American Psychological Association, Inc. v. Kenneth Gottfried / Croatia
Claim Number: FA1903001834187
Complainant is American Psychological Association, Inc. (“Complainant”), represented by Adam Sikich of Dunner Law PLLC, USA. Respondent is Kenneth Gottfried / Croatia (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <americanpsychologicalassoc.com>, registered with Wild West Domains, LLC.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2019; the Forum received payment on March 14, 2019.
On March 15, 2019, Wild West Domains, LLC confirmed by e-mail to the Forum that the <americanpsychologicalassoc.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 March 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2019 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@americanpsychologicalassoc.com. Also, on March 21, 2019, 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 April 8, 2019.
On April 10, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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
Complainant is the largest and most prestigious association of psychologists in the world, with nearly 118,000 members worldwide, including researchers, educators, clinicians, consultants, and students. Complainant also is the country’s go-to authority on psychological issues in the U.S., and Complainant is dedicated to advancing the creation, communication, and application of psychological principles to benefit society and improve quality of life. Complainant has rights in the AMERICAN PSYCHOLOGICAL ASSOCIATION mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,568,980, registered May 14, 2002). See Compl. Ex. 3. Respondent’s <americanpsychologicalassoc.com> domain name is identical or confusingly similar to Complainant’s mark as it merely shortens the ASSOCIATION portion of Complainant’s mark to “assoc.”
Respondent has no rights or legitimate interests in the infringing domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to post defamatory statements about Complainant, and commercially benefits through the alleged solicitation of donations. See Compl. Exs. 4 & 5.
Respondent registered and uses the <americanpsychologicalassoc.com> domain name in bad faith. Respondent disrupts Complainant’s business by capitalizing on Complainant’s goodwill to attract people to the website, which Respondent uses to defame and disparage Complainant, while commercially benefitting by soliciting donations. See Compl. Exs. 4 & 5. Further, Respondent had actual knowledge of Complainant’s mark prior to registering the domain name given the longstanding use of the mark – over 125 years – and given the fact that Respondent contacted Complainant in 2016 to complain about Complainant’s policies.
B. Respondent
Respondent uses the domain name to provide truthful information to the public about Complainant, and does so under the protection of the First Amendment to the US Constitution.
The Panel notes that Respondent registered the at-issue domain name on October 21, 2018. See Compl. Ex. 1.
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.
Complainant claims rights in the AMERICAN PSYCHOLOGICAL ASSOCIATION mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,568,980, registered May 14, 2002). See Compl. Ex. 3. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Accordingly, the Panel finds that Complainant has established rights in the AMERICAN PSYCHOLOGICAL ASSOCIATION mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <americanpsychologicalassoc.com> domain name is identical or confusingly similar to Complainant’s mark as it merely shortens the ASSOCIATION portion of Complainant’s mark to “assoc.” The Panel also notes that the domain name includes the “.com” generic top-level domain (“gTLD”).
The Panel finds that the shortening of a term in a mark and the addition of a gTLD generally fail to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel finds that the domain name, <americanpsychologicalassoc.com>, is confusingly similar to the AMERICAN PSYCHOLOGICAL ASSOCIATION mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <americanpsychologicalassoc.com> domain name, as Respondent is not commonly known by the domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Relevant information provided by WHOIS, submissions by Complainant regarding the nature of its relationship with Respondent, and other evidence in the record support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
The WHOIS identifies “Kenneth Gottfried / Croatia” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose.
Accordingly, the Panel agrees that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the domain name to post defamatory statements about Complainant, and commercially benefits through the alleged solicitation of donations. Complainant provides screenshots of the resolving webpage associated with the domain name, which appears to contain information relating to Complainant, such as “The American Psychological Association: Murders of Children, Parents and Destroyers of Families. FACT.” along with options to donate money. See Compl. Exs. 4 & 5.
Respondent contends that it has a constitutional right to use the domain name for the purpose of providing information about Complainant, and also states that all of the information available on the website is true and accurate and thus not disparaging. Respondent states further that it has discontinued all solicitation of donations.
Using a domain name to post criticism about a complainant generally fails to confer rights and legitimate interests in a domain name. See Pepsico, Inc. v. Leeds, FA 117870 (Forum Sept. 27, 2002) (“Domain names . . . per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name.”).
Under certain circumstances, a respondent can be found to have rights and legitimate interests in a domain name used as an Internet speech forum under Policy ¶ 4(a)(ii). See Capgemini North America, Inc. v Randel Tomina, FA 1658191 (Forum Apr. 11, 2016) (“UDRP panels have repeatedly stated that a U.S.-based website engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark.”); see also Homer TLC, Inc. v. GreenPeople, FA 550345 (Forum Oct. 25, 2005) (holding that the respondent’s use of the <homedepotsucks.com> domain name as a protest site was a legitimate noncommercial or fair use).
Based on the statements and documents submitted in accordance with the Policy, these Rules and other rules and principles of law deemed applicable, the Panel finds that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel also finds that Respondent has failed to come forward with evidence of its own rights and legitimate interests, as Respondent’s use does not amount to a legitimate noncommercial or fair use.
Accordingly, the Panel agrees that Respondent’s use of the <americanpsychologicalassoc.com> domain name does not confer rights and legitimate interests in the same under the Policy.
Registration and Use in Bad Faith
Complainant claims that Respondent disrupts Complainant’s business by capitalizing on Complainant’s goodwill to attract people to its website, which Respondent uses to defame and disparage Complainant, while commercially benefitting by soliciting donations. Using a confusingly similar domain name in a manner disruptive of a complainant’s business by trading upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
As noted above, Complainant provides screenshots of the resolving webpage associated with the domain name, which appears to contain information relating to Complainant, such as “The American Psychological Association: Murders of Children, Parents and Destroyers of Families. FACT.” along with options to donate money. See Compl. Exs. 4 & 5.
Complainant further argues that Respondent uses the domain name to post defamatory statements about Complainant in bad faith. Further, Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the AMERICAN PSYCHOLOGICAL ASSOCIATION mark at the time of registering the <americanpsychologicalassoc.com> domain name. Complainant contends that Respondent’s knowledge can be inferred given the longstanding use of the mark – over 125 years – and given the fact that Respondent contacted Complainant in 2016 to complain about Complainant’s policies.
Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Respondent claims that it uses the <americanpsychologicalassoc.com> domain name to provide truthful information to the public about Complainant, and does so under the protection of the First Amendment to the US Constitution. Past Panels have held that respondents can avoid a finding of bad faith where they use domain names to post criticism pursuant to their First Amendment rights.
Respondent claims that it has discontinued solicitation of donations on the website.
Based on the evidence, the Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
Further, using a domain name to post criticism about a complainant can evince bad faith under Policy ¶ 4(a)(iii). See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”). Complainant provides screenshots of the resolving webpage associated with the domain name, which contain statements such as “The American Psychological Association: Murders of Children, Parents and Destroyers of Families. FACT.” See Compl. Ex. 5.
Under the facts and circumstances of this case, the Panel is not convinced that Respondent’s use of the disputed domain amounts to a proper exercise of its constitutional rights of free speech and finds that Respondent uses the domain name to host a criticism site about Complainant when conducting its bad faith analysis under the Policy.
The Panel finds further that Respondent’s use of the domain name disrupts Complainant’s business through use of Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <americanpsychologicalassoc.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: April 28, 2019
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