Houghton Mifflin Company v. Unasi
Management Inc.
Claim
Number: FA0504000469107
Complainant is Houghton Mifflin Company (“Complainant”), 222 Berkeley Street, Boston, MA
02116. Respondent is Unasi Management Inc. (“Respondent”),
Galerias Alvear, Via Argentina 2, Oficina #3, Zona 5, Panama 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <prideferell.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 2, 2005.
On
April 29, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain name <prideferell.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
May 9, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 31, 2005 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@prideferell.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 2, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prideferell.com>
domain name is confusingly similar to Complainant’s PRIDE FERRELL mark.
2. Respondent does not have any rights or
legitimate interests in the <prideferell.com> domain name.
3. Respondent registered and used the <prideferell.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Houghton Mifflin Company, is the publisher of
two college textbooks in the subject of marketing written by the author team of
William M. Pride and O.C. Ferrell.
These two books are entitled Marketing: Concepts and Strategies,
which was first published in 1977 and is now in its thirteenth edition, and Foundations
of Marketing, which was first published in 2004. In accordance with custom in the higher-education textbook
industry, these texts are often referred to using the name of the author team,
or the PRIDE FERRELL mark. Thus, the
texts and numerous other related materials, such as study guides, instructor’s
manuals, test banks, videos, CD-ROMs and websites, prominently bear the PRIDE
FERRELL mark.
According to publishing agreements between the author team and
Complainant, Complainant has the exclusive right to use the PRIDE FERRELL name
on higher educational instructional materials for the purpose of
marketing. Since 1989, more than
750,000 units of the PRIDE FERRELL Marketing: Concepts and Strategies
textbook have been sold and as of June 2004, this textbook was the market
leader in the United States in the principles of marketing college textbook
market with a 23% market share.
Additionally, Complainant owns the registration for the
<prideferrell.com> domain name, which was registered in May 1999 for a
website that is used by students who have purchased either of the text
books. On this website, students can
review material, take practice exams, perform exercises, etc. The website had 64,148 visitors in 2004.
Complainant established the prestigious “Pride Ferrell Award for
Innovations in Teaching,” which is awarded annually to recognize the nation’s
top marketing professors. In July 1998,
Business Source Premier magazine described the features and benefits of
the “Pride Ferrell site,” indicating that the general media associates the
textbook series and website with the PRIDE FERRELL mark. Furthermore, libraries and bookstores list
the textbooks under the PRIDE FERRELL mark.
Respondent registered the <prideferell.com> domain name on December 15, 2002. Complainant has not given a clear indication
as to the content displayed at the website or whether the domain name resolves
to any website.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this administrative
proceeding on the basis of Complainant's undisputed representations pursuant to
paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it
considers appropriate pursuant to paragraph 14(b) of the Rules.
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
contends that it has exclusive rights to use the PRIDE FERRELL mark for
marketing purposes pursuant to the publishing agreements between Complainant
and the authors. Respondent has failed
to submit a response, which entitles the Panel to accept all reasonable allegations
and inferences in the Complaint as true unless clearly contradicted by the
evidence. Thus, the Panel will accept
Complainant’s assertions as true in the absence of any contradictory evidence. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Complainant has
not provided any evidence that it owns any registrations for the PRIDE FERRELL
mark. However, Complainant can
establish common law rights in the mark by providing evidence of secondary
meaning. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does
not require that a trademark be registered by a governmental authority for such
rights to exist.”). Complainant asserts
that the PRIDE FERRELL books have been in publication for approximately 28
years and that they are widely used in the subject of marketing. Furthermore, it appears that these books and
related materials are most commonly referred to by the PRIDE FERRELL mark. In light of these facts, the Panel finds
that Complainant has established secondary meaning in the mark and, therefore,
has shown common law rights in the mark.
See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary meaning was
established); see also S.A. Bendheim Co., Inc. v. Hollander Glass,
FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that Complainant established
rights in the descriptive RESTORATION GLASS mark through proof of secondary
meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name [<keppelbank.com>]
in connection with its banking business, it has acquired rights under the
common law).
The <prideferell.com>
domain name registered by Respondent incorporates a simple misspelling of
Complainant’s PRIDE FERRELL mark in which the letter “r” has been omitted. It has been widely held under the Policy
that the omission of one letter from a complainant’s mark is insufficient to
distinguish a domain name from that mark.
Therefore, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Compaq Info. Techs. Group,
L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also State Farm Mut. Auto.
Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000)
(finding that the domain name <statfarm.com> is confusingly similar to
Complainant’s STATE FARM mark).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
contends that Respondent does not have rights or legitimate interests in the <prideferell.com>
domain name, which contains Complainant’s PRIDE FERRELL mark in its
entirety. Since Complainant has made a prima
facie case in support of its allegations, the burden shifts to Respondent
to make a showing of rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). However,
because Respondent failed to respond to Complainant’s assertions and to provide
evidence to contradict these assertions, Respondent has failed to meet its
burden. Therefore, the Panel concludes
that Respondent lacks rights and legitimate interests in the disputed domain
name. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
the complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see
also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name).
Thus, the Panel
finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges in the Complaint that Respondent registered and used the <prideferell.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). However, Complainant has provided no
evidence as to the nature of the content of the website at the disputed domain
name or whether there is any content.
Under the Policy, Complainant has the burden of proving bad faith and
must provide some evidence that the disputed domain name has been registered
and used in bad faith before a Panel may find that this element has been
satisfied. Therefore, since there is no
factual basis in the record upon which to find bad faith registration and use,
the Panel finds that Complainant has not established bad faith registration and
use pursuant to Policy ¶ 4(a)(iii).
See PRL USA Holdings, Inc. v. Polo, D2002-0148 (WIPO Apr. 29,
2002) (finding that because Complainant failed to provide any factual
allegations as to the nature of use of the disputed domain name, Complainant
failed to prove that Respondent’s domain names were being used in bad faith); see
also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat.
Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith
without supporting facts or specific examples do not supply a sufficient basis
upon which the Panel may conclude that Respondent acted in bad faith); see
also Loris Azzaro BV, SARL v. Asterix
& De Vasconcellos, D2000-0608 (WIPO Sept. 4, 2000) (“Mere belief and
indignation by Complainant that Respondents have registered and are using the
Domain Name in bad faith are insufficient to warrant the making of such a finding
in the absence of conclusive evidence”); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539
(WIPO Aug. 31, 2000) (declining to transfer the domain name where a full
factual record has not been presented to the Panel such that a conclusive
determination can be made regarding the parties’ respective claims to the
contested domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has not been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it
is Ordered that the <prideferell.com> domain name REMAIN
with Respondent.
John
J. Upchurch, Panelist
Dated: June 16, 2005
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