Board for Certification of Genealogists v Ashantiplc Limited

NATIONAL ARBITRATION FORUM
DECISION

Board for Certification of Genealogists v. Ashantiplc Limited
Claim Number: FA0911001296376

PARTIES

Complainant is Board for Certification of Genealogists ("Complainant"), represented by Michael S. Ramage, Pennsylvania, USA. Respondent is Ashantiplc Limited ("Respondent"), represented by John Berryhill, Pennsylvania, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <certifiedgenealogists.com>, registered with Backslap Domains, Inc.

PANEL

The undersigned certifies 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.

David A. Einhorn (Chair), Judge James A. Carmody and Prof. Darryl Wilson appointed as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 1, 2009.

On November 30, 2009, Backslap Domains, Inc confirmed by e-mail to the National Arbitration Forum that the <certifiedgenealogists.com> domain name is registered with Backslap Domains, Inc and that the Respondent is the current registrant of the name. Backslap Domains, Inc has verified that Respondent is bound by the Backslap 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 December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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 postmaster@certifiedgenealogists.com by e-mail.

On December 31, 2009, Complainant submitted an Additional Submission that was determined to be timely.

On January 5, 2010, Respondent submitted an Additional Submission that was determined to be timely.

On January 10, 2010, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David A. Einhorn (Chair), Judge James A. Carmody and Prof. Darryl Wilson as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant's Contentions

(1) Respondent's <certifiedgenealogists.com> domain name is identical to Complainant's CERTIFIED GENEALOGIST common law mark.

(2) Respondent does not have any rights or legitimate interests in this domain name.

(3) The domain name was registered and is being used in bad faith.

B. Respondent's Contentions

(1) Respondent notes that Complainant, as a prerequisite for obtaining a word and design mark in U.S. Trademark Registration No. 1,831,788, made the following disclaimer: "No claim is made to the exclusive right to use 'board for the certification of genealogists', 'certified genealogist' or '1964' apart from the mark as shown".

(2) Respondent argues that Complainant improperly withheld from the Panel in this proceeding material and highly relevant evidence showing that it publicly disclaimed rights in the term at issue through the aforementioned disclaimer.

(3) The term CERTIFIED GENEALOGIST is descriptive of any of numerous organizations which "certify, accredit, or otherwise issue memberships and accolades to genealogists".

C. Complainant's Additional Submission

(1) Complainant's USPTO prosecution history is not relevant to this proceeding.

(2) In spite of a disclaimer to a portion of a federal registration, Complainant may still establish common law rights in that disclaimed term.

(3) Complainant does not dispute the existence of four other organizations providing certification, accreditation or testing for genealogists.

C. Respondent's Additional Submission

Respondent notes Complainant's admission above regarding other genealogist- certifying organizations.

FINDINGS AND DISCUSSION

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.

Identical and/or Confusingly Similar

As part of its burden to show standing under Policy ¶ 4(a)(1), Complainant must show that it has rights in the mark at issue. This Panel notes that in an ex parte prosecution before the U.S. Patent & Trademark Office for a word and design mark, Complainant disclaimed "the exclusive right to use ... 'certified genealogist' ... apart from the mark as shown". However, it is the opinion of the majority of this Panel that such disclaimer in of itself does not end our inquiry into whether Complainant has cognizable rights to "CERTIFIED GENEALOGIST" under the Policy. See Boardroom Software, Inc. v. Chieh Huang, FA 1152049 (Nat. Arb. Forum Apr. 8, 2008) (finding that Complainant had rights to the term EQUITY ENTERPRISE under the Policy, even though to obtain a federal registration for EQUITY ENTERPRISE & DESIGN, Complainant had disclaimed any exclusive rights to the phrase "EQUITY ENTERPRISE" apart from the mark as shown).

This Panel further notes, however, that Complainant does not dispute that it is one of several organizations that provide certification, accreditation, or testing for genealogists. Thus, it is apparent that the public may associate the term CERTIFIED GENEALOGIST with any of these several genealogist-certifying organizations. As stated in Lincolns of Distinction Car Club, Inc. v. Joseph Detomaso, FA 538014 (Nat. Arb. Forum Sept. 24, 2005), Complainant must show that its mark has "become distinctive as an indication of a single source, and is not simply viewed by the public as a description applicable to the goods or services from various sources". Complainant has not made this required showing.

Thus, Complainant has not satisfied ¶ 4(a)(1) of the Policy.

In light of this finding, it is not necessary for this Panel to address the issues of legitimacy of use and bad faith.