briggs Type Indicator personality
assessment, and that the registrant of the disputed domain name and its
employees have spent thousands of dollars in assessment and handout materials
provided by Complainant or its licensee. In the Panel’s opinion, Respondent’s
argument that it has rights in the domain name because it purchased and sold
authentic MBTI goods or services is not convincing. While the majority of
panels consider that an activity as a reseller may give rise to rights and
legitimate interests in a domain name based on a bona fide offering of
goods or services, they require that the reseller uses the website to sell only
the trademarked goods, and clearly discloses its relationship to the trademark
holder. See Oki Data Americas, Inc. v. ASD, Inc. D2001-0903, (WIPO Nov. 6, 2001), and Experian Information Solutions, Inc.
v. Credit Research, Inc., D2002-0095 (WIPO
May 7, 2002). These requirements are not met in the present case. As regards the sale of goods
and services other than those protected by the trademark, Respondent did not reply to
Complainant’s letter of May 4, 2009, where Complainant stated that Respondent
was using the disputed domain name to advertise third parties’ personality
assessments. Respondent even admits in its Response that it used the
www.mbti.us website to advertise third-party products, i.e. book selling, in
competition to Complainant’s services. Also, there is no evidence that
Respondent disclosed its relationship to the trademark owner. Respondent
argues that its use of a disclaimer on the website at the disputed domain name
stating, “Myer-Briggs Type Indicator and MBTI are trademarks or registered
trademarks of the Myers-Briggs Indicator Trust in the
Accordingly, the Panel considers that Respondent did not use the disputed domain name in connection with a bona fide offering of goods or services pursuant to usTLD Dispute Resolution Policy (“the Policy”) ¶ 4.c.i. Nor has Respondent alleged or shown that it is commonly known by the domain name, since its name is Training Services On Demand East or Frank Whyte, which excludes the application of Policy ¶ 4.c.ii. Nor is Respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, because it is using the website at the disputed domain name with an intent for commercial gain to advertise products and services competing with those from Complainant, and diverting consumers looking for the MBTI assessment, thus excluding that Policy ¶ 4.c.iii be applicable. Respondent also failed to present evidence of any other facts or circumstances justifying an inference that it may have some rights or legitimate interests in the disputed domain name. In sum, the second requirement of the Policy is also met.
Respondent does not deny, and even admits, that it used the website at the disputed domain name to advertise third parties’ products or services competing with products protected by the MBTI mark. From a visit to the website at the domain name conducted by the Panel on November 23, 2009 under its general powers pursuant to Rule # 10.a, it results that there is a link titled “Keirsey Temperament Sorter and Keirsey Temperament Theory”. By clicking on that link, the Panel’s browser was connected to a website at http://keirsey.com/, where the Keirsey Temperament Sorter®-II (KTS®-II), a personality instrument used to discover personality types, and apparently unrelated to Complainant products or services, is being advertised and marketed. Apparently this instrument competes with Complainant’s MBTI personality assessment.
Hence, it is clear that Respondent, by using the domain name, is attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of a product or service on its website, which is evidence of use in bad faith pursuant to Policy ¶ 4.b.iv.
Because the Policy requires –differing from UDRP– that bad faith be present either at the moment of registering or when using the domain name, if use in bad faith has been demonstrated, it is unnecessary to find whether registration also was made in bad faith. Accordingly, the third requirement of the Policy is met.
Finally, Respondent also argues that the disputed domain name has been unclaimed and unused for nearly three years, that it was registered to Training Services On Demand, Inc. beginning on January 3, 2005, and that since that time and until now, Respondent is unaware of any objections or claims by any persons or organizations regarding the use of MBTI.US by Training Services On Demand, Inc. Were this property of actual interest to the complainant, says Respondent, it seems likely that Complainant would make some (even minimal) effort to claim the property before it remained abandoned or in another party’s possession for a period approaching eight years.
If Respondent is relying on a defense of laches or limitation period, the Panel cannot share the argument. There is no provision in the Policy allowing it. Nor is there a clear line of precedent supporting it. See Tom Cruise v. Network Operations Center/ Alberta Hot Rods, D2006-0560 (WIPO Jul. 5, 2006), considering that there is no meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name.
Having established all three elements required under the USTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mbti.us> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: December 1, 2009
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