national arbitration forum

 

DECISION

 

GoodTherapy.org, LLC v. George Washere

Claim Number: FA1306001504037

PARTIES

Complainant is GoodTherapy.org, LLC (“Complainant”), represented by Kevin Keener of Keener, McPhail, Salles, LLC, Illinois, USA.  Respondent is George Washere (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <goodtherapy.com>, registered with eNom, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2013; the National Arbitration Forum received payment on June 10, 2013.

 

On June 10, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <goodtherapy.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 12, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@goodtherapy.com.  Also on June 12, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On July 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <goodtherapy.com> domain name is confusingly similar to Complainant’s GOOD THERAPY mark.

 

2.    Respondent does not have any rights or legitimate interests in the  <goodtherapy.com> domain name.

 

3.    Respondent registered and used the <goodtherapy.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the GOODTHERAPY.ORG mark (e.g., Reg. No. 3,197,798, registered January 9, 2007).

 

Respondent registered the domain name on November 29, 2003, and uses it to promote the goods and services of third parties.

 

Complainant did not prove common law rights in the GOOD THERAPY mark prior to 2003.

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

Complainant owns trademark registrations with the USPTO for the GOODTHERAPY.ORG mark (e.g., Reg. No. 3,197,798, registered January 9, 2007).  Respondent’s registration of the <goodtherapy.com> domain name predates Complainant’s registration of the GOODTHERAPY.ORG mark.  The Panel notes that the registration of a trademark with a trademark agency is not necessary under Policy ¶ 4(a)(i), so long as Complainant can establish common law rights in the mark.  See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant asserts that it owns common law rights to the GOOD THERAPY mark.  Complainant states that it has been using the GOOD THERAPY mark in commerce since as early as October 10, 2001, and argues that “[t]his use in commerce of the mark GOOD THERAPY grants Complainant common law rights in the mark as of the first date of use.”  Complainant goes on to argue that its GOOD THERAPY mark is not descriptive and cites section 2(f) of the Lanham Act, which “provides that the substantially exclusive and continuous use of the mark applied to the applicant’s goods for five years is prima facie evidence that the mark has become distinctive.”  Complainant connects these two arguments by stating “Complainant’s nearly thirteen years use of the mark establishes that Complainant’s use of the mark is distinctive to Complainant.  In addition, Complainant has distinctive common law rights in the mark GOOD THERAPY separate and distinct from the right conferred to Complainant in the registrations owned.”

 

Complainant does not, however, show any evidence or give any arguments that it had acquired common law rights in the GOOD THERAPY mark in the 2 years between its first use and Respondent’s registration of the disputed domain name in 2003.  Complainant did not provide any evidence at all that it has been the exclusive user of GOOD THERAPY, particularly pertaining to those early years.  Complainant also does not provide evidence of distinctiveness, again particularly pertaining to the period 2001 to 2003.  Thus, the Panel finds that Complainant has not shown common law trademark rights in GOOD THERAPY for purposes of Policy ¶ 4(a)(i).

 

Since Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

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 <goodtherapy.com> domain name remain with Respondent.

 

 

 

Sandra J. Franklin, Panelist

Dated:  July 12, 2013

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page