MBTI Trust, Inc.
v. Training Services On Demand East c/o Frank Whyte
Claim Number: FA0910001290762
PARTIES
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.
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
B. Respondent
-
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.
DISCUSSION
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.
DECISION
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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