DECISION

 

American Psychological Association, Inc. v. Reference Point Software, L.L.C.

Claim Number: FA0306000162195

 

PARTIES

Complainant is American Psychological Association, Inc., Washington, DC ("Complainant") represented by Brian D. Anderson of Oblon Spivak, McClelland, Maier & Neustadt, P.C. Respondent is Reference Point Software, L.L.C., Reisterstown, MD ("Respondent") represented by Timothy J. Madden.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <apa-style.com> and <style-apa.com> registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Rodney C. Kyle as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 12, 2003; the Forum received a hard copy of the Complaint on June 16, 2003.

 

On June 13, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <apa-style.com> and <style-apa.com> are registered with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 June 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@apa-style.com and postmaster@style-apa.com by e-mail.

 

A timely Response was received and determined to be complete on July 7, 2003.

 

A timely Additional Submission from Complainant was received and determined to be complete on July 14, 2003.

 

On July 22, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Rodney C. Kyle as Panelist.

 

RELIEF SOUGHT

Complainant requests that registration of each of the domain names at issue be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Basically, in the Complaint, Complainant makes three main contentions and submits evidence it contends supports aspects of them.

 

First, Complainant basically contends by way of three points that (i) each of the domain names at issue is registered to Respondent, beginning from September and October 2000; (ii) there are three marks in which Complainant has trademark rights: U.S. Trademark Registration No. 2,374,449 for APA-STYLE HELPER (for computer software in the form of a guide for assisting in the writing of scholarly papers in the fields of psychology and the social sciences, which mark Complainant used in commerce at least as early as August 13, 1998), APA STYLE to which Complainant has common law rights and a U.S. federal application filed on May 19, 2003 (for (1) downloadable electronic journals pertaining to psychological topics periodically published and distributed to members and to other persons in the psychology and social science communities, and (2) printed manuals for computer software in the form of a guide for assisting in the writing of scholarly papers in the fields of psychology and the social sciences, based on using that mark in connection with printed manuals at least as early as 1990 and in connection with downloadable electronic journals at least as early as August 1, 2001), and APA to which Complainant has common law rights by having used that mark in connection with its goods and services for several decades; and (iii) each of the domain names at issue is identical or confusingly similar to one or more of said trademarks, and more particularly that each of the domain names at issue is confusingly similar to Complainant's APA-STYLE HELPER mark despite doing either or both of (as per Edward Hines Lumber Co. v. Genesis Group OSI, FA 97697 (Nat. Arb. Forum July 30, 2001)) omitting one word (i.e."helper") or (as per Piaggio & C.S.p.A. v. Pierpaolo Breda, D2001-1075 (WIPO October 17, 2001)) switching the order of the words.

 

Second, Complainant basically contends by way of six points that Respondent has

no "rights or legitimate interests" in respect of either of the domain names at issue in that (i) Complainant has not authorized Respondent to register either of the domain names at issue, though before this dispute Complainant was amenable to Respondent's use of "APA Style" as a subtitle in the product name of one of Respondent's products if Respondent's promotional material included a disclaimer of affiliation with Complainant, such amenability having resulted from prior negotiations regarding a potential arrangement and from the facts detailed in item "(v)" of this paragraph; (ii) expressly referring to Policy paragraph 4(c)(i): before any notice of the dispute to Respondent, Respondent did not use, or make demonstrable preparations to use, either of the domain names at issue or a name corresponding to either of the domain names at issue, in connection with a bona fide offering of goods or services, in that (as detailed in item "(vi)" of this paragraph), Respondent is a competitor of Complainant and is using domain names that are confusingly similar to Complainant's APA-STYLE HELPER mark to misleadingly direct Internet users to Complainant's website, which, as per Inverlink Consultores S.A. v. Besa, S.A., FA 97287 (Nat. Arb. Forum July 23, 2001), is neither a bona fide use nor a legitimate interest; (iii) expressly referring to Policy paragraph 4(c)(ii): Respondent (as an individual, business, or other organization) has not been commonly known by either of the domain names at issue and instead Respondent is known as Reference Point Software; (iv) expressly referring to Policy paragraph 4(c)(iii): Respondent is not making a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers, in that (as detailed in item "(vi)" of this paragraph), Respondent is a competitor of Complainant and is using the domain names at issue to intentionally mislead and divert consumers to Respondent's website, which, as per Inverlink, supra, ESAT Digifone Ltd. v. Fitzgerald, D2000-0602 (WIPO Aug. 2, 2000), and Arab Bank for Investment and Foreign Trade v. Wagenheim, D2000-1400 (WIPO Dec. 19, 2000), cannot be considered legitimate; (v) facts relating to the above-mentioned past amenability include that:

-           a college librarian had inquired of Complainant regarding what appeared to be an APA software product for formatting papers pursuant to the Complainant's style rules, but the librarian was actually referring to Respondent's product, so Complainant objected to Respondent's use of APA in its product names in that  on November 27, 1995, Complainant wrote to Mr. Plaut of Respondent objecting to use of APA FOR WORDPROCESSING (APA4WP) as the name of their product on the ground that it created a likelihood of confusion with Complainant's products,

-           in a letter dated December 5, 1995, Respondent agreed to change the name of the product and use a disclaimer, and Mr. Plaut indicated his intent to use "Reference Point Templates for APA Style" as the new product name and that all changes to labels and promotional materials would be complete by the end of January 1996,

-           Complainant accepted Respondent's new product name in a letter dated December 12, 1995, and

-           Complainant found that copies of Respondent's promotional material bearing the product name APA STYLE FOR WORD PROCESSING and APA4WP were circulating as late as mid-1996  but Respondent explained that that material was old, and that Respondent had changed Respondent's promotional materials as agreed in December 1995,  so in light of Respondent's assurances at that time, Complainant took no further action on that matter; and lastly that

(vi) facts relating to the above-mentioned Complainant-Respondent competition, and Respondent’s use of the domain names at issue, include that:

-           since 1998, Complainant has offered its APA-STYLE HELPER software as a companion to an editorial style manual published by Complainant, 

-           Respondent's registration and use of the domain names at issue came to Complainant's notice on or around August 7, 2002, when Complainant became aware that Respondent had registered each of the domain names at issue, and that the domain names at issue were being used to redirect Internet users to Respondent's website at <www.charm.net/~rps/>,

-           said website included a product information page with the heading "APA-Style Template" and with text beginning with "APA style, APA format," in bold text, that the title to the page, which appears in the header of the printout and the top left of the Internet Explorer browser, reads "APA Software by Reference Point Software.  Make Apa Style, Format and Referencing a Snap," and that no disclaimers were present on the website,

-           printouts from what is commonly referred to as the Waybackmachine evidence that Respondent was using the domain names at issue to direct visitors to its website during 2001, in that users typing in, or linking to, the domain names at issue would automatically arrive at Respondent's website,

-           Respondent's use of APA and APA STYLE in the domain names at issue and on its website was contrary to the above-mentioned earlier understanding between the Parties, so Complainant, through its outside counsel, wrote to Respondent on October 29, 2002 demanding that Respondent cease all use of APA STYLE and transfer the domain names at issue to Complainant,

-           Respondent responded through counsel in a letter dated November 15, 2002, denying infringement and indicating that the changes Respondent had made to its website and advertising materials were temporary, and

-           further communications between the Parties did not resolve the dispute.

 

            Third, Complainant basically contends by way of three points that Respondent's

            registration and use of each of the domain names at issue is in bad faith, in that at the

            time Respondent registered the domain names at issue Respondent clearly had actual

            notice, or had knowledge, of at least Complainant's APA-STYLE HELPER mark and the

            Parties had engaged in significant communications regarding Respondent's use of APA

            and APA STYLE in its product names in a manner that causes a likelihood of confusion,

            and, in any event, (i) expressly referring to Policy paragraph 4(b)(ii): Respondent

            registered the domain names at issue in order to prevent Complainant from reflecting at

            least the APA-STYLE HELPER mark in a corresponding domain name, in that

            Respondent has registered two variations of Complainant's mark, which constitutes a

            pattern of conduct under the Policy as per Meijer, Inc. v. Porksandwich Web Services,

            FA 97186 (NAF July 6, 2001); (ii) expressly referring to Policy paragraph

            4(b)(iii): Respondent and Complainant are competitors of one another (in that

            Respondent produces software that competes with Complainant's products) and

            Respondent registered the domain names at issue primarily for the purpose of disrupting

            the business of Complainant (in that Respondent's use of the domain names at issue to

            promote the services of Respondent and to direct Internet users and consumers to

            Respondent's website trades upon at least Complainant's APA-STYLE HELPER mark);

            and (iii) expressly referring to Policy paragraph 4(b)(iv): by using the domain names at

            issue, Respondent intentionally attempts to attract, for commercial gain, Internet users to

            Respondent's website by creating a likelihood of confusion with at least Complainant's

            APA-STYLE HELPER mark as to the source, sponsorship, affiliation, or endorsement of

            Respondent's website.

 

B. Respondent

Basically, in the Response, Respondent makes three main contentions and submits evidence it contends supports aspects of them.

 

First, in response to Complainant's first main set of contentions, although Respondent makes various other contentions, Respondent does not put in issue either (i) the first of Complainant's three points (which is as to the basic facts of the registrations of the domain names at issue); or (ii) the APA-STYLE HELPER aspects of Complainant's second point (which is as to the trademark registration existence and ownership by Complaint, trademark registration scope, and date of first use of that mark in commerce) and of Complainant's third point (which is that each of the domain names at issue is confusingly similar thereto).

 

Second, in response to Complainant's second main set of contentions, Respondent apparently does not put in issue the aspect of Complainant's second and fourth points  that Respondent is a competitor of Complainant; indeed, Respondent pleads that Respondent sells a software template which sets up a blank document in the editorial style set forth in the manual published by Complainant. As well, Respondent apparently does not put in issue Complainant's third point (which third point denies that Policy paragraph 4(c)(ii) avails Respondent). Respondent does however basically make contentions by way of two points. Respondent's first contention is largely against Complainant's first point (which Complainant's first point is of Complainant's non-authorization of Respondent's registration of either of the domain names at issue and is also of Complainant's conditional, past, amenability to Respondent's use of "APA Style" as a subtitle in the product name of one of Respondent's products, as particularized in Complainant's fifth point); Respondent's second contention is largely against Complainant's second and fourth points (which Complainant points respectively deny that Policy paragraphs 4(c)(i) and 4(c)(iii) avail Respondent, and are particularized in Complainant's sixth point). Respondent's two contentions basically are that (i) for a period of time ending in July of 1994, Complainant attempted to acquire Respondent's software template and what little communication there was between the Parties between July of 1994 (when Complainant's attempts to acquire the software terminated) through June of 1996 was centered on what Complainant considered Respondent's trading upon the acronym of Complainant's name but, unsuccessful in its quest to obtain Respondent's software template, Complainant apparently otherwise acquired or developed its own software template years later; and (ii) the communications between the parties prior to July of 1996 did not concern the domain names at issue and instead it was in a period of approximately six years during which the parties had no communication with one another that Respondent did register the domain names at issue (four years, in fact, after the parties had last communicated), and Respondent then utilized the domain names at issue for a period of over two years without objection from Complainant in that, without any notice of dispute from Complainant, Respondent used the domain names at issue as part of its overall marketing, including that both customers and potential customers alike utilized the domain names at issue as a method of contacting and doing business with Respondent.

 

Third, basically in response to Complainant's third main set of contentions, Respondent basically contends by way of three points that despite Complainant's Policy paragraph 4(b)(ii), 4(b)(iii), and 4(b)(iv) contentions, Complainant has provided no evidence respectively that (i) Respondent prevented the owner of a mark from reflecting the mark in a corresponding domain name, let alone a pattern of such conduct-- instead: Respondent did nothing to prevent Complainant from reflecting the mark in a corresponding domain name and Complainant was free during this period of time to reflect  the mark in a domain name and did so, whereas Complainant did not object until the fall of 2002 (i.e. some two-plus years after the domain names at issue were registered, which registration occurred some four years after negotiations broke down regarding the acquisition of Respondent's template and the discussions between the parties over the use of the letters APA ended); (ii) Respondent registered the domain names at issue for the purpose of disrupting the business of a competitor (i.e. Complainant)-- instead:

Respondent registered the domain names at issue for the purpose of furthering its own business and in a period during which the parties had no contact with one another for approximately four years and, as mentioned above, previous to Respondent's registrations, Complainant registered its domain name; and (iii) Respondent intentionally  attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with any mark of Complainant as to the source, sponsorship, affiliation, or endorsement of the website-- instead: on both Respondent's hard copy and electronic materials Respondent disclaimed being associated or affiliated with Complainant.

 

C. Additional Submission

Complainant's Additional Submission appears to not permissibly provide anything pertinent that, in view of the Complaint and the Response, was not already apparent to the Panel as being at issue in this proceeding or as being the responsibility of the Panel.

 

FINDINGS

The Panel finds:

(i)                  each of the domain names at issue is registered to Respondent, there is the U.S. trademark registration of APA-STYLE HELPER in which Complainant has rights, and each of the domain names at issue is confusingly similar thereto;

(ii)                Respondent has no rights or legitimate interests in respect of either of the

domain names at issue; and

(iii)       each of the domain names at issue has been registered and is being used in bad faith.

 

DISCUSSION

Introduction

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 and 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:

(i)                  the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii)                the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)              the domain name has been registered and is being used in bad faith.

 

In view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to ascertaining whether each of those three elements has been proven. First, that:

Both [dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By judicial admission (what is not disputed); 2. By judicial notice, or knowledge (what is known or easily knowable); 3. By judicial perception (what is ascertained directly through the senses; cf. "real evidence"); 4. By judicial inference (what is ascertained by reasoning from facts already ascertained by one or more of the four methods here outlined).[1]

Second, especially as to mode "3", that Rule 10(d) provides that "The Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Third, as to construing and applying Rule 10(d), especially as to whether mode "1" rather than mode "3" applies: a complainant's pleading of fact that is not disputed (or, phrased differently, not "put in issue") by a respondent against whom it is contended, is an admission by that respondent,[2] so evidence tendered as being rationally probative of (i.e. as being "relevant to") establishing that fact becomes immaterial, and hence inadmissible, as to establishing that fact.[3] Fourth, as to whether mode "2" rather than either of mode "1" or mode"3" applies, a canvassing of law and commentary shows that:

It was not desirable, nor indeed possible, to foreclose the trier's use of background information but should the matter noticed be in the forefront of the controversy, should the fact be determinative, the law protected the adversary by insisting that the matter be so commonly known, and hence indisputable, that its notice could not prejudice the opponent.[4]

and that "The party who has the burden of proof on the issue may have to call on the trier to judicially notice the fact when it comes time to analyze the question."[5]

 

Identical or Confusingly Similar

The third of the four rules and principles of law set out in the immediately preceding paragraph hereof is applicable to some of the Parties' contentions on this topic. Specifically, the Panel finds that Respondent admits the following: (i) the first of the above-listed of Complainant's three points on this topic (including that the domain names at issue are registered to Respondent beginning from September and October 2000); and (ii) the APA-STYLE HELPER aspects of Complainant's second and third points on this topic (including that Complainant has U.S. Trademark Registration No. 2,374,449 for APA-STYLE HELPER and that each of the domain names at issue is confusingly similar thereto).

 

In view especially of the immediately preceding paragraph hereof, Policy paragraph 4(a)(i) is proven as to each of the domain names at issue.

 

Rights or Legitimate Interests

The context in which this part of this discussion occurs includes (i) Policy paragraph 4(c); and (ii) administrative panel decisions as to burden of production.

 

Policy Paragraph 4(c)

Policy paragraph 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that:

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of [Policy paragraph] 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

(See endnote 2 hereof for some provisions of Rule 5.)

 

As for Policy paragraph 4(c)(ii) and the preamble of Policy paragraph 4(c), neither of them appears to be contended for by Respondent. More particularly, Respondent's contention that, without objection from Complainant, Respondent used the domain names at issue for approximately two years after those domain names were registered, as part of its overall marketing, including that both customers and potential customers alike utilized the domain names at issue as a method of contacting and doing business with Respondent, does not actually appear to be a contention within either of those Policy paragraph 4(c) provisions. As for Policy paragraph 4(c)(ii), see RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy paragraph 4(c)(ii) to require a showing that a respondent has been commonly known by the domain name prior to registration of the domain name in order for that respondent to prevail; moreover, Complainant's undisputed contentions (which are therefore admitted by Respondent) include that Respondent is known as Reference Point Software and that the domain names at issue automatically resolve to Respondent's website at <www.charm.net/~rps/>, all of which would tend to point away from the conclusions that would be contended for by Respondent. As for the Policy paragraph 4(c) preamble, Respondent does not dispute, and therefore admits, that Respondent's registration and use of the domain names at issue came to Complainant's notice on or around August 7, 2002; Respondent's contention does not avail Respondent because it is a contention that even though during those two years Complainant did not know of such registration and use, and apparently had no reason to suspect such registration and use, that by such registration and use Respondent nonetheless obtained Policy paragraph 4(a)(ii) "rights or legitimate interests."

 

As for Policy paragraphs 4(c)(i) and 4(c)(iii), each of them appears to be contended for by Respondent, such as by pleading and by evidence. The resulting issue appears to be whether, by the communications around 1995 and 1996 between the Parties or by some other means, within either of those two Policy paragraphs Respondent has a privilege to have registered, and has a privilege to use, each of the domain names at issue. The Panel resolves that issue through five basic considerations.

 

First, the Panel takes judicial notice of 15 U.S.C. §1057 (entitled "Certificates of registration")[6] and of 37 C.F.R. §2.151 (entitled "Certificate")[7] made in accordance therewith, as well as of U.S. Patent and Trademark Office practice regarding certificates (to the extent that taking judicial notice of such practice was possible by analogy with that Office's Trademark Electronic Search System, "TESS", available at <http://www.uspto.gov/main/trademarks.htm>) and combines such judicial notice with a fact previously found by the Panel. Specifically, the "TESS" record for Complainant's APA-STYLE HELPER registration shows that the date of registration is August 8, 2000 and, when that is combined with the above discussion on the topic of confusing similarity (which yields that Respondent registered the domain names at issue in September and October 2000), the Panel finds that for on the order of one to two months before Respondent registered the domain names at issue Respondent had constructive notice of Complainant's APA-STYLE HELPER trademark rights.

 

Second, Respondent is a competitor of Complainant. (Complainant pleads such, and Respondent does not deny it and hence admits it; indeed, Respondent's pleading as to Respondent's selling its particular software template amounts to an admission of competing with Complainant's APA-STYLE HELPER software.) As a result, such constructive notice of Complainant's APA-STYLE HELPER trademark rights appears to basically be dispositive of the Policy paragraph 4(c) issue unless, by the communications between the Parties around 1995 and 1996 or by some other means, Respondent has the above-defined privileges. As for such communications, in response to Complainant's contention that Respondent's registration and use of the domain names at issue was contrary to those communications Respondent basically contends that those communications did not cover those domain names and, in any event, that Respondent complied with the communications. Accordingly, the Parties evidence of those communications and of Respondent's promotional materials is material; basically, it is also relevant and admissible. As shown in the following two paragraphs, in view especially of that evidence, Complainant has made a prima facie showing as to each of the domain names at issue.

 

Third, as for evidence of the communications between the Parties, Complainant submitted evidence (i.e. Complaint Exhibits 10, 11, 12, and 13) as did Respondent (i.e. Response Exhibits 5, 6, 7, 8, 9, 10, 11, 12, and 13, the first three of which largely deal with template acquisition and the last six of which basically repeat Complaint Exhibits 10, 11, 12, and 13). Those exhibits do not appear to show that the communications between the Parties around 1995 and 1996 referred to domain names; instead, they appear to show that those communications referred to and cover Respondent product names and the use thereof in Respondent promotional materials, and as a result Respondent appears to be correct in contending that those communications did not cover the domain names at issue. However, that is not to say that as a result of those communications Respondent has a privilege to have registered, and has a privilege to use, each of the domain names at issue. Instead, Respondent does not have either such privilege. Basically, as in Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000), so too in this case:

[Respondents] mistakenly, and unreasonably, rely on [a letter from the complainants] to justify their alleged "fair use". That letter does refer to "fair use", but only in the context of use of [the complainants'] marks in the text at a website itself, not in a domain name

(underlining added) and as in Allen-Edmonds Shoe Corp. v. Takin’ Care of Business, D2002-0799 (WIPO Oct. 10, 2002), so too in this case:

even where a reseller is an authorized reseller, without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name. Nikon, Inc. and Nikon Corporation v. Technilab, Inc., WIPO D2000-1774 (February 26, 2001); 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000) ("licensee’s use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself."). Thus, even if Respondent is acting on behalf of an "authorized" dealer (indeed, even if Respondent were itself an authorized dealer), its use of Complainant’s mark would not be legitimate absent a specific agreement between Complainant and Respondent to the contrary. There is no evidence of such an agreement here. The Panel finds that Complainant has shown that Respondent has no legitimate interest in the domain name.

(Underlining added.)

 

Fourth, there is the evidence of Respondent's promotional materials. Complainant submitted evidence relating to usage of "APA Style" in 2002 and 2001 in Respondent's website prior to notice of this dispute to Respondent (i.e. Complaint Exhibits 15 and 16 respectively) by which it appears that the website included some content that complied with the communications (such as references to "Reference Point Templates for APA Style") but also included content that clearly does not comply (such as "APA-Style Template" or "APA Style", each on its own rather than as a product name subtitle, and "APA Style Templates for Word Processing" which is basically the opposite of the communications' required "Reference Point Templates for APA Style"). Also, by that Complainant’s evidence it appears that Respondent's website did not have any sort of disclaiming text. All this evidence from Complainant is of substantial weight in Complainant's favor. In contrast, Respondent submitted evidence of its promotional materials which, although containing disclaimers of Respondent’s affiliation with Complainant, is either not apparently from a website and is undated (i.e. Response Exhibit 23 which appears to be the front and back of a copy of a Respondent brochure from sometime in 2002 or later and which basically includes the required subtitling) or is dated 7 July 2003 (i.e. the date of the Response) and is from what the Panel has been referring to as Respondent's website (i.e. Response Exhibit 19) or from a website comprising Respondent's name (i.e. Response Exhibit 20). The copies in each of those three Response Exhibits also contains either or both of "APA Style" and "APA style" on its own rather than as part of a product name subtitle. All this evidence from Respondent is of little or no weight in Respondent's favor.

 

Fifth, in view of all of the above, Complainant has made a prima facie showing that Respondent's activities in respect of each of the domain names at issue were not "bona fide" within the meaning of that expression as it appears in Policy paragraph 4(c)(i) and were neither "without intent for commercial gain to misleadingly divert consumers" nor "legitimate noncommercial or fair use of the domain name" within the meaning of those two expressions as they appear in Policy paragraph 4(c)(iii).

 

Administrative Panel Decisions As To Burden Of Production

Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this case, as to each of the domain names at issue "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue" (emphasis in original). (To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002).) Respondent has not met that burden as to either domain name at issue.

 

Summary

In view especially of the ten immediately preceding paragraphs hereof, Policy paragraph 4(a)(ii) is proven as to each of the domain names at issue.

 

Registration and Use in Bad Faith

The context in which this part of this discussion occurs includes Policy paragraph 4(b).

 

Policy paragraph 4(b) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that:

For the purposes of [Policy paragraph] 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

 

As for each of Policy paragraphs 4(b)(i), 4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith registration and provide that if any one of such types of registration has been ascertained by a panel then bad-faith use is in turn evidenced via application of the respective one of those three provisions. In this proceeding, although Policy paragraph 4(b)(i) does not appear to be contended for, Policy paragraphs 4(b)(ii) and 4(b)(iii) appear to be contended for. However, in view of the Panel's disposition of the Parties' contentions regarding Policy paragraph 4(b)(iv), it is unnecessary for the Panel to further address the Parties' Policy paragraph 4(b)(ii) and 4(b)(iii) contentions.

 

As for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and provides that if such type of use is ascertained by a panel then bad-faith registration is in turn evidenced via application of that provision. In this proceeding, Policy paragraph 4(b)(iv) is contended for by Complainant and against by Respondent, each in ways set out above and that will not be repeated here; in support of its contention Respondent submitted Response Exhibits 19, 20, and 23. Those exhibits no more avail Respondent in connection with Policy paragraph 4(a)(iii) than they availed Respondent in connection with Policy paragraph 4(a)(ii), and it is clear (from the above reasons given under the headings of "Identical or Confusingly Similar" and "Rights or Legitimate Interests") that the following circumstances are present: by Respondent's use of each of the domain names at issue, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site, by creating a likelihood of confusion with Complainant's APA-STYLE HELPER mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site. Similarly, see e.g. G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) and Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).

 

Moreover, as for website disclaimers (as contrasted with Respondent's Exhibit 19, 20, and 23 evidence of webite disclaimers, to which evidence the Panel ascribed above, and still ascribes, little or no weight in Respondent's favor), see e.g. Madonna Ciccone p/k/a Madonna v. Parisi and 'Madonna.com, D2000-0847, (WIPO Oct. 12, 2000), which is extensively cited and applied for the proposition that:

Respondent's use of a disclaimer on its web site is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet Users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent's actions.  Such confusion is a basis for finding a violation of Complainant's rights.

Similarly see e.g. Prudential Ins. Co. of Am. v. Prudential Mortgage Loans, FA 103880, (Nat. Arb. Forum March 20, 2002), which includes that the "fact that the Internet user ultimately discovers that a site is not that of Complainant, or that Respondent disclaims any association with Complainant, does not cure the fault." 

 

In view especially of the five immediately preceding paragraphs hereof, Policy paragraph 4(a)(iii) is proven as to each of the domain names at issue.

 

DECISION

All three elements required under the Policy having been established regarding each domain name at issue, the Panel concludes that the relief requested by Complainant shall be GRANTED.

 

Accordingly, it is Ordered that the <apa-style.com> and <style-apa.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Rodney C. Kyle, Panelist
Dated: August 5, 2003

 

 

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