The Grief Recovery Institute, LLC and The Grief Recovery Institute Educational Foundation, Inc. v. Grief Recovery Institute
Claim Number: FA1209001462781
Complainant is The Grief Recovery Institute, LLC and The Grief Recovery Institute Educational Foundation, Inc. (“Complainant”), represented by Karen F. MacDonald of Smart & Biggar, British Columbia, Canada. Respondent is Grief Recovery Institute (“Respondent”), represented by Ahmed Bulbulia of Macera & Jarzyna, Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <grief.net> and <grief-recovery.com>, registered with Network Solutions, LLC.
The undersigned certifies that the panel has acted independently and impartially and to the best of his knowledge have no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr. as Panel Chair.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2012; the National Arbitration Forum received payment on September 14, 2012.
On September 19, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <grief.net> and <grief-recovery.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. 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 September 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@grief.net, postmaster@grief-recovery.com. Also on September 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 17, 2012.
Complainant submitted an Additional Submission on December 24, 2012, which was found to be compliant.
On December 31, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed David H. Tatham, Alan L. Limbury and Daniel B. Banks, Jr, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the owner of the GRIEF RECOVERY mark, as well as the GRIEF RECOVERY INSTITUTE mark and other GRIEF RECOVERY related marks. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GRIEF RECOVERY & Design mark (Reg. No. 2,019,818 filed February 23, 1995, registered November 26, 1996). See Complainant’s Annex B. Complainant uses its GRIEF RECOVERY marks in association with lectures and classes to assist people in dealing with bereavement, and offers professional training seminars on bereavement recovery classes. Complainant has become one of the leading educational service providers in the field of grief recovery and has gained worldwide recognition in its services through various media and publications. Complainant uses the GRIEF RECOVERY mark extensively in advertising materials and has built a substantial reputation in its mark.
Respondent registered the <grief.net> domain name on April 21, 1998, and the <grief-recovery.com> domain name on August 31, 1996. Respondent was an erstwhile licensee of Complainant’s business who failed to comply with the terms outlined in the licensing agreement, and eventually began operating his own competing business, using the disputed domain names to promote his seminars. This contractual dispute will be addressed in greater detail below, in the “Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP” section. The <grief-recovery.com> domain name is confusingly similar to Complainant’s GRIEF RECOVERY mark, and the <grief.net> domain name uses the dominant portion of Complainant’s mark in the disputed domain name. Respondent has no rights or legitimate interests in either the <grief.net> or <grief-recovery.com> domain names, as he uses the domain names to compete with Complainant in an identical field of business. Respondent had formal notice of Complainant’s rights in the trademark when it registered the <grief.net> and <grief-recovery.com> domain names. Respondent registered and uses the disputed domain names in bad faith, as a result of Respondent’s attempt to disrupt Complainant’s business by offering competing services.
Respondent contends that the issues in the current dispute are beyond the scope of the UDRP and requests the Panel terminate the current UDRP proceeding. Respondent claims that currently a dispute exists with the Federal Court in Canada based on the rightful ownership of the disputed domain names, and terminating the present UDRP proceeding in favor of determining the Canadian action is the most efficient manner of determining a just outcome. Alternatively, Respondent denies that the <grief.net> and <grief-recovery.com> domain names are confusingly similar to Complainant’s GRIEF RECOVERY mark. Complainant’s USPTO registrations do not give rise to a presumption of enforceable trademark rights, as Complainant’s first use of THE GRIEF RECOVERY METHOD and the CERTIFIED GRIEF RECOVERY SPECIALIST marks are in 2010, several years after Respondent’s registration of the disputed domain names. Respondent submits that the marks are irrelevant and not enforceable in the proceeding, and that the disputed domain names are not identical or confusingly similar to those marks. Respondent claims that the trademark registration disclaims exclusive right to the phrase GRIEF RECOVERY in relation to “educational services, namely conducting classes and seminars in the field of dealing with bereavement.” The GRIEF RECOVERY mark is itself a generic phrase that is used commonly in areas of grief recovery and bereavement counseling. Complainant has no basis upon which to claim rights in the word “grief” alone, and Complainant did not disclaim the single word “grief” in its registered trademark. Respondent has rights and legitimate interests in the <grief.net> and <grief-recovery.com> domain names, as he promotes his business in Canada using the domain names. The domain names were at no time registered on behalf of Complainant. Respondent carried on his business in Canada using the name “Grief Recovery Institute” and “Grief Recovery” in association with his services. Respondent did not register or use the <grief.net> and <grief-recovery.com> domain names in bad faith; rather, his use of the domain names to advertise, and promote his services in Canada since the early 1990s demonstrates good faith. Respondent has spent substantial resources to develop the websites and the related infrastructure associated with the domain names. Respondent does not compete with Complainant’s business, as Complainant does not carry on any operations in Canada. Respondent raises the doctrine of laches defense, claiming that sixteen years passed after he registered the disputed domain names before Complainant brought a claim for bad faith registration.
Complainant makes the following contentions in its Additional Submission:
Complainant concedes that an action in the Federal Court of Canada existed between the parties in this case regarding Complainant’s Canadian trademark rights, but insists that this administrative proceeding relies on Complainant’s longstanding and extensive use of its USPTO registered marks. Respondent improperly claims that the Panel should refuse to adjudicate this case based on the concurrent Canadian action, because this administrative proceeding is based on Complainant’s trademark rights with regard to its USPTO registration. Complainant has invested over twenty-five years in its brand to improve its reputation and goodwill in the GRIEF RECOVERY trademarks, and is concerned with a prompt resolution to this proceeding, as the Canadian action may not be resolved for a significant length of time.
Respondent’s claim that the disclaimer for the GRIEF RECOVERY trademark should apply towards Complainant’s trademark registration is unsupported by authority. Respondent’s argument that the GRIEF RECOVERY and GRIEF marks are both generic is false, as only the term “institute” in Complainant’s USPTO registration for GRIEF RECOVERY INSTITUTE is disclaimed. Respondent does not have rights or legitimate interests in the disputed domain names, because Respondent fails to provide adequate evidence supporting its claims nor does he provide sworn affidavits, therefore the Panel should accept Complainant’s version of the facts as the truth. Respondent also fails to submit evidence or sworn affidavits regarding his defense against bad faith registration and use of the disputed domain names, which the panel should accept as an “adverse inference against the veracity” of Respondent’s contentions.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: The Grief Recovery Institute, LLC, and The Grief Recovery Institute Educational Foundation, Inc. Complainants are partners that carry out their business, The Grief Recovery Institute, and were founded in 1985 through their predecessor Grief Recovery, Inc. Complainant The Grief Recovery Institute, LLC owns the GRIEF RECOVERY trademarks on behalf of the Complainants.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
"It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity."
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and elects to treat them all as a single entity in this proceeding.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant argues that Respondent entered into a license agreement with Complainant’s predecessor in 1991 to hold authorized licensed seminars in Canada on behalf of Complainant. The agreement included the right to use the GRIEF RECOVERY trademarks in connection with the seminars and that misappropriation of Complainant’s marks would result in Respondent’s liability. Complainant directed Respondent to register the disputed domain names in 1996 listing Complainant as the account holder. Respondent registered the disputed domain names instead under his own name and has made no contributions to the registration or renewal costs of the disputed domain name aside from time contributions toward managing the resolving websites on behalf of Complainant, for which Complainant compensated Respondent. In 2010, Complainant shifted its online presence to a primary website at the <griefrecoverymethod.com> domain name, to which the disputed domain names were to be automatically directed. Respondent had at that time not paid Complainant any royalties and has failed to develop a new primary website for Complainant’s Canadian division, and instead attempted to maintain the old websites and deploy “LoadDNS” software on the <grief.net> and <grief-recovery.com> domain names. Complainant learned in 2011 that the disputed domain names were not redirecting to the new primary website as they should have, due to the LoadDNS software, and made Respondent aware of that fact in an attempt to gain his compliance. Respondent removed the LoadDNS software and took adverse control of the <grief.net> and <grief-recovery.com> domain names by changing the password to the account associated with the domain names, terminating the licensing agreement it had with Complainant, thereby revoking his authorization to use the GRIEF RECOVERY marks and his ability to manage the websites associated with the <grief.net> and <grief-recovery.com> domain names. Respondent began using the websites instead to misrepresent his role in Complainant’s company and compete with Complainant by holding seminars in Canada.
Respondent argues that he has been involved in the grief and bereavement services field in Canada since the early 1980s, and has maintained his business separately from Complainant, including seminar materials, accounting records, customer lists, employees, offices, and management, and that Respondent has been the sole manager in charge of operations for his Canadian business. Respondent admits that Complainant’s business and his own share seminar materials, books, website materials, and “general know-how.” Respondent alleges that he operated without a license to carry on his business in Canada under the GRIEF RECOVERY INSTITUTE and GRIEF RECOVERY names. Respondent established a relationship with one of Complainant’s two joint shareholders, John W. James, as a result of their common interest in the bereavement services field. Respondent insists that he and Mr. James “co-existed internationally and separately” since the early 1990s, thus Mr. James independently owned and operated a business in the U.S. using the GRIEF RECOVERY INSTITUTE mark, while Respondent used the same mark in Canada to operate his business. Respondent claims that at no time did Complainant enter into a license, express or implied, with Respondent, nor did Complainant exercise direct or indirect control of Respondent’s business, services, or products rendered under the GRIEF RECOVERY name. Respondent has never paid royalties to Complainant with regard to alleged intellectual property rights. Complainants were fully aware that Respondent registered the <grief.net> and <grief-recovery.com> domain names, and nonetheless did not raise the issue of bad faith registration for more than sixteen years after registration. In 2011, Complainant sought to persuade Respondent to sign a license agreement and to redirect his Internet traffic to Complainant’s website. Complainants, without Respondent’s consent, induced the technical contact for Respondent’s <grief.net> and <grief-recovery.com> domain names to improperly redirect the Internet traffic from the domain names to Complainant’s website, causing Respondent to lose twenty years of listings in all major search engines.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
"A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint."
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
"[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on."
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. On the basis of this finding, the Panel concludes that the complaint is due to be dismissed. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Procedural Issue: Concurrent Court Proceedings
Respondent claims that currently a dispute exists before the Federal Court in Canada based on the rightful ownership of the disputed domain names, and terminating the present UDRP proceeding in favor of determining the Canadian action is the most efficient manner of determining a just outcome. Respondent notes that Complainant, along with two other parties, filed a “State of Claim” in Federal Court in Canada on March 6, 2012. Respondent has attached several pleadings and a printout from the Court Registry Index showing that the case is live and active. See Respondent’s Annexes A-E.
Within its Additional Submission, Complainant acknowledges “that there is a prior existing and concurrent Federal Court of Canada Action (the ‘Canadian Action’) between the parties that involves, among other trade-mark infringement and passing off issues, the domain names subject to this proceeding: <grief.net> and <grief-recovery.com>…” Complainant goes on to state that the “Canadian Action only involves the Complainants’ Canadian trade-mark rights, whereas in this proceeding, the Complainant’s also rely on their longstanding and extensive use of [USPTO registrations].” Complainant contends that because there are separate trade-mark rights being asserted in the Canadian Action and the current proceedings here, that the disputes should be considered separate and deemed to be involving different subject matter. Complainant contends that the Canadian Action was not settled through a dispute resolution process in November of 2012, and a decision in that court could take a year or better, which Complainant claims it cannot wait for.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”); see also Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
It is the decision of this panel not to proceed with the UDRP because of the pending litigation and that the complaint is due to be dismissed.
On the basis of the reasoning outlined above, the Panel finds that this matter is outside the scope of the UDRP and decides that this case is due to be dismissed.
Accordingly, it is Ordered that this case be and the same is hereby dismissed without prejudice.
Daniel B. Banks, Jr., Panel Chair
David Tatham, Panelist
Alan Limbury, Panelist
Dated: January 8, 2013
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