Council of Petroleum Accountants Societies v. Robert Malone, Malone Petroleum Consulting
Claim Number: FA1105001389007
Complainant is Council of Petroleum Accountants Societies (“Complainant”), represented by Paul Sung Cha of Holme Roberts & Owen, LLP, Colorado, USA. Respondent is Robert Malone, Malone Petroleum Consulting (“Respondent”), represented by Scott Malone, Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <copas.us>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflicts in serving as Panelist in this proceeding.
Darryl C. Wilson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 16, 2011; the National Arbitration Forum received payment on May 17, 2011.
On May 17, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <copas.us> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 1, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (“the Commencement Notification”), setting a deadline of June 21, 2011 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 June 21, 2011.
On June 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is the owner of several U.S. federally registered trademarks for the mark COPAS and variations of the same and that it has been using the earliest of these marks for several decades. Complainant also owns the domain name <copas.org> for a website that resolves to its primary organizational information page which it first registered in 1998. Complainant contends that Respondent’s disputed domain name, <copas.us> is “confusingly similar (if not identical) to Complainant’s registered COPAS Marks and Complainant’s copas.org domain name.”
Complainant also asserts that Respondent has used the disputed domain to misleadingly direct internet users to Respondent’s website <malonepetroleumconsulting.com> in an effort “to create a false affiliation, sponsorship, origination of goods and services, and/or relationship with Complainant when there is simply not.” Complainant states that the diversion prevents Respondent from claiming any fair use or non-commercial use. Complainant notes that Respondent changed the website so that it now resolves to a website featuring the city of Copas, Minnesota. Complainant contends that Respondent is not commonly known by the disputed domain name nor authorized by Complainant to use its COPAS marks.
Complainant additionally contends that by maintaining the domain name after receiving Complainant’s notice of infringement and likelihood of confusion via its cease and desist letter, Respondent has engaged in ongoing bad faith.
B. Respondent
Respondent initially contends that “Registrant is operating the domain in dispute, copas.us, for legitimate noncommercial purposes as the sole informational site for the city of Copas, Minnesota.” Respondent thereafter states that Complainant’s “trademarks lacks either the rights to the term “COPAS” or trademark protection of this term.” Respondent also claims that Complainant cannot establish exclusive rights to the marks because “Copas is the name of a city, and therefore a geographic name that is not subject to trademark protection.” Respondent further contends that “Complainant’s registration of a geographic indicator makes it possible for others to use or even register the same mark as has long been done with Complainant’s “COPAS” trademark”.
Respondent additionally states that “The word “copas” is a dictionary word, that being the Spanish second person conjugation of “to take”, and that trademark protection does not extend to usages of common dictionary words.” Respondent asserts that its offering of free educational services to the greater Minneapolis community about activities in and around Copas, Minnesota is indicative of bona fide, legitimate noncommercial use.
Respondent also alleges that it is affiliated with Complainant although not a competitor and that is it the author of several of Complainant’s publications. Respondent states that it found that certain publications were “difficult to locate on Complainant’s website, so Respondent created links on the copas.us site that pointed directly to these publications on Complainant’s website”. Respondent makes these statements to support its additional contention that it was never engaged in the practice of trying to divert internet users to its website for commercial gain but instead was “actually directing Internet users directly to Complainant’s website via links to that site”. Respondent contends that since Respondent’s “gesture of good will” was responded to by Complainant’s insisting that Respondent remove Complainant’s publications from Respondent’s website as well as remove any links pointing to Complainant’s website, Respondent tried other redirections before ultimately settling on its present use of the domain name/website in connection with Copas, Minnesota.
Respondent alludes to it not acting in bad faith by stating that “Regardless of whether the copas.us domain is being directed to accounting services or highlighting city attractions, Respondent is not a competitor of the Complainant and is not seeking to disrupt the complainant’s business, and is not using the domain name to divert Internet users for commercial gain.”
Complainant is the Council of Petroleum Accountants Societies also known as COPAS, who owns numerous U.S. trademark and service mark registrations for its organization. Complainant provided evidence of its rights in eight marks individually or collectively, the “COPAS Marks”, with registrations dating from between 2002 and 2005 and the dates of first use claimed between 1962 and 2003. COPAS characterizes itself as “a professional organization comprised of the oil and gas industry’s most knowledgeable and influential accounting professionals.” It claims to have existed for 50 years with more than 3,500 members in 24 societies throughout the U.S. and Canada. Complainant recognizes that Respondent is a member of a Houston local petroleum accountant society that has a membership with COPAS but notes that the Respondent has no direct affiliation with Complainant. Complainant disputes Respondent’s claims that it authored many of Complainant’s publications stating that its publications are authored by committees as opposed to any single authors.
Respondent is Malone Petroleum Consulting who disputes the validity of Complainant’s registered marks on various grounds that are loosely based on the fact that the marks and drawings include the complete name of the Complainant’s organization along with disclaimers for certain words. Thus despite the fact that the registered marks almost uniformly feature the word COPAS the Respondent asserts that the “stylized logos are by no means similar to Registrant’s site name of copas.us” and thus do not establish Complainant’s rights. Respondent states that it operates an accounting business that has had a “several decade long affiliation” with Complainant and that because of its affiliation Respondent “is by definition a COPAS expert”. Respondent notes that Complainant offers different services than Complainant as the latter is engaged in training and education as opposed to actual accounting and thus it is not possible for it to be a competitor of Complainant.
Both parties would have been better served to more closely follow the specific language of the UDRP policy in drafting their respective submissions and/or have taken advantage of the opportunity for supplemental submissions to inform the interpretations they were both making and seeking in regards to how certain facts assisted their respective cases.
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 argues that it has established rights in the COPAS mark and supports its arguments with proof of numerous trademark registrations for the COPAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,667,595 issued December 31, 2002). The Panel finds that Complainant has demonstrated its rights in the COPAS mark through its registrations with the USPTO according to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)).
Complainant contends that Respondent’s <copas.us> domain name is identical to its COPAS mark because the disputed domain name incorporates the COPAS mark entirely and only changes it by adding the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of a ccTLD does not preclude the disputed domain name from being found identical to a protected mark under a Policy ¶ 4(a)(i) analysis. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Therefore, the Panel concludes that Respondent’s <copas.us> domain name is identical to Complainant’s COPAS mark under Policy ¶ 4(a)(i).
Although Respondent contends that the <copas.us> domain name is comprised of a common and descriptive term and as such cannot be found to be identical to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under UDRP ¶ 4(a)(ii) and UDRP ¶ 4(a)(iii) and not under UDRP ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under UDRP ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under UDRP ¶¶ 4(a)(ii) and 4(a)(iii)).
The Complainant has proven this element.
The Panel notes that the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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). The Complainant has made its prima facie case.
The Panel finds that there is no evidence in the record indicating that Respondent owns any service marks or trademarks or any interest related to such marks reflected in the <copas.us> domain name, and as such, Respondent does not have rights or legitimate interests according to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant indicates and Respondent does not dispute that Respondent is not commonly known by the <copas.us> domain name because the WHOIS information identifies Respondent as “Robert Malone, Malone Petroleum Consulting”. Complainant also states that it never granted Respondent permission to use the COPAS mark in any way, including within the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the <copas.us> domain name under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant asserts, and Respondent agrees that it previously used the <copas.us> domain name to redirect Internet users to its own website at <malonepetroleumconsulting.com> although Respondent and Complainant disagree on the motivation behind Respondent’s actions. While the particulars of the relationship between the parties is unclear there is certainly some overlap between the entities and the Panel finds that Respondent’s use of the disputed domain name to reroute Internet traffic to its own website as a purported gesture of goodwill is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or Policy ¶ 4(c)(iv). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)).
The Panel also finds that Respondent’s current use of the identical disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under UDRP ¶ 4(c)(i)); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i), nor does it represent a noncommercial or fair use under [UDRP] ¶ 4(c)(iii).”
Respondent’s contention that its <copas.us> domain name is used to educate the greater Minneapolis community about activities in and around Copas, Minnesota and therefore exhibits a bona fide and legitimate use is specious at best under the circumstances of this proceeding. Respondent admittedly shifted to its present use after the parties disputed the prior redirections noted above and after Respondent received a cease and desist order from the Complainant. While a citizen of Copas, Minnesota or some other interested party certainly had the right to establish an informational website using the disputed domain name allowing the defendant’s website to exist under the facts presented here would be tantamount to sanctioning a fraud. U.S. courts have long held that defendants’ actions in similar situations were indefensible under claims of violation of U.S. federal trademark law, (see e.g. Panavision International v. Toeppen, 141 F. 3d 1316 (9th Cir. 1998) regarding defendant’s efforts to shield his cybersquatting activity by posting pictures of Pana, Illinois). While Respondent claims that the website content was developed prior to the commencement of the current administrative proceeding, the substance of the UDRP policy should not be subverted by technicalities to the detriment of the systemic ills of cybersquatting that the policy was meant to address. The Respondent was certainly on notice of the probability that some action would follow the cease and desist letter and thus establishing the present use prior to receipt of the actual UDRP complaint is not dispositive here.
Respondent also argues that the word “copas” within the <copas.us> domain name is common and descriptive, and therefore, Complainant does not have an exclusive monopoly on the term on the Internet. Respondent’s latter assertion is correct but Complainant is not seeking, nor is the purpose of the UDRP to determine, whether a party has exclusive use of a term on the Internet. Instead the UDRP is was established for the limited purpose of determining if a Respondent has registered and is using the disputed domain name in a manner that improperly affects the protected rights associated with a Complainant’s mark(s). Respondent and any other party may freely use the word “copas” in a common descriptive manner but it is clear from the Respondent’s actions that the disputed domain name was not registered with such use in mind. Respondent is cautioned to note that merely finding a word in a dictionary does not automatically provide proof that a Complainant has no protectable trademark rights especially when the dictionary is one of a different language than that used where the mark was registered. This is not a case involving the doctrine of foreign equivalents.
Respondent also appears to erroneously equate geographic descriptiveness with being a geographic indicator (GI). A GI is a trademark term of art which indicates that a good originates from a particular region and therefore carries certain qualities and characteristics, such as FLORIDA oranges or IDAHO potatoes. Respondent’s reference to Complainant’s marks and/or its domain registration as a GI is misplaced as the Complainant clearly did not register and does not use the mark in the above manner and the Respondent admittedly offers no goods. Respondent’s blanket assertion that because the COPAS mark also happens to be the name of a town and is thus geographically descriptive and unprotectable is also amiss. Complainant used and registered COPAS as an acronym for its organizational name in classifications dealing with educational goods and services and has nothing to do with the geographical location of the town in Minnesota. Furthermore geographical marks are entitled to registration as GI’s or as standard marks if secondary meaning is proven.
Aside from Respondent’s self serving contention that it registered and initially used the disputed domain name as one of COPAS experts and authors in a goodwill gesture to assist the Complainant, albeit without informing the Complainant of the same, Respondent extended too much effort on trying to disprove Complainant’s rights while offering scant evidence in support of how it developed its own rights.
The Complainant has proven this element.
Complainant asserts, and Respondent admits that the <copas.us> domain name previously resolved to Respondent’s own website <malonepetroleumconsulting.com> for the purpose of engaging Complainant’s customers, although the parties disagree on the nature of the engagement. The Panel finds that Respondent and Complainant both operate within the same oil and gas industry and that Respondent’s registration and use of the disputed domain name previously disrupted Complainant’s business, which constitutes bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under [UDRP] 4(b)(iii).”).
Complainant also contends that the <copas.us> domain name created a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the resolving website and content. Complainant argues that Respondent registered and used the disputed domain name for the purpose of confusing Internet users in order to profit from the increased Internet traffic and potential new customers. The panel finds that registering and using an infringing domain name for commercial gain constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant alludes to Respondent’s knowledge of its COPAS marks at the time of the disputed domain name’s registration. Likewise Respondent acknowledges that it was aware of the existence of, if not the viability of, Complainant’s marks when it registered the disputed domain name. The Panel finds that the Respondent had actual notice of Complainant’s rights in the COPAS mark when it registered the <copas.us> domain name which indicates bad faith registration under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). As reflected in other sections above Respondent has also used the disputed domain name in an improper fashion and the mere changing from an earlier violative use after receiving notice from a mark holder to a current acceptable use does not insulate a Respondent from being found to have acted in bad faith under this prong of the policy.
The Complainant has proven this element.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <copas.us> domain name be TRANSFERRED from Respondent to Complainant.
Prof. Darryl C. Wilson Esq., Panelist
Dated: July 11, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page