American Family Health Services Group,
LLC, ToughLove International, Inc., RONY Z, LLC, and David and Phyllis York v.
Vincent Logan
Claim Number: FA0312000220049
PARTIES
Complainants
are American Family Health Services
Group, LLC, ToughLove International,
Inc., RONY Z, LLC, and David and Phyllis York, (collectively, “Complainant”) represented by Steven J. Spiegel, Esq., of Spiegel &
Associates, LLC, One Railroad Avenue, P.O. Box 5, Goshen, NY 10924. Respondent is Vincent Logan, 612 Birchwood Drive, North Aurora, IL 60542
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is “toughlove.com”,
registered with Go Daddy Software, 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.
Hugues
G. Richard as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 18, 2003; the Forum received a hard copy of the
Complaint on December 23, 2003.
On
December 18, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain name <toughlove.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
December 31, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 20, 2004 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@toughlove.com by e-mail.
A
timely Response was received and determined to be complete on January 17, 2004.
On January 26, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Hugues G.
Richard as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
(i) Complainant’s intellectual property
Complainants
David York and Phyllis York are the owners of the following registered
trademark/service marks, in the United States:
Mark: Toughlove®
Registration Number: 1,323,169
Registration Date: March 5, 1985
Goods: Educational
self-help manual for parents troubled by teenage behavior (Int. Class 16)
Services: Educational services
namely, conducting seminars in the field of parent-child relationships.
(Int. Class 41)
Mark: Toughlove® with heart and fist logo
Registration Number: 1,229,641
Registration Date: March 8, 1983
Goods: Educational
self-help manual for parents troubled by teenage behavior (Int. Class 16)
Services: Educational
services namely, conducting seminars in the field of parent-child
relationships. (Int. Class 41)
Mark: Heart and fist logo
Registration Number: 1,597,392
Registration Date: May 22, 1990
Goods: Educational
self-help manual for parents troubled by teenage behavior (Int. Class 16)
Services: Educational
services namely, conducting seminars in the field of parent-child
relationships. (Int. Class 41)
In
addition to the above, Complainant American Family Health Services Group, LLC
(hereinafter, “AFHSG”), a duly authorized licensee of all the above marks with
rights to register additional marks using the Toughlove® name, has pending
applications with the Patent and Trademark Office to register the Toughlove®
name with respect to clinical treatment centers and human resource and employee
assistance services. AFHSG also has a
pending application to register the name Toughlove Centers for clinical treatment
centers.
(ii) Disputed domain name is identical to
Complainant’s trademarks/service marks
Complainant
contends that the disputed domain name, <toughlove.com>, is not merely confusingly similar, but identical
to the Toughlove® trademarks.
In
fact, since 1982, the trademark owners, David and Phyllis York, have allegedly
sold nearly two million copies of their original book entitled “TOUGHLOVE”, a
self-help book which offers support and education to families encountering
problems.
(iii) There exists a sufficient link between
Complainants to bring this Complaint as one entity
On
January 1, 1997, David and Phyllis York licensed the Toughlove®
trademarks to complainant ToughLove® International Inc., a non-profit
organization, as a means of facilitating the acceptance and application of the
“self-help” principles associated with the Toughlove® trademarks. Toward that
end, ToughLove® International Inc. has organized support groups and held
seminars throughout the country and also distributes cassettes and manuals to
assist families utilizing certain “self-help” principles. ToughLove® International Inc. also
operates a website at <toughlove.org> where consumers can find local
support groups, purchase Toughlove® manuals and tapes, and attend virtual
support classes.
Pursuant
to a further licensing agreement dated December 10, 2001, David and Phyllis
York granted to Complainant RONY Z, LLC the right to use the Toughlove®
trademarks as well as the exclusive right to develop and operate clinically
related for-profit ventures, including without limitation, on a
virtual/internet basis. By way of an
addendum to the licensing agreement, dated May 1, 2003, David and Phyllis York
also gave RONY Z, LLC the exclusive and sole right to institute proceedings to
protect the Toughlove trademarks and entitled RONY Z, LLC to be the beneficiary
of the result of any proceedings brought by RONY Z, LLC to protect the
Toughlove trademarks.
Pursuant
to a sublicense agreement dated April 1, 2002, RONY Z, LLC granted all its
license rights under the license agreement with the Yorks to sublicensee
complainant AFHSG.
As
sublicensee of the Toughlove® marks with sole and exclusive right to develop
internet based for-profit ventures utilizing the Toughlove® name, it is AFHSG
that is most interested in having the <toughlove.com> name transferred. It was also AFHSG that first
contacted Respondent about transferring the <toughlove.com> domain name.
(iv) Respondent has no
rights or legitimate interests in respect of the domain name
The
<toughlove.com> domain
name was first registered on February 14, 1998 to
Vinamy Corp.
According
to Complainant, on August 14, 2003, after Vinamy Corp. had been contacted by
Complainant AFHSG, the <toughlove.com>
domain name was transferred to current registrant/Respondent V. Logan, the same
individual that Complainant spoke with when contacting former registrant Vinamy
Corp.
Complainant
alleges that neither Respondent V. Logan nor former registrant Vinamy Corp. are
commonly known by the Toughlove® trademark and have never conducted any
business under the Toughlove® name.
Furthermore,
Complainant contends that neither Respondent V. Logan nor former registrant
Vinamy Corp. have used the <toughlove.com>
website in connection with a bona fide offering of goods and services or for a
legitimate noncommercial or fair use. In fact, prior to being contacted by
Complainant, the <toughlove.com>
website was simply a message board whereby users could post their “story.” No
mention was made that the website had no affiliation with the well-known
ToughLove® International organization.
Thus, Complainant contends that the website clearly was constructed
solely to divert consumers of Complainant’s Toughlove® products and services.
According to Complainant, a few visitors
to the <toughlove.com>
website even complained to Respondent that they were looking for the “REAL”
Toughlove and requested that the website show it was not affiliated with
Complainant’s organization. A few users
even posted to inform other diverted users where to find the “REAL” Toughlove.
After complainant AFHSG contacted
Respondent on or about March 2003, Respondent allegedly made several feeble
attempts to revise the website to try and fit the “fair use” requirement. To
date, the website remains nothing more than a place to post stories, with
plenty of pop-up advertising. The one
significant change that Respondent has made to the toughlove.com website in response to being contacted by
complainant, is a small disclaimer at the bottom of the homepage stating “Not
affiliated with Toughlove International.”
(v)
The “toughlove.com” domain name was registered and is being used
in bad faith
First,
Complainant recalls that the original registrant, Vinamy Corp., has previously
been found by the Forum to have registered a domain name in bad faith. In fact,
Vinamy Corp. was indeed forced to transfer a domain name it registered and then
offered to sell for ten thousand dollars ($10,000.00).
Second,
Complainant AFHSG has already offered to purchase the <toughlove.com> website. In response to AFHSG’s offer, Respondent V.
Logan allegedly asked “what type of compensation” AFHSG would be willing to
pay. When AFHSG responded that it would
only be willing to compensate Respondent for his expenses related to the site,
Respondent allegedly stopped communicating with AFHSG.
The
only explanation that Respondent allegedly gave AFHSG for not wanting to give
up the <toughlove.com>
website was Respondent V. Logan’s alleged desire to “maintain an ongoing
tribute” to his sister. Complainant AFHSG allegedly offered to maintain the
tribute but Respondent again failed to respond since AFHSG was only willing to
compensate Respondent for costs he incurred in registering the website.
According
to Complainant, once it became apparent to Respondent that Complainant would
not pay more than out-of-pocket expenses, Respondent cut off all communication
with Complainant and even left unclaimed a certified letter sent by
Complainant’s counsel.
Complainant
contends that it was at this point, when Respondent realized there would be no
windfall for him, that he revised the website in hopes of arguing that it was
a “legitimate fair use” of
the Toughlove® trademark. Complainant
emphasizes that Respondent made the change to the website not because he cared
about the content but to try and hold on to it so he could demand an exorbitant
amount of money from AFHSG.
For
Complainant, the above clearly shows that Respondent V. Logan and former
registrant Vinamy Corp. registered the <toughlove.com> domain name primarily for the purpose of selling
it to Complainant.
Moreover,
Complainant contends that the posts from actual <toughlove.com> users demonstrate that actual confusion existed
as to the website’s affiliation with Complainant’s organization. Respondent only added the disclaimer that it
was not affiliated with Toughlove International after being contacted by
AFHSG. It is apparent that Respondent
registered <toughlove.com> with
the intention of attracting Complainant’s consumers, and that Complainant’s consumers were indeed misled
to Respondent’s website.
Based
on the above, Complainant contends that there can be no doubt that Respondent
registered the <toughlove.com>
domain name in bad faith.
B.
Respondent
(i)
Is the domain name identical or confusingly similar to a trademark or service
mark in which the Complainant has rights ?
Respondent admits that Complainant’s trademark is similar to
that of <toughlove.com>.
However, Respondent claims the domain name is comprised of two separate words,
which Complainant does not have legal rights to. Respondent states that the
domain name is not meant to be “toughlove”-one word, but in fact “tough love”-
two words. The word “tough” simply described the type of “love”. Since the
Internet does not allow for spaces in a domain, the site name appeared as one
word.
Respondent stresses that he has never portrayed that <toughlove.com> is
<toughlove.org>. Respondent maintains that, as it is stated by
Complainant, Respondent has not conducted any business under the Toughlove©
name. Respondent’s site is not
monetarily driven as is Complainant’s.
Respondent does not conduct any business as ToughLove© or portray to be
any affiliation of ToughLove©.
Respondent contends that visitors may have typed in toughlove.com because
<toughlove.org> was inadequately advertised and some browsers default to
“.com”. In order to illustrate this reality, Respondent points out that
thousands of visitors visit <whitehouse.com> daily only to be shocked that
this is a very graphic, adult web site.
According to Respondent, the visitors then realize that the government
would use .gov as such an organization like ToughLove©
International would use .org.
(ii) Respondent has
rights or legitimate interests in respect of the domain name
Respondent
contends that Complainant does not provide any
credible evidence that Respondent does not have a legitimate use of the site.
Respondent
states that, while Complainant does have a trademark for ‘toughlove’, others have
such a trademark as well. In fact, a search of Trademark Electronic Search
System (TESS) allegedly proves that two other parties, Shian Velie and Steven
McDermott, have a trademark on “tough love”.
Furthermore,
Respondent states that Complainant does
not have trademarks for the words
“tough” or “love”. Complainant’s attorney of record does not have trademarks
for the terms “tough” or “love”. In fact, there are thousands of uses of the
phrase “tough love”, on the Internet, that are unrelated to Complainant. A search using the search engine of
<google.com>, on January 1, 2004, of the words “tough love”, returned
3,610,000 results. At that time, only
one of the top 100 results was directly related to Complainant.
Respondent
also wishes to point out that no other arbitration proceedings are taking
place, regarding domain names using a “tough” and “love” combination, in spite
of Complainant’s alleged concern about trademark infringements. Only this
proceeding is being pursued, according to an <arb-forum.com> search
conducted on January 1, 2004. Respondent feels that the mention of a $5,000,000
“Intellectual Property Purchase Option” price tag is motivation to proceed with
this “reverse hijacking”.
Respondent
feels that his own sister’s story, as will be explained further down, is more
than adequate to be considered a legitimate use of the site.
Finally,
Respondent notes that the site was not created for remuneration, but for
edification.
(iii) The domain name has not been
registered and is not being used in bad faith
At
the time of registration, Respondent was unaware of Complainant’s Internet
presence
When Respondent registered the site, he
claims to have been unaware that ToughLove© International had an Internet
presence or even an Internet site. <Toughlove.com> was registered on February 14, 1998 by Vince
Logan, the Respondent. Once Respondent learned of the <toughlove.org>
site, he allegedly placed this statement on the site:
“This site is about having "tough love". It does
not represent ToughLove® International in any capacity. TOUGHLOVE® is
registered by TOUGHLOVE® International.
ToughLove® international does not pay for this mention, nor do I
guarantee it will work for everyone.“
Respondent
contends that the site was not, as Complainant states, “constructed solely to
divert consumers of Complainant’s Toughlove© products and services”, but rather
designed to acknowledge the fact that his sister had gone through a turbulent time
in her life. It was only through the
use of ‘love’ that was ‘tough’, that the sister was able to take ownership and
regain control of her life. When this
was accomplished, Respondent decided to dedicate a web site honoring the
success of the Respondent’s sister and share the story with the world. Thus,
Respondent claims to have had no intention of confusing consumers that were
searching for ToughLove© or interrupting any business that ToughLove© was
engaging in. ToughLove© was simply a hyperlink that visitors could click on to
be taken to <toughlove.org>.
No
confusion exists among consumers
Complainant states that a “few visitors”
complained that they were looking for the REAL ToughLove© site. A “few visitors”, as submitted by
Complainant in this case, equals three.
As of January 1, 2004, there are over 100 pages in the guest book
containing approximately 3 to 5 entries per page, equaling about 300 to 500
entries. The three visitors that
Complainant mentions would equal 1% or less of the total visitors to <toughlove.com>. Incidentally, those visitors that
Complainant refers to did not leave any verifiable e-mail address, which
Respondent could have responded to. The
same stories were also posted the month before Complainant started making
contact with Respondent.
Respondent
stresses that he has responded to every e-mail that has asked for
clarification, information or simply wanting to talk to someone. In fact, the
guest book sends an e-mail to Respondent letting him know that there is a new
entry. Respondent then checks the new
entry and responds to the visitor if needed.
Description
of the disputed site
This site is simply a message board
whereby users could post their story.
The stories are entered or posted in a virtual guest book that is located
on the site. The visitors have been
using this feature for almost six years.
The visitors use this to communicate with each other, “vent” about their
current challenges and learn about others in their same situation. Respondent redesigned the site removing the
guest book in 2001 and received many e-mails wanting the guest book back on the
site. It appears that the visitors to
the site read all of these anecdotal accounts and get strength by knowing that
they are not alone. The stories are usually lengthy and personal. A few are so
personal that the visitor elects to keep them private and hidden from the
public. Only Respondent then reads
these stories. Respondent has had many
conversations (by e-mail) with visitors who were comforted to see and read that
they were not alone. Respondent
believes that it is much more than simply just a message board.
No
advertising on the disputed Internet site
Respondent stresses that there has never
been any
type of advertising on the <toughlove.com>
site and Complainant has failed to provide any documentation of this
allegation, in spite of its reference to “plenty of pop-up advertising” on the
site. However, once the visitor accesses the guest book, another browser window
opens containing the guest book. The
guest book, provided by Lycos HTML
Gear, does have pop-ups. Respondent
states that pop-ups have become an unfortunate nuisance for all Internet users
and depending on which ISP they utilize, they can personally deter them or let
them simply ‘pop-up.’
Respondent’s
prior domain name disputes with other parties are irrelevant
Complainant refers to an incident,
totally unrelated to this proceeding, where Respondent was trying to create a
website for a large company that turned into a larger mis-understanding which
resulted in an arbitration. Respondent
unfortunately did not understand the ICANN rules and when they were brought to
Respondent’s attention, the domain was transferred to the rightful owner. Respondent currently owns over thirty domain
names and provides website designing for not-for-profit, commercial and
individual organizations. Respondent is
currently a full-time government employee that designs websites pro bono. Respondent has not since had any issues with
domain registrations.
Respondent
has always refused to sell the disputed site and will continue to do so
Respondent does admit that Complainant,
Mr. Feibush, offered to buy <toughlove.com>. When Respondent told Complainant that the
site was not for sale, Complainant retorted that ToughLove© International was a
not-for-profit organization and could not pay a lot of money for the site. Respondent again told Complainant that the
site was not going to be sold to any
organization regardless of their financial situation. During this conversation, Respondent also conveyed to Complainant
that there have been several unsolicited offers from adult web site owners to
buy the site, which were immediately refused.
When Respondent told Complainant of these offers, Complainant became
very agitated and stated that if Respondent did in fact sell, he would bring
legal actions against both Respondent and the new owners. Respondent assured Complainant that the site
was not purchased just to be sold to the highest bidder and it would never be
sold as such. Respondent further stated
that it would stay a website that was a dedication to his sister and possibly
help others in the same situations.
Respondent also stated that he would keep the ToughLove© link on the
site.
Respondent admits that he did, in fact,
stop communicating with Complainant when
Complainant continued to call uninvited. Determining that Complainant was going to continue to call and
send e-mails, Respondent finally replied with the e-mail listed in
complainant’s exhibit “J”. Nowhere in
that e-mail does Respondent imply any monetary expectations as Complainant
embellished in the Complaint.
Furthermore, Respondent did not state that any money would ever be
exchanged, explicitly because the site was never for sale. Respondent merely answered Complainant’s
e-mail to try to alleviate any further unsolicited calls and e-mails.
Respondent
is not holding on to the domain name in order to later demand an exorbitant
amount of money
Complainant’s allegation that Respondent
was trying to “hold on to it…to demand an exorbitant amount of money from
AFHSG” is ludicrous. Respondent has had
the domain for nearly six years and in that time, Respondent has made no attempt to sell the domain to
ToughLove© or any other organization for that fact. Furthermore, Respondent has had several unsolicited offers that
were sternly refused.
Agreements
with RONY Z., LLC were concluded to create confusion regarding the facts
Complainant included exhibits “E”, “F”
and “G”, which describe agreements of RONY Z., LLC. All of these agreements were dated after the registration of <toughlove.com> on February 14,
1998. These are legal agreements
created to confuse the facts of this domain arbitration and should be
considered as such.
Complainant
has not met its burden of proof
Complainant has clearly not provided the
evidence to support its case and meet the criteria required according to the
ICANN Uniform Domain Name Dispute Resolution Policy (referred to as UDRP) to
have the <toughlove.com>
domain transferred.
Complainant
did not purchase the disputed domain name when it could have done so
Respondent also notes that one post is
allegedly from David York, a founder of ToughLove© International. In this post, York states that ToughLove© is
trying to play catch up with the Internet.
York also mentions that Respondent’s site was a “positive plug” for the
program. According to registration
dates, <toughlove.com> was
available when ToughLove© purchased toughlove.org and Complainant obviously did
not believe that it was a trademark issue then. ToughLove© had the opportunity to purchase <toughlove.com> and did not and now
is trying to use this forum to forcibly take a domain that they do not have
rights to.
Reverse
hijacking attempt
Respondent further believes that Complainant
is using this forum to reverse hijack a domain. Respondent notes that this is a
monetarily motivated complainant interested in only securing this domain to
possibly sell later for an “exorbitant amount” of money.
Complainant’s
true motivation for initiating arbitration proceedings
There are further examples of why
Complainant is attempting to secure <toughlove.com>. As is
stated by Complainant throughout its complaint, it only wishes to increase the
sale of “books, cassettes, manuals, classes, presentations, workshops,
conferences, lectures, franchise fees, clinically related for-profit ventures,
percents of registration fees, percents of sales from workshops, licensing fees
for centers, consulting fees, re-imbursements for travel expenses and other
expenses.” Clearly, Complainant does
not “care about the content”, but cares more about how much the CONSUMERS, not
visitors, are going to pay for services and fees.
FINDINGS AND
DISCUSSION
It is open to the Panel to examine the
merits of this case, because Complainants have demonstrated a sufficient link
between themselves to bring the Complaint
In
order for the Panel to examine the merits of this case, it must first decide
whether Complainants have established a sufficient link between themselves, in
order to be permitted to bring this Complaint as one entity.
Complainants
have collectively submitted this Complaint. However, Rule 3(a) states: “[a]ny
person or entity may initiate an administrative proceeding by submitting a
complaint.” The singular tenor of the rule’s language implies that Complainant
will consist of one entity.
Usually,
multiple Complainants that submit a single Complaint are required to
demonstrate a link between themselves, such as a relationship involving a
license, a partnership or an affiliation, which would establish the reason for
the parties bringing the Complaint as one entity. In the present case,
Complainants David York and Phyllis York claim that they have licensed the
other Complainants to use and protect the TOUGHLOVE mark.
The
Panel is satisfied that there exists a sufficient link between Complainants and
has thus arrived to the conclusion that it may examine the merits of this case.
Furthermore, the Panel would also like to point out that Respondent never
questioned the existence of such a link between Complainants.
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.
Complainant asserts rights in the
TOUGHLOVE mark through multiple registrations with the United States Patent and
Trademark Office (Reg. Nos. 1229641, 1323169, 1597392) filed as early as
January 21, 1981 and registered as early as March 8, 1983. In fact, this
creates a presumption that Complainant’s trademark is inherently distinctive. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption); see also Men’s Wearhouse,
Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.”).
Complainant claims that the disputed
domain name, <toughlove.com>,
is identical to its TOUGHLOVE mark. See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy”); see
also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000)
(holding that confusing similarity under the Policy is decided upon the
inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson,
D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the
Policy is decided upon the inclusion of a trademark in the domain name); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that the addition of a
top-level domain is without legal significance).
Respondent
concedes that Complainant has rights in the TOUGHLOVE mark. However, Respondent argues that the disputed
domain name actually is a combination of two generic terms, namely “tough” and
“love,” which do not contain the same meaning as Complainant’s mark. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (stating that
"[c]ommon words and descriptive terms are legitimately subject to
registration as domain names on a 'first-come, first-served' basis"); see also Rollerblade, Inc. v. CBNO & Redican, D2000-0427 (WIPO Aug. 24,
2000) (stating that “genericness, if established, will defeat a claim of
trademark rights, even in a mark which is the subject of an incontestable
registration”); see also Successful Money
Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar.
7, 2001) (finding that seminar and success are generic terms to which
Complainant cannot maintain exclusive rights).
Respondent
also argues that Complainant failed to register the disputed domain name when
it had the opportunity to do so.
The
Panel is of the opinion that Respondent’s second argument is not well founded.
Failure of Complainant to register all possible domain names that surround its
mark does not hinder its rights in the said mark. Trademark owners are not
required to create “libraries” of domain names in order to protect themselves. See Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000).
Furthermore,
the Panel feels that Respondent is incorrect when he argues that the disputed
domain name should actually be considered as two generic terms, namely “tough”
and “love”. Respondent clearly uses these two words as one, thus operates a
domain name which is identical to Complainant’s trademark. This being said, the
presumption that Complainant’s trademark is distinctive has not been rebutted
by Respondent.
In
light of the above, the Panel concludes that the disputed domain name is
identical to Complainant’s trademark.
Complainant’s greatest argument is that
Respondent is not and has never been commonly known by the disputed domain
name. See Tercent Inc. v. Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and
its failure to imply that Respondent is commonly known by the disputed domain
name, is a factor in determining that Policy 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark).
Furthermore, Complainant contends that
Respondent registered the name for the purpose of diverting potential customers
of Complainants to Respondent’s website.
See Toronto-Dominion
Bank v. Karpachev, 188
F.Supp.2d 110, 114 (D. Mass. 2002) (finding that,
because Respondent's sole purpose in selecting the domain names was to cause
confusion with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see also Am. Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat.
Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal
to suck surfers into a site sponsored by Respondent hardly seems legitimate”); see also eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) ("[using] Complainant’s entire mark in infringing
domain names makes it difficult to infer a legitimate use"); see also U.S. Fran. Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services).
In fact, Complainant argues that
Respondent is not using the disputed domain name for a bona fide offering of
goods or services, pursuant to Policy ¶ 4(c)(i), nor for a noncommercial or
fair use, pursuant to Policy ¶ 4(c)(iii), because Respondent has used the name
to host a website containing a message board whereby users could post their
“story,” without initially disclaiming the fact that the website had no
affiliation with the well-known TOUGHLOVE mark and organization.
It should also be noted that even after
Complainant contacted Respondent to express its concerns, Respondent continued
to post stories, in addition to pop-up advertisements. See
Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12,
2003) (finding that Respondent did not have rights or legitimate interests in a
domain name that used Complainant’s mark and redirected Internet users to a
search engine and pop-up advertisements); see
also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb.
Forum June 3, 2003) (finding that Respondent’s use of infringing domain names
to direct Internet traffic to a website that hosted pop-up advertisements was
evidence that Respondent lacked rights or legitimate interests in the domain
name).
Finally, Complainant insinuates that
Respondent does not have rights or legitimate interests in the disputed domain
name because Respondent is using Complainant’s mark to provide similar services
as Complainant. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services).
Respondent argues
that the site was not created for remuneration, but for edification. In fact,
the domain name is used to host a message board whereby users can post their
stories regarding current personal challenges that they may be going through.
Furthermore, the site originated as a tribute to a family member that underwent
a difficult personal trial. Thus, Respondent argues that there exists a right
and legitimate interest with respect to the disputed domain name.
Respondent also
argues that the words “tough” and “love” are very frequently used with respect
to other domain names, but that no
other arbitration proceedings are taking place, regarding such domain names, in
spite of Complainant’s alleged concern about trademark infringements.
The
Panel must decide if Respondent has rights or legitimate interests in the
disputed domain name. Any of the following circumstances of paragraph 4 (c)
UDRP, in particular but without
limitation, if found by the Panel to be proved based on its evaluation of all
evidence presented, shall demonstrate Respondent’s rights or legitimate
interests to the domain name:
(i)
before any notice to Respondent of the dispute, Respondent’s 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)
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even if Respondent has acquired no trademark
or service mark rights; or
(iii)
Respondent is 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;
It
is evident that Respondent is not making any use of the domain name in
connection with a bona fide offering
of goods or services. A use of a domain name which is likely to constitute a
trademark infringement in the United States is not a bona fide offering of goods or services.
Furthermore,
Respondent has not been commonly known by the domain name.
However,
it is less clear whether Respondent is 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.
While
Complainant alleges that Respondent registered the domain name for the purpose of diverting
Complainant’s potential customers, it has not proven this fact.
Also,
the mere presence of pop-up advertisements on Respondent’s Internet site is not
sufficient to prove that Respondent has no legitimate rights with respect to
the domain name. The Panel must examine the entire context.
Nonetheless,
Complainant raises an interesting point when it contends that Respondent uses
its trademark to provide similar services. The Panel is satisfied that
Respondent’s site was created for edification. The Panel is also satisfied that
the disputed site serves as a tribute to Respondent’s sister. However, it is
clear that Respondent uses Complainant’s trademark to provide similar services
as Complainant. There may very well be other domain names that include the
“tough-love” combination, but this does not excuse Respondent’s use of Complainant’s
trademark to provide similar services as Complainant. The Panel has already
mentioned that trademark owners are not required to create “libraries” of
domain names in order to protect themselves. The Panel would also like to add
that a trademark owner has the liberty of deciding which situation requires the
initiation of arbitration proceedings.
In
light of the above, the Panel feels that Respondent has no rights or legitimate
interests in the disputed domain name, because he is not 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. In short, Respondent’s use of Complainant’s trademark, which is
registered and used in the United States, in order to provide similar services in the United States, was the deciding
factor.
Complainant
alleges that the original domain name registration was done in bad faith
because the original registrant, Vinamy Corp., has demonstrated a pattern of
registering infringing domain names that prevented the owner of a mark from
reflecting the mark in a corresponding domain name, as evidenced by a prior
Panel requiring Vinamy to transfer a domain name. See Albertson’s, Inc. v.
Vinamy, FA 100123 (Nat Arb. Forum Oct. 27, 2001); see also YAHOO! Inc. v. Syrynx,
Inc., D2000-1675 (WIPO Jan. 30,
2001) (finding a bad faith pattern pursuant to Policy 4(b)(ii) in Respondent's
registration of two domain names incorporating Complainant's YAHOO! mark); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145
(eResolution May 3, 2000) (finding that, where Respondent registered many
domain names, held them hostage, and prevented the owners from using them, the
behavior constituted bad faith).
In
addition, Complainant alleges that Respondent is using the disputed domain name
in bad faith, pursuant to Policy ¶ 4(b)(i), because Respondent failed to accept
an offer forwarded by Complainant for the transfer of the domain name in
consideration of Respondent’s expenses related to the site. See
Marrow v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel
should not “put much weight on the fact that it was the Complainant who
contacted Respondent to see if it was interested in selling the domain name”); see also Booz-Allen & Hamilton Inc. v.
Servability Ltd, D2001-0243 (WIPO
Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer,
rejected Complainant’s nominal offer of the domain in lieu of greater
consideration); c.f. Dynojet Research,
Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that
Respondent demonstrated bad faith when he requested monetary compensation
beyond out-of-pocket costs in exchange for the registered domain name).
Finally,
Complainant argues that Respondent wishes to maintain the disputed domain name,
in order to later sell it to Complainant for an exorbitant amount of money.
Respondent’s site allegedly creates confusion among consumers in spite of the
disclaimer which, according to Complainant, has only been added so that
Respondent can “hold on” to the domain name.
Respondent
contends that, at the time of registration, he was unaware of Complainant’s
Internet presence. Thus, Respondent claims to have never intended to divert
Complainant’s consumers. Respondent stresses that no confusion exists among
consumers, that he has never advertised or sold anything through the domain
name and that there is no evidence to suggest otherwise. See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000)
(finding no bad faith where Respondent operates the fan club website without
commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) cannot be
established).
Furthermore,
Respondent clearly states that he has never had any intention to sell the
domain name, that he has always refused such offers, and that he does not
intend to do so. Thus, it is flagrantly untrue that, as Complainant would have
the Panel believe, Respondent wishes to hold on to the domain name in order to
later sell it to Complainant for a greater amount. See PRIMEDIA Special Interest Publ’n Inc. v. Treadway, D2000-0752
(WIPO Aug. 21, 2000) (finding that Respondent did not register the domain names
in bad faith where there is no evidence that Respondent intended to sell the
domain name or disrupt Complainant’s business);
Respondent
also contends that his prior domain name dispute is irrelevant with respect to
the current proceedings.
Finally,
Respondent is asserting that Complainant is using these proceedings to reverse
hijack the domain name. Respondent
argues that Complainant is interested in gaining control of the registration of
the disputed domain name in order to sell the name at a later date for an
“exorbitant amount” of money, as evidenced by Complainant’s own exhibit “E”
relating to the sale of intellectual properties. “Reverse Domain Name Hijacking means using the Policy in bad
faith to attempt to deprive a registered domain-name holder of a domain
name.” See Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan. 2,
2001) (Complaint considered to be brought in bad faith where Complainant must
have known that Respondent was not a cybersquatter prior to the filing of the
Complaint).
The
Panel must determine if the disputed domain name has been registered and is
being used in bad faith by Respondent. The following circumstances, which are
found in paragraph 4 (b) UDRP, 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 Respondent has registered or has acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to Complainant who is the owner of
the trademark or service mark or to a competitor of Complainant, for valuable
consideration in excess of Respondent’s documented out-of-pocket costs directly
related to the domain name; or
(ii)
Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii)
Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv)
by using the domain name, Respondent has intentionally attempted to attract,
for commercial gain, Internet users to his web site or other on-line location,
by creating a likelihood of confusion with Complainant's mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location
or of a product or service on Respondent’s web site or location.
The
Panel feels that there is no proof indicating that Respondent has registered or
has acquired the domain name primarily for the purpose of selling, renting, or
otherwise transferring the domain name registration to Complainant or to a
competitor of Complainant, for valuable consideration in excess of Respondent’s
documented out-of-pocket costs directly related to the domain name.
Unfortunately
for Complainant, it has not been proven that Respondent has engaged in a
pattern of registering domain names in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name.
Complainant
has not proven that Respondent has registered the domain name primarily for the purpose of disrupting
its business, nor that its business has in fact been disrupted as a result of
Respondent’s registration.
Complainant has not proven that, by using
the domain name, Respondent has intentionally
attempted to attract, for commercial gain, Internet users to his web site or
other on-line location, by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site or location or of a product or service on Respondent’s
web site or location.
However, the Policy clearly states that
other circumstances can be evidence of the registration and use of a domain
name in bad faith. In the present case, the problem is not limited to the
Internet but also involves a registered trademark. While Respondent claims to
have been unaware of Complainant’s Internet presence, at the time of the domain
name registration, he does not claim to have been unaware of Complainant’s
activities carried on in association with the registered trademark. The Panel
believes that Respondent knew of Complainant’s existence and of his trademark.
In short, Respondent knew or should have known of Complainant’s rights in the
TOUGHLOVE mark and should have chosen a different domain name. See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1148 (9th Cir. 2002)
("Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the link between Complainant’s mark and the content
advertised on Respondent’s website was obvious, Respondent “must have known
about the Complainant’s mark when it registered the subject domain name”).
In light of the above, the Panel feels
that Respondent has registered and is using the domain name in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the “toughlove.com” domain name be TRANSFERRED from Respondent to
Complainant, David and Phyllis York.
Hugues G. Richard, Panelist
Dated: February 6, 2004
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