Apollonian Publications, LLC v. Apollo Associated Services / Bea Dowdy
Claim Number: FA1201001424879
Complainant is Apollonian Publications, LLC (“Complainant”), represented by Dean L. Gano, Washington, USA. Respondent is Apollo Associated Services / Bea Dowdy (“Respondent”), represented by Chris Eckert, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apollorca.com>, registered with Network Solutions, LLC (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2012; the National Arbitration Forum received payment on January 16, 2012.
On January 17, 2012, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <apollorca.com> domain name is registered with Network Solutions, LLC. and that Respondent is the current registrant of the name. Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, LLC. 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@apollorca.com. Also on February 1, 2012, 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 February 21, 2012.
On February 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers training materials, books, and computer software in the field of root cause analysis, problem solving, and incident investigation. Complainant offers these goods and services to the public in connection with the following trademarks and trade names: APPOLLO ROOT CAUSE ANALYSIS, APOLLO RCA, ARCA, and REALITY CHARTING.
Respondent is a former service provider for Complainant who resold Complainant's products, including training material, books, and computer software that were known by said trademarks.
At no time did Complainant transfer the right to use said trademarks to Respondent, and such trademarks or trade names have always remained the property of Complainant.
Respondent is now using said trademarks as part of the Disputed Domain Name and is thereby redirecting commerce to Respondent’s domain name, where it is selling an allegedly improved version of Complainant’s problem-solving methodology.
On December 8, 2011, Respondent notified Complainant that Respondent would no longer be a reseller of Complainant's products. Since that time, Respondent has created its own training material and computer software similar to what it had purchased from Complainant. Respondent is currently using the trademarks SOLOGIC and CAUSELINK for it business activities in this regard. Yet, Respondent continues using the Disputed Domain Name to redirect business to Respondent’s new domain.
Through Respondent’s use of the Dispute Domain Name, Respondent is creating a likelihood of confusion with the Complainant’s trademarks as to the proper source of APOLLO ROOT CAUSE ANALYSIS products and services to which they are not authorized to provide. Such conduct constitutes bad faith under paragraph 3(b)(ix)(3) [sic]of the Policy.
B. Respondent
Respondent, Apollo Associated Services, has been providing root cause analysis (RCA) training and software since 2002. Respondent’s services help institutions and companies solve challenging problems and helps prevent those problems from reoccurring. Respondent operates offices in six countries and offers training services in five languages. Root cause analysis is widely known in the marketplace by its initials "RCA," which is descriptive of the methodology employed by Respondent (and others) in their training services.
Respondent chose the Disputed Domain Name because it was relatively short, it was available at the time of registration, and it effectively described both the provider of the offering (Respondent, Apollo Associated Services), as well as the nature of the offerings (root cause analysis services).
Complainant supplied Respondent with printed materials in support of Respondent’s training services. The parties’ business relationship ended in December 2011.
At the time Respondent registered the Disputed Domain Name, no specific trademark registration for the mark APOLLO RCA existed.
On December 10, 2011, Complainant filed an application to register the mark APOLLO RCA with the US patent and Trademark Office. The filing occurred two days after Complainant learned that Respondent would discontinue using Complainant as a supplier of printed materials.
Respondent has legitimately built brand equity for over 10 years for the mark APOLLO ASSOCIATED SERVICES and the Disputed Domain Name. Respondent's clients, vendors, employees, contractors, and competitors have always directly associated the Disputed Domain Name with Respondent and Respondent’s services.
In 2005 Respondent and Complainant entered into an agreement whereby Complainant agreed "upon full and complete payment of the balance of the note [sic]… Seller [Complainant] shall deliver and transfer all of its rights to the name "Apollo Associated Services” to Respondent. Complainant has acknowledged that Respondent has fully and completely paid the note described in the 2005 agreement. As such, respondent has a vested contractual right to the use of the mark APOLLO ASSOCIATED SERVICES.
Respondent registered the design mark APOLLO with the U.S. Patent and Trademark Office, which issued June 30, 2009.
Respondent has spent a considerable amount of money, effort, and time promoting the Disputed Domain Name since at least 2002.
Respondent does not dispute that the Disputed Domain Name is similar to a trademark in which Complainant has rights.
Respondent registered and has legitimately been using the Disputed Domain Name to offer its training services. Respondent did not register the Disputed Domain Name nor did it acquired the Disputed Domain Name for any other purpose including selling, renting, or otherwise transferring the Disputed Domain Name registration to any entity, including Complainant.
Respondent did not register the Disputed Domain Name to disrupt the business of Complainant.
Respondent notes that Complainant does not provide services. Since 2002, Complainant has only provided printed materials and software in support of the training services offered by others.
The panel makes the following findings of fact:
1. Respondent is the registrant of the Dispute Domain Name, <apollorca.com>, and the record was created on July 20, 1999;
2. Respondent is the owner of a trademark registration issued on June 30, 2009, by the U.S. Patent and Trademark Office for the mark APOLLO (with stylized text and design);
3. Complainant is the applicant for three trademark applications filed with the U.S. Patent and Trademark Office for the marks, APOLLO ROOT CAUSE ANALYSIS, APOLLO RCA, and ARCA, and each of these trademark applications was filed in December 2011;
4. Respondent has been in the business of providing training with respect to root cause analysis since 2002, and in the course of such services Respondent has been a reseller of materials sold by Complainant; and
5. Respondent’s use of the Disputed Domain Name has been in connection of said activities and such activities have a commercial purpose.
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 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.
Preliminary Issue - Scope of the Policy
The Policy is directed to the intersection of trademark rights and rights in domain names, and the Policy is intended to provide a forum for quickly addressing claims of abusive domain name registrations in violation of trademark rights. The Policy is not intended to deal with other types of disputes, whether involving contract rights, trade name rights, copyright rights, trade secret rights, or rights against unfair competition, although such considerations may be relevant to an analysis under the Policy with respect to the issue of abusive domain name registration and use. To the extent that the claim and response herein present claims for the protection of such other rights, these claims will not be addressed in this decision.
It is a prerequisite for an action under the Policy that a claimant have rights in a trademark. Such rights need not be evidenced by way of a registration with a national authority, such as the U.S. Patent and Trademark Office, although such is typically sufficient. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i))
Trademark rights can be demonstrated through use of an expression in commerce such that secondary meaning is developed, but in order to establish this for purposes of the Policy, evidence must be provided to the panel that demonstrates sufficient use in commerce. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) ("setting aside the contrary statements about the date of Complainant's first actual use, the mere claim of use is not enough to establish rights. Use must be in a manner sufficiently public to create some public awareness.")
In the instant action Complainant provides evidence of three trademark applications for the following marks: APOLLO ROOT CAUSE ANALYSIS; APOLLO RCA; and ARCA. These trademark applications are not relevant in this administrative action because a trademark application does do not by itself confer or evidence trademark rights.
Complainant asserts that it created a problem-solving methodology in 1993, which is the subject of a copyrighted book entitled “Apollo Root Cause Analysis; Effective Solutions to Everyday Problems Every Time,” by Dean l. Gano. Mr. Gano is designated in the complaint as Complainant’s “preferred contact person,” and is presumably in a position of authority within Complainant. Complainant asserts that this book and other materials on the same or similar topics have been sold to Respondent and others for distribution and sales to the public. Respondent agrees that Complainant has supplied Respondent and others with printed materials.
The panel finds that this history of usage is sufficient to establish trademark rights for purposes of the Policy. However, it is not clear to the panel the mark or marks thereby established. It could be ARCA, or APOLLO ROOT CAUSE ANALYSIS, or APOLLIAN PUBLICATIONS, or even, as appears on a letter from Complainant to Respondent, APOLLO ASSOCIATED SERVICES. Some of these expressions may be mere trade names, which as noted, are not protected by the Policy. None of the documents provided demonstrate use of the alleged mark APOLLO RCA, and as such, rights in this alleged mark have not be established.
Giving the benefit of the doubt to Complainant, the mark established by the noted use is the common element to all of these possibilities, and that is APOLLO (“Complainant’s Mark”).
The next step under the first element of the Policy is to analyze whether the Dispute Domain Name is identical or similar to Complainant’s Mark. In making the comparison, minor variations, such as the addition or deletion of a single letter or space are ignored, as is the addition of a top level generic domain identifier (“gTLD”) such as “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Whether the addition of non-trivial content to a trademark creates a meaningful distinction for purposes of the Policy depends on whether, for the average Internet user, the additional content would tend to strongly lead back, conceptually, to the Complainant and its mark. See Enterprise Rent-A-Car Company v. Richard Lanoszka a/k/a Silent Register, FA 1242244 (Nat. Arb. Forum Feb. 25, 2009)(“In the view of this Panel, the difference between these two groups of administrative actions [those finding for and against additional content creating a meaningful distinction] lies in whether the addition of a word and its associated concept strongly leads an average Internet user back to a complainant the complainants trademark...”)
In the instant action and as noted above, Complainant has established rights in the mark APOLLO.
The Disputed Domain Name (sans the generic top-level identifier “.com”), <apollorca>, is not identical to the mark APOLLO because of the addition of the letters “rca.” The Disputed Domain Name could be found to be confusingly similar to Complainant’s Mark if the addition of the letters “rca” tended to strongly lead back, conceptually, to Complainant and Complainant’s Mark. It is clear to the panel from the submissions that “rca” is shorthand for “root cause analysis.” If this fact were widely known, then the panel might find that the addition of “rca” to “apollo” within the Disputed Domain Name strongly tends to lead back to Complainant and Complainant’s Mark given Complainant’s relationship to activities with respect to which root cause analysis is a common tool. However, this fact is not widely known by the average Internet user. Therefore, the panel finds that the addition of the letters “rca” does create a meaningful distinction.
As such, the Disputed Domain Name is not confusingly similar to Complainant’s Mark, and as such, Complainant has failed to establish the first element of the policy. The panel could stop the analysis at this point, but the panel will continue because the panel is mindful that Respondent admits in its response that Complainant does have rights in a mark for purposes of the Policy.
Under the second element of the policy, a complainant must first make a prima facie case that a respondent lacks rights and legitimate interests in the disputed domain name, 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.”).
Complainant asserts that it never transferred any of its trade names to Respondent. Complainant further asserts that Respondent is not known by the mark APOLLO RCA , but rather Respondent was at all times a mere reseller of Complainant’s products and services, and Respondent is now using Complainant’s Mark to redirect commerce to its new website. This is sufficient to for Complainant to establish its burden.
In Policy ¶4(c), three situations are described that if present support a finding that a respondent has rights and legitimate interests in a disputed domain name. If this is established, the respondent may retain the disputed domain name.
Respondent clearly has not been using the Disputed Domain Name for noncommercial or fair use purposes. Respondent’s use of the Disputed Domain Name is for commercial purposes, as is demonstrated by Respondent’s reference to its clients directly associating the Disputed Domain Name with Respondent. Policy ¶4(c)(iii).
Respondent asserts that in 2005 it acquired from Complainant the rights to the trade name Apollo Associated Services, and for that reason is known by the Disputed Domain Name, <apollorca> for purposes of the Policy. However, even if Respondent did acquire the trade name Apollo Associated Services (and the panel makes not determination of this point), that trade name is no “apollorca,” and as such, does not satisfy the requirement for being commonly known by a domain name. Policy ¶ 4(c)(ii).
Respondent demonstrates that its use the Disputed Domain Name is in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Both Complainant and Respondent agree that Respondent has for a number of years been distributing materials published by Complainant. Respondent adds that it has been using such materials as tools in its teaching activities since 2002 in five languages in six countries. This describes a bona fide offering of both goods and services under the Policy.
Inherent in the analysis under Policy ¶ 4(c)(i) is a requirement that a respondent’s use of a disputed domain name not be adverse to the complainant in a competitive commercial sense. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and see Computerized Sec. Sys., Inc., V. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)(a respondent’s use of disputed domain name to sell its own goods or services demonstrates the respondent’s lack of rights and legitimate interest in in the disputed domain name).
Many panels working under the Policy place the analysis on this point directly within the analysis under Policy ¶ (c)(i); however, the panel here believes the analysis of this point is better included in the analysis under Policy ¶ 4(b). If the respondent’s use of the disputed domain name is in bad faith, then ipso facto, the use is not in connection with a bona fide offering of goods or services. See Michael Brandt Family Trust and its Licensee Eco-Fresh Industries, Inc., v. Green Street Dev./Philp Beere, FA 1408477 (Nat. Arb. Forum Nov. 14, 2011)(“This Panel believes that this exception to policy paragraph 4(c)(i) is better dealt with under policy paragraph 4(b) and the issue of “bad faith,” although this Panel does agree that the use of a disputed domain name which is in bad faith under Policy Paragraph 4(b) would not be a bona fide use under policy paragraph 4(c)(i)”).
As noted below, the panel finds that Respondent’s use of the Disputed Domain Name is not in bad faith, and as such, the conclusion stands that Respondent’s use of the Disputed Domain Name is in connection with a bona fide offering of goods or services.
Under Policy ¶ 4(b), four non-exclusive situations are described that would constitute bad faith. None applies to the instant action.
No claim has been made or evidence presented that Respondent has registered or acquired the Disputed Domain Name for the purpose of selling, renting, or otherwise transferring it to the Complainant. Policy ¶ 4(b)(i).
No claim has been made and or evidence presented that Respondent registered the Dispute Domain Name in order to prevent Complaint from Reflecting Complainant’s Mark in a corresponding domain name. Policy ¶ 4(b)(ii)
No claim has been made or evidence presented that Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor. Policy ¶4(b)(iii).
Complainant has alleged that Respondent is using the Disputed Domain Name to intentionally attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement, of Respondent’s web site. Policy ¶ 4(b)(iv).
The panel finds that Respondent is attempting to attract customers to its website for commercial purposes. The panel does not believe, however, that Respondent is doing this with the intent of creating a likelihood of confusion with Complainant’s Mark. Rather, Respondent is doing so with the intent to use its own mark, APOLLO, which it registered with the U.S. Patent and Trademark Office on June 30, 2009, well before the relationship between the parties ended in December 2011.
It appears that prior to the end of the business relationship between Respondent and Complainant, Respondent used Complainant’s materials in the course of Respondent’s business activities, but no claim has been made that Respondent cannot now use other materials, or its own materials, about the same subject. If such a claim were made, it would likely raise issues outside of the scope of this this panel would entertain, as such claims would likely involve issues of copyright infringement and/or unfair competition, which are issues a court is better equipped to handle.
The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <apollorca.com> domain name REMAIN WITH Respondent.
Kendall C. Reed, Panelist
Dated: March 13, 2012
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