Shepherd Center, Inc. v. David / David Kindschi
Claim Number: FA1008001339860
Complainant is Shepherd Center, Inc. (“Complainant”), represented by Cynthia Lee, of Thomas / Kayden, Georgia, USA. Respondent is David / David Kindschi (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <beyondtherapy.org>, registered with DSTR Acquisition PA I, LLC d/b/a DomainBank.com.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
G. Gervaise Davis III and Jeffrey M. Samuels as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2010.
On August 10, 2010, DSTR Acquisition PA I, LLC d/b/a DomainBank.com confirmed by e-mail to the National Arbitration Forum that the <beyondtherapy.org> domain name is registered with DSTR Acquisition PA I, LLC d/b/a DomainBank.com and that the Respondent is the current registrant of the name. DSTR Acquisition PA I, LLC d/b/a DomainBank.com has verified that Respondent is bound by the DSTR Acquisition PA I, LLC d/b/a DomainBank.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2010 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 email@example.com by e-mail. Also on August 19, 2010, 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 September 8, 2010.
A timely Additional Submission from the Complainant was received on September 13, 2010. This submission was compliant with Supplemental Rule 7.
On September 21, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed G. Gervaise Davis III and Jeffrey M. Samuels as Panelists, and Richard Hill as Presiding Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges that it is a non-profit corporation, and one of the top rehabilitation hospitals in the US, specializing in medical treatment, research, and rehabilitation for people with spinal cord or brain injury. It provides various services using the mark BEYOND THERAPY.
The Complainant states that it first used the mark BEYOND THERAPY in July 2005 and that it was registered on June 29, 2010. It did not grant any licenses or permission to the Respondent to use that mark.
Further, according to the Complainant, the Respondent has never used the mark in connection with a bona fide offering of goods or services, nor was he otherwise known by the name BEYOND THERAPY. Thus the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the disputed domain name was registered and is being used in bad faith because the contents of the web site at the disputed domain name is not in any way related to a legitimate prior use of the BEYOND THERAPY mark. Indeed, the site appears to be geared to generating click-through revenue by advertising various services which are not related to the term BEYOND THERAPY.
The Respondent states:
The Complainant’s trademark was acquired in 2010 and it has only been doing business since 2005. A simple “whois” lookup shows that I registered the domain name for 10 years in 2003. I got it with the purpose of doing business in an industry that is completely different than that of the Complainant. It is absolutely impossible for me to have had any intent to infringe on a trademark for a business that was not in existence when I got the domain name. My inability to execute my business plans in the time I had hoped does not constitute “bad faith” and I have not given up my goals.
I have not contacted or considered contacting the Complainant to sell them the domain name and my intended use is entirely unrelated to them.
I have not sold advertising or redirected traffic based on the name. It is currently parked at a domain hosting company that puts a placeholder page with ads, a standard industry practice for which I receive no compensation. This unintentional use is not in my control.
This “dispute” is absurd. Absent psychic powers there is no way I could have known they would start a business with the same name as the one I hope to start. This is simply an attempt to intimidate an individual with limited resources.
C. Additional Submissions
In its Additional Submission, the Complainant alleges that the generic top-level domain “.org” was originally intended for non-profit organizations or organization of a non-commercial character. It alleges that it is precisely such an organization and that therefore it should be entitled to use the disputed domain name.
According to the Complainant, the Respondent, in his Response, has not demonstrated any legitimate interest in the disputed domain name. Nor does the Respondent explain in any detail how or why he chose to register the disputed domain name, in particular in the “.org” top-level domain.
According to the Complainant, the Respondent’s lack of use of the disputed domain name demonstrates his bad faith.
The Respondent registered the disputed domain name in 2003. At that time, the Complainant did not exist as a business entity.
The Complainant first used its trademark BEYOND THERAPY in 2005.
The Respondent is using the disputed domain name to point to a web site offering sponsored links to various types of web sites and services.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Since each element of the Policy is dispositive, the Panel finds that it need not analyze this element of the Policy, for the reasons given below. 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);
For the reasons set forth below, the Panel finds that it need not analyze this element of the Policy.
The Respondent argues that at the time it registered the disputed domain name in 2003, the Complainant did not exist as a business entity. The Complainant does not contest this allegation. Indeed, the Complainant’s trademark registration gives 2005 as the year of first use in commerce, and there is no evidence of any use by Complainant of the BEYOND THERAPY mark prior to 2003 that would give rise to rights in the mark.
The Respondent argues that it could not have registered the disputed domain name in bad faith if Complainant did not own a business or a trademark when he registered the disputed domain name.
Indeed, it is well-established case-law under the UDRP that, in general, a finding of bad faith registration cannot be made with respect to a trademark that did not exist at the time of registration of the disputed domain name. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions says at 3.1:
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.
In support of this, see Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark); see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO Oct. 5, 2001) (finding that it is “impossible” for the respondent to register disputed domain name in bad faith if the complainant company did not exist at the time of registration).
The Complainant argues that the Respondent has not used the disputed domain name, and that this demonstrates his bad faith. But this allegation is not correct. As the Complainant itself points out, the Respondent is using the disputed domain name to point to a web site offering sponsored links to various services. The Respondent states that he is not receiving any revenue from those links. But that is irrelevant in the present case with respect to the issue of bad faith registration. It cannot be denied that the Respondent is in fact using the disputed domain name, and that his registration of the disputed domain name did not violate the Policy because he registered the disputed domain name well before the Complainant started to use its trademark.
In light of the above, the Panel finds that the Respondent did not register the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Although the Respondent has not invoked this provision, the Panel holds that it can analyze this element of the policy at its own initiative.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, <smartdesign.com> D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, <goldline.com> D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, <sydneyoperahouse.net> D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, <planexpress.com> D2000-0565 (WIPO, July 17, 2000).
The Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the string BEYOND THERAPY. Indeed, the Complainant annexes a printout of the WHOIS registration to the Complaint, and that printout indicates that the domain name was registered well before the Complainant’s first use in commerce of its mark. This is sufficient to find reverse domain name hijacking. See NetDeposit, Inc. v. NetDeposit.com, D2003-0365 (WIPO July 22, 2003) (finding reverse domain name hijacking because “Respondent's domain name registration preceded the Complainant's creation of its trademark rights”).
Further, when it filed its Additional Response, the Complainant knew for sure that the registration of the disputed domain name preceded by several years any rights that the Complainant may have acquired in the string BEYOND THERAPY, because the Respondent put forth that very argument in his Response.
The Complainant did not contest that argument in its Additional Response, nor did it withdraw its Complaint. That is, the Complainant failed to address the dispositive issue of the case. By so doing, it abused this administrative procedure.
Further, the Complainant, in its
Additional Response, argues at length that it is the type of non-profit
organization that would be entitled to a domain name under the “.org” generic
top-level domain. Without evaluating the merits of that argument, the Panel
notes that the Complainant could have easily ascertained that the domain name
<beyond-therapy.org> is available, which domain name might allow the Complainant to promote its activities via the world-wide-web.
Indeed, the Complainant ascertained that <beyondtherapy.biz> is available, but it failed to explain why the Respondent—who did not act in bad faith in the sense of the Policy when he registered the disputed domain name—should have to change his domain name, as opposed to the Complainant acquiring a domain name that is not already in use.
Having analyzed the relevant elements of the ICANN Policy, the Panel concludes that relief shall be DENIED.
The Panel finds the Complainant has attempted Reverse Domain Name Hijacking.
Richard Hill, Presiding Panelist
G. Gervaise Davis III, Panelist
Jeffrey M. Samuels, Panelist
Dated: September 23, 2010
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