Brooks Peterson v. Anna Katrina Davey / Across Cultures
Claim Number: FA1305001497562
Complainant is Brooks Peterson (“Complainant”), Minnesota, USA. Respondent is Anna Katrina Davey / Across Cultures (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acrosscultures.info>, registered with GoDaddy.com LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2013; the National Arbitration Forum received payment on May 1, 2013.
On May 2, 2013, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <acrosscultures.info> domain name is registered with GoDaddy.com LLC and that Respondent is the current registrant of the name. GoDaddy.com LLC has verified that Respondent is bound by the GoDaddy.com 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 May 6, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2013 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@acrosscultures.info. Also on May 6, 2013, 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 May 28, 2013.
Complainant submitted an Additional Submission, which was received and found to be compliant on May 28, 2013.
On June 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant states that he has continuously used his ACROSS CULTURES mark in commerce since 1989 and first registered it with the United States Patent and Trademark Office (USPTO) in 1999. He has continuously operated his cross-cultural training business on the web at <acrosscultures.com>, <acrosscultures.net>, and other "acrosscultures" domains starting in 1997. His rights in the mark are thus strongly established with first use in 1989 and uninterrupted use since.
The Complainant alleges, and provides evidence to show, that he registered the mark ACROSS CULTURES in 2012, with a claim of first use in 1989, because previous mark registered in 1999 and 2001 had lapsed.
According to the Complainant, the disputed domain name is identical to his mark, and the Respondent is offering services in the same class as that for which he registered his mark. The Respondent’s services compete directly with the Complainant’s services. The Complainant has not licensed or otherwise authorized the Respondent to use his trademark.
The Complainant alleges that such use of the disputed domain name does not constitute a bona fide offering of goods or services under the Policy, because it interferes with the Complainant’s trademark rights. The Complainant cites UDRP cases to support his position.
According to the Complainant, the Respondent purports to operate a business in Texas, but there is no evidence of her being registered under the name ACROSS CULTURES.
Complainant states that the WHOIS information was initially incorrect: in particular, it did not use the business name ACROSS CULTURES. This is further evidence that the Respondent is not commonly known by the disputed domain name. The Complainant cites UDRP precedents to support his position.
In addition, says the Complainant, the web site at the disputed domain name makes reference to “Austin International, Inc.” but the registered agent for that company denies having any relation to the disputed domain name or to the Respondent.
The Complainant states that the Respondent has registered the domain name <austininternational.org>, and that the web site at that domain name is cross-linked to the web site at the disputed domain name. Since the Respondent does not own a trademark for AUSTIN INTERNATIONAL, and is not related to the corporation with that name, the registration and use of <austininternational.org> reveals a pattern of use of domain names in which the Respondent has no rights.
According to the Complainant, the Respondent had actual knowledge of his mark when she registered the disputed domain name, in particular because the web site at the disputed domain name uses a stylized bridge logo which is similar to the Complainant’s bridge logo.
The Complainant alleges that the Respondent is using the disputed domain name to operate a website that features directly competing services. Internet searches for the Complainant's mark itself, as well as for various terms that may be found in both the Respondent’s and the Complainant’s web sites (e.g. searches for terms containing: across cultures training programs, etc.) will inevitably confuse and divert some Internet users to the Respondent's site and thereby disrupt the Complainant's business. Such disruptive use is evidence that the Respondent registered and used the disputed domain name in bad faith in the sense of the Policy. The Complainant cites UDRP precedents to support his position.
Further, says the Complainant, some of the statements on the Respondent’s web site are misleading or inaccurate and could tarnish the Complainant’s mark.
The Complainant states that he, and his counsel, have written repeatedly to the Respondent, requesting that the disputed domain name be transferred, but the Respondent did not reply.
B. Respondent
The Respondent states that she has a multicultural background and her education and experience qualify her to open up a business to help companies compete in global markets by training their employees to work and communicate effectively across cultures. Based on her business goals, she chose the disputed domain name and a highly stylized bridge logo. She registered the disputed domain name in 2007 and has since been doing business under that name. The Respondent presents, as evidence, an “Assumed Name Records Certificate of Ownership for Unincorporated Business or Profession”, made and certified by a notary public in Travis County, Texas, in September 2007.
The Respondent states that she received letters from the Complainant and his counsel, but they referred to two lapsed trademarks and to one trademark registered in 2012. She responded to the April 12, 2013 letter of the Complainant’s counsel. The Respondent presents, as evidence, her letter of April 25, 2013, to the Complainant’s counsel. In that letter, she states that a search of the Trademark Office database shows that the registration of the Complainant’s bridge logo had been cancelled in 2006, and that the ACROSS CULTURES mark had been registered in 2012, well after the registration of the disputed domain name. Consequently, she says that she does not understand how her domain name could be infringing the Complainant’s trademark. She adds that, as the Complainant’s counsel stated in his letter to her, she has been using the disputed domain name since 2007, well before the commencement of the present dispute. Such use cannot therefore be considered to be in bad faith.
According to the Respondent, the Complainant did not adequately police his mark, and thus may have lost the right to challenge other users of the mark. In particular, the Complainant waited five years before filing the present Complaint.
The Respondent alleges that she used the disputed domain name for a bona fide offering of services before any notice of the dispute, which establishes legitimate rights under the Policy. Further, she says that she is commonly known by the disputed domain name, which again establishes legitimate rights under the Policy. She notes that, in his letter of April 12, 2013, the Complainant’s counsel stated that Respondent is using the domain name for offering cross-cultural services and that both he (the attorney) and the Complainant appreciate the work that the Respondent is doing to spread out cross-cultural understanding.
According to the Respondent, the UDRP cases cited by the Complainant must be distinguished from the present case because, in the cited cases, there was clear typo-squatting and redirection of Internet users, whereas in the present case the disputed domain name is used to offer legitimate business services.
The Respondent denies having registered or used the disputed domain name in bad faith.
C. Additional Submissions
In his Additional Submission, the Complainant reiterates that the Respondent has no right to use his trademark, so her registration and use of the disputed domain name violates the Policy. In particular, it constitutes bad faith registration and use.
The Complainant notes that the disputed domain name was registered two weeks after the Respondent registered her assumed business name ACROSS CULTURES, but argues that such a short period enough time is not sufficient to become commonly known by that name.
The Complainant reiterates other points already made in the Complaint, in particular that he has used his trademark continuously since 1989. The Complainant provides evidence to support this allegation.
The Complainant reiterates (at length) that the Respondent must have had actual knowledge of the Complainant’s marks, web site, and activities when she registered the disputed domain name.
The Complainant refers to a telephone conversation with the Respondent, in which she offered to transfer the disputed domain name under certain conditions, such as an agreed transition period and a reference from the Complainant’s web site to her future web site. According to the Complainant, this constitutes an effort to sell the domain given that such promotion and exposure by the Complainant would provide a form of compensation worth well more than the Respondent's out-of-pocket costs; this provides evidence of constitutes bad faith use in the sense of the Policy.
The Complainant registered the trademark ACROSS CULTURES in 1999 and 2001 but allowed those registered trademarks to lapse. He registered the trademark ACROSS CULTURES again in 2012, with a claim of first use in 1989.
The Respondent registered the business name ACROSS CULTURES in 2007, two weeks before she registered the disputed domain name, and has been doing business under that name since 2007.
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.
Before addressing the three elements of the Policy, the Panel will discuss whether the present dispute falls within the scope of the Policy.
The Complainant contends that he has exclusive rights in the ACROSS CULTURES mark for use in the provision of services by way of his long-term use of the mark since 1989. The Complainant has acknowledged that his official trademark registrations had lapsed by the time the Respondent first registered the disputed domain name. The Complainant nonetheless alleges that he has held continuous rights in the mark.
The Respondent points out there no trademark registrations existed when she first registered the disputed domain name—the Complainant’s registrations had since been cancelled. The Respondent argues that she has used the ACROSS CULTURES mark in her own business since 2007. The Respondent does not believe that Complainant can any longer assert superior rights in the mark. Further, the Respondent invokes the doctrine of laches.
In sum, both the Complainant and the Respondent assert rights in the ACROSS CULTURES mark, the key point being that the Complainant is asserting common law rights, since he admits that he did not have a registered trademark at the time the disputed domain name was registered. The Complainant does present some evidence of use of his trademark prior to 2007, but the Panel finds that the evidence presented is not compelling.
The key question in the instant case is whether the Complainant’s rights in his mark in 2007 are such that they precluded the use by the Respondent of the term ACROSS CULTURES to market her own business. This is clearly a matter that depends on US trademark law, and a matter that the present Panel should not decide.
In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that trademark disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
See also Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
The Complainant cites several UDRP cases to support his position that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under the Policy. But those cases must be distinguished from the present case, because in those cases it was clear that the Complainants had registered their marks well before the disputed domain names were registered. That is, there were no issues related to the trademark rights per se. As noted above, the present case appears to raise issues related to the trademark rights, and those issues are best resolved by the competent national courts.
Thus the Panel holds that this dispute falls outside the scope of the Policy, and therefore dismisses the Complaint.
For the reasons given above, the Panel holds that it need not analyze this element of the Policy.
For the reasons given above, the Panel holds that it need not analyze this element of the Policy.
For the reasons given above, the Panel holds that it need not analyze this element of the Policy.
For the reasons set forth above, the Complaint is dismissed.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <acrosscultures.info> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: June 10, 2013
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