Fire Protection Publications v. Tip Powers
Claim Number: FA1106001392591
Complainant is Fire Protection Publications (“Complainant”), represented by William Robinson, Oklahoma, USA. Respondent is Tip Powers (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ifsta.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011; the National Arbitration Forum received payment on June 8, 2011.
On June 8, 2011, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <ifsta.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ifsta.com. Also on June 13, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 5, 2011.
On July 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mrs. Antonina Pakharenko-Anderson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides evidence of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its IFTSA mark (Reg. No. 3,527,277 filed April 2, 2008; issued November 4, 2008).
Further, Complainant advises the Panel that the trademarked term “IFSTA” stands for the International Fire Service Training Association, a not-for-profit organization that has been in existence for more than 75 years and is recognized as the leading provider of fire service training material. It is hosted by Fire Protection Publications, a unit of the College of Engineering, Architecture, and Technology of Oklahoma State University. Its primary products are printed manuals, but it also produces support material such as study guides and curricula on CD, and it offers an array of online training courses. In addition, the organization supports a number of initiatives, such as the National Fallen Firefighters Foundation, for the benefit of the fire service at large.
The Respondent has no historical association whatsoever with the name “IFSTA.” The Respondent has no experience providing products or services to the international fire service community.
The current ifsta.com website tarnishes the image of the legitimate IFSTA organization.
B. Respondent
Respondent acknowledges that the Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its IFTSA mark (Reg. No. 3,527,277 filed April 2, 2008; issued November 4, 2008).
Respondent has acquired the disputed domain in January 2007. At the time of acquisition, there was no live trademark in the USPTO database for the term IFSTA.
The acronym can be used to represent a variety of generic terms. Respondent acknowledges that that it is not in the firefighting industry.
Respondent acquired the domain <iftsa.com> for intended use for the term “International Franchise Sales and Technology Association”, as the respondent is in business of franchising sales and franchise consulting.
Respondent has never heard of the term IFSTA in its use for firefighters and the acronym is not “famous”, with the possible exceptions to some firefighters and people related to such business.
Respondent acknowledges that the parked pages, which are hosted by a service called SmartName, have some ads that relate to firefighting.
Respondent believes that this is a trademark matter and not a UDRP matter.
1. Complainant is a holder of the trademark registration with the United States Patent and Trademark Office (“USPTO”) for its IFTSA mark (Reg. No. 3,527,277 filed April 2, 2008; issued November 4, 2008).
2. The trademarked term “IFSTA” used by the Complainant stands for the International Fire Service Training Association, a not-for-profit organization that has been in existence for more than 75 years and is recognized as the leading provider of fire service training material.
3. Respondent has acquired the domain in January 2007. At the time of acquisition, there was no live trademark in the USPTO database for the term IFSTA.
4. The current <ifsta.com> website tarnishes the image of the legitimate IFSTA organization.
5. The domain name <ifsta.com> > is used by the Respondent to resolve to a website that features commercial hyperlinks, some of which relate to firefighting.
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 and is being used in bad faith.
In order to individualize a product for the consumer, the trademark must indicate its source.
It follows from the purpose of the trademark, to indicate the source to distinguish goods/services of a given enterprise from those of other enterprises, that virtually any sign that can serve to distinguish goods from other goods is capable of constituting a trademark. Still, a trademark, in order to function, must be distinctive.
The test of whether a trademark is distinctive is bound to depend on the understanding of the consumers, or at least the persons to whom the sign is addressed. A sign is distinctive for the goods to which it is to be applied when it is recognized by those to whom it is addressed as identifying goods from a particular trade source, or is capable of being so recognized.
The distinctiveness of a sign is not an absolute and unchangeable factor. Depending on the steps taken by the user of the sign or third parties, it can be acquired or increased or even lost. Circumstances such as (possibly long and intensive) use of the sign have to be taken into account upon assessment whether a trademark is distinctive, and not generic.
According to Complainant, its IFTSA mark is an abbreviation for the “International Fire Service Training Association.” Taking into account that the Complainant has been using the name “for decades” for different initiatives under the umbrella of the firefighting idea, the Panel finds that the name IFSTA acquired the secondary meaning and is distinctive enough to function as the trademark and the name.
Complainant provides evidence of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its IFTSA mark (Reg. No. 3,527,277 filed April 2, 2008; issued November 4, 2008). Based on this trademark registration, the Panel concludes that Complainant has established rights in the IFTSA mark for the purpose of Policy ¶ 4(a)(i), dating back to the filing date, April 2, 2008. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”)
At the same time, from the standpoint of the actual use of the IFTSA mark by the Complainant, the Panel also takes into account that the Complainant claims that it has used the mark “for decades,” in association with its services. The USPTO trademark registration lists the first use date as May 27, 1975. Complainant claims that it offers printed materials, study guides and curricula on CD, and online training courses under its IFTSA mark. Complainant also alleges that it uses the IFTSA mark to provide support to a “number of initiatives,” like the National Fallen Firefighters Foundation.
Respectively, the Panel determines that Complainant has provided enough evidence that its IFTSA mark has established secondary meaning and concludes that Complainant holds common law rights in the mark pursuant to Policy ¶ 4(a)(i), dating back to May 27, 1975. See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).
The contested domain name <ifsta.com> duplicates the name IFSTA used by the Complaiant which makes the domain name misleadingly similar to the Complainant’s mark and name.
Yet another aspect which should be taken into consideration upon assessment of similarity between the Complainant’s mark and the disputed domain is that addition of the generic top-level domain (“gTLD”) “.com.” may not prevent confusion between the Complainant’s mark and the domain. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Therefore, the Panel finds that Respondent’s <ifsta.com> domain name is confusingly similar to Complainant’s IFSTA mark and name under Policy ¶ 4(a)(i).
Complainant provides evidence of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its IFTSA mark (Reg. No. 3,527,277 filed April 2, 2008; issued November 4, 2008).
Furthermore, although the date that the rights in the trademark arose is later than the date on which the Complainant acquired the rights in the conflicting domain through registration of the IFTSA trademark, the Panel finds that due note should be given to the long and various uses of the IFTSA mark by the Complainant, to which it refers in the submissions and the common law rights in the name arising of such use, which date back to May 27, 1975.
Thus, the Panel holds that Complainant has made 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); 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.”).
Policy ¶ 4(c)(ii) allows a respondent to establish rights and legitimate interests in a domain name by proving that it is commonly known by the domain name.
In this case, Complainant argues that Respondent has no historical association with Complainant’s IFTSA mark. Furthermore, there are no hints on the conflicting website that might inform Internet users that the holder of the conflicting website operates under the moniker “:International Franchise Sales and Technology Association” and the activities of the holder of the conflicting domain which might preclude confusion with the Complainant’s business.
Instead, the WHOIS information identifies the domain name registrant as “Tip Powers,” which the Panel determines is not similar to the <ifsta.com> domain name. Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name, and has, therefore, failed to establish rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
In order to establish rights and legitimate interests in a domain name, Respondent might also exercise its right to show that it is either making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
According to the Complaint, Respondent uses the <ifsta.com> domain name to resolve to a website that features commercial hyperlinks, some of which relate to firefighting. Respondent does not rebut this.
Thus the domain name <ifsta.com> is currently used as an online platform for pay-per-click advertising website.
This Internet advertising model is used to direct traffic to websites, which helps to drive higher volume of traffic to the advertised website. The domain name <ifsta.com> may be regarded as one of the examples of the online fraud, when the use of a name which is known among consumers is used by a person to swindle consumers. The revenue steam for pay-per-click advertising begins with an advertiser, which uses a trademark or service mark that it does not own for use as a keyword and/or use in the domain name.
The legality of pay-per-click advertising based on the unauthorized use of trademarks for use as keywords is a controversial issue. However, the use of trademarks as keywords is to be distinguished from the illegal registration of domain names to entities and/or persons, which, if undertaken for keyword advertising or other commercial purpose, results by definition in concealment of the origin and source of goods and services advertised and sold on the Internet.
The domain name <ifsta.com> clearly exploits the firefighters theme which evokes associations with the Complainant’s activities and catches the attention of the Internet uses. This may be regarded as the unfair use of another person’s goodwill and name.
Thus, the Panel concludes that such a use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant does not specifically argue that Respondent registered and uses the <ifsta.com> domain name in bad faith under Policy ¶ 4(b)(iv).
However, Complainant provides screen shots of the resolving website that contain third-party hyperlinks, some of which relate to firefighting.
With reference to the argumentation provided in the preceding section, the Panel infers that Respondent is commercially benefiting from the hyperlinks through the receipt of click-through fees.
The Panel also determines that Respondent’s use of and identical domain name and hyperlinks relating to Complainant’s business, firefighting, may create confusion among Internet users as to Complainant’s affiliation with the disputed domain name and resolving website since the Internet is abundant of so-called sponsored links or sponsored ads which typically appear adjacent to or above organic results on search engines results pages.
Respectively, the Panel concludes that Respondent’s attempt to commercially benefit from this confusion constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel comes to the opinion that since that Complainant has satisfied Policy ¶ 4(a)(i), it has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ifsta.com> domain name be TRANSFERRED from Respondent to Complainant.
Mrs. Antonina Pakharenko-Anderson, Panelist
Dated: August 08, 2011
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