American Psychological
Association v. Lynda Lotman
Claim Number: FA0612000874146
PARTIES
Complainant is American Psychological Association (“Complainant”), represented by Jonathan
Hudis, of Oblon, Spivak, McClelland, Maier &
Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apawriting.com>, registered with Go Daddy
Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 19, 2006; the
National Arbitration Forum received a hard copy of the Complaint on December 20, 2006.
On December 20, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <apawriting.com> domain name is
registered with Go Daddy Software, Inc.
and that the 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 January 3, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of January 23, 2007 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@apawriting.com by
e-mail.
A timely Response was received and determined to be complete on January
23, 2007.
On January 29, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Paul M. DeCicco as Panelist.
Additional submissions were timely received from each party and
considered by the Panel.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant, the American
Psychological Association (“the APA”), is a scientific and professional
organization that represents psychology in the
The Complainant bases its Complaint
on its interests in the following trademarks: APA, APA LIFETOOLS (Stylized),
APA MONITOR, APA STYLE, APA-STYLE HELPER and AMERICAN PSYCHOLOGICAL
ASSOCIATION. The APA and AMERICAN
PSYCHOLOGICAL ASSOCIATION marks are registered by the Complainant in national
trademark offices and in the
Respondent registered and is using the domain name <apawriting.com> in connection with a business that is operating under the name “APA Network.” Respondent is using the <apawriting.com> website to market and sell editorial services for academic and professional works that purport to comply with editorial standards published by the Complainant.
The at-issue domain name <apawriting.com>, both alone and when used in connection with the services offered by Respondent through the <apawriting.com> web site, is confusingly similar to the APA Marks in which the Complainant has rights.
The inclusion of the term “writing” in Respondent’s <apawriting.com> domain name does nothing to alleviate Internet user confusion. Given the APA’s support and promulgation of written professional and scholarly materials and the APA’s use of the APA marks in connection with computer software and printed manuals that serve as guides for assisting in the writing of scholarly papers in the fields of psychology and related social sciences consistent with the APA’s guidelines, Respondent’s use of “writing” in the domain name <apawriting.com> reinforces the false association between the APA and Respondent’s services offered through her web site.
The APA did not grant any authorization to Respondent in her use of the <apawriting.com> domain name and therefore Respondent has no rights or legitimate interests in respect to the domain name <apawriting.com>. Nor is Respondent affiliated with or commonly known as “apawriting.”
Respondent registered the domain name <apawriting.com> in bad faith and is using the domain name in bad faith because she (1) is using the domain name primarily for the purpose of disrupting the business of the APA and (2) is intentionally attempting to attract, for commercial gain, Internet users to her web site by creating a likelihood of confusion with the APA Marks as to the source, sponsorship, affiliation, or endorsement of her web site and services advertised on her web site. ICANN Policy ¶¶ 4(b)(iii)-(iv).
In falsely associating her “APA Network” and her editorial services that purportedly comply with the APA’s mandated style guidelines with the APA on her web site maintained at <apawriting.com>, Respondent is attempting intentionally to attract, for commercial gain, Internet users to her web site, by creating a likelihood of confusion with the APA, the APA Marks, and the APA goods and services as to the source, sponsorship, affiliation, or endorsement of the <apawriting.com> web site and its services.
Internet users who encounter Respondent’s services advertised and offered through her web site will believe that Respondent and her web site are associated with or endorsed by the professional organization that promulgates the writing guidelines which she advertises, which is not the case. This is evidence of Respondent’s bad faith under the UDRP.
Respondent’s registration and use of the <apawriting.com> domain name is disrupting the business of the Complainant by misleading Internet users to mistakenly believe that Respondent’s business is somehow associated with or endorsed by the Complainant and thus confusion is likely.
Respondent’s conduct does not constitute a bona fide offering of goods and services as those terms are employed in Paragraph 4(c)(i) of the Policy. Because her business is based upon multiple infringements of the APA Marks, Respondent is not engaged in the preparation for use, nor the use of the <apawriting.com> domain name in connection with a bona fide offering of goods or services.
B. Respondent
Respondent contends as follows:
Respondent purchased the domain name <apastyle.com> [sic] Respondent operates, numerous networks of freelance editors. Through Internet and other kinds of advertising, Respondent brings would-be customers to her various websites. The would-be customers are then put in contact with expert editors who have passed stringent editing tests administered and graded by Respondent, an expert editor.
The at-issue domain name is for a network of editors tested to be proficient in editing dissertations, papers, and journal articles that must be written in accordance with APA style. APA style was originated by the Complainant, and incorporated into a large reference book that provides specific guidance to writers on how to format manuscripts for a variety of academic disciplines such as psychology, sociology, business, economics, nursing, social work, and criminology.
Respondent operates networks of freelance editors who have tested expertise in at least three other styles of editing—Chicago Manual of Style (a reference for authors, editors, proofreaders, indexers, copywriters, designers, and publishers in any field); Turabian style (principally for those working in the natural and social sciences), and MLA style (another time-tested editing style, originated by the Modern Language Association to guide students through all formatting aspects of writing research papers).
Respondent owns and operates URLs that refer to the specific styles freelance editors are experts in (for example, <chicagoexperts.com> and <chicagoformat.com>). The intent of the names is to accurately describe the expertise to be found there, which is the exact opposite of trying to confuse any visiting consumers.
Respondent also operates eight other URLs that attempt to attract would-be writers to her freelance network of APA editors—<apadissertation.com>; <apaexpert.com>; <apaexperts.com>; <apahelp.com>; <apathesis.com>; <apaediting.com>; <apathesishelp.com>; and <apaeditingservice.com>.
Respondent has never sought to purchase and hold any of these sites to sell them to any organization with the acronym APA.
Respondent has received no suggestion, much less a complaint, from any customers that the at-issue domain name confused them, or caused them to think that Complainant’s network had any connection whatever with the American Psychological Association.
The Associate General Counsel for the Complainant contacted Respondent, and thereafter asked Respondent to place a disclaimer on the website to make sure no one thought the site was affiliated with the APA. Respondent complied and the Complainant approved the disclaimer, and added that the at-issue domain name was “not a problem.”
Respondent has used the URL for a
legitimate business purpose for more than three years, and the Complainant
expressly and tacitly approved of that purpose. In addition, Respondent has
made no effort to sell the site back to the Complainant, and has never had any
such intention.
The Complaint was likely filed in such bad faith that any arbitration panel would not only deny the relief sought, but find reverse domain name hijacking.
C. Additional Submissions
Complainant additionally contends as follows:
Respondent is incorrect in her belief that the APA does not offer or recommend editorial services in connection with APA Style writing guidelines. Complainant offers editorial services in the form of over four hundred trained APA certified editors, offered at national and regional association meetings, at 1-2 day seminars, within publishing companies, and as freelance editors in the APA system.
The Complainant also promotes and offers for sale printed manuals and computer software programs that serve as guides in assisting in the writing of scholarly papers in the fields of psychology and related social sciences under the APA STYLE and APA-STYLE HELPER trademarks. In addition to having created the APA Publication manual and APA-Style, the Complainant has also created a training guide for writing scholarly papers in APA Style: Mastering APA-Style: Student Workbook and Training Guide.
Respondent contends that the services she offers are of a high quality and caliber. Even if Respondent has retained “expert editors,” these individuals are in no way trained or endorsed by the APA. Conducting business using an infringing mark does not render use of the infringing mark legitimate, no matter how much alleged expertise or supervision is engaged in by the cybersquatter.
The mere inclusion of a disclaimer on a web page that incorporates an infringing domain name does not grant a respondent rights or legitimate interests in the domain name pursuant to ICAAN Policy ¶ 4(a)(ii). Accordingly, Respondent’s arguments regarding the effect of a disclaimer, no matter when or under what circumstances it was added on her site, are inapposite.
It is irrelevant whether Respondent claims to operate a “legitimate business.” If the contested domain name used is obviously connected with Complainant, then use or registration by anyone, even in connection with a purportedly legitimate business, suggests “opportunistic bad faith.”
The registration of multiple infringing domain names evidences a pattern of conduct and is per se evidence of Respondent’s bad faith in this matter.
Respondent’s recounting of the exchanges with APA’s Associate General Counsel are inaccurate. APA counsel never informed Respondent that the name of her web site or company was “not a problem.”
The inclusion of a disclaimer on Respondent’s otherwise objectionable web site is not an effective defense to a UDRP proceeding. This is because: (a) the disclaimer may be ignored or misunderstood by Internet users, and (b) a disclaimer does nothing to dispel initial interest confusion that is inevitable from respondent's actions. It is this very confusion that provides the basis for finding a violation of Complainant’s rights.
Respondent additionally contends as follows:
Key facts are unchallenged by Complainant. There is no proof of Complainant’s assertion that Respondent is deliberately trying to confuse Internet-goers.
Contrary to Complainant’s latest assertions, Respondent is not using the on-site disclaimer as justification for “infringing” on Complainant’s mark.
Respondent stands by her account of
the conversation with counsel for the Complainant..
Respondent remembers the conversation in vivid detail, saying: “He
[Complainant’s counsel] did not tell me I would have to change anything ... the
URL, the wording ... anything. He said
the disclaimer was enough. He said he’d
call me if there was [sic] anything additional to tell me. I never heard anything until the complaint.
I’m disgusted that he would lie on every point.”
FINDINGS
Complainant has colorable trademark rights in
the at-issue domain name.
Respondent’s business concerns services that
can only be adequately described by reference to the Complainant’s identity.
The at-issue domain name is descriptive of
the services rendered by the Respondent.
Respondent placed a disclaimer on the web
site referenced by the at-issue domain name after speaking with counsel for
Complainant.
DISCUSSION
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.
The at-issue domain name is confusingly similar to the Complainant’s APA mark.
Complainant has numerous trademark
registrations with the United States Patent and Trademark Office (“USPTO”)
containing the APA mark. The registrations
include: APA LIFETOOLS (Reg. No. 2,624,488 issued September 24, 2002), APA
MONITOR (Reg. No. 1,860,897 issued November 1, 1994; Reg. No. 2,912,420 issued
December 21, 2004), APA STYLE (Reg. No. 2,873,742 issued August 17, 2004),
APA-STYLE HELPER (Reg. No. 2,374,449 issued August 8, 2000), and AMERICAN
PSYCHOLOGICAL ASSOCIATION (Reg. No. 5,68,980 issued May 14, 2002). Complainant
also registered the APA mark in
The term “writing” is somewhat descriptive of Complainant’s products. The at-issue domain name merely appends the word “writing” to the Complainant’s mark to create the domain name. The addition of the generic term “writing” is in not sufficient, in the instant case, to distinguish the domain name from the Complainant’s trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005).
Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names under paragraph 4(a)(ii) of the Policy. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name. Complainant avers that it did not grant any authorization to Respondent for her use of the <apawriting.com> domain name. Respondent is neither affiliated with nor commonly known as “apawriting.” Therefore, Complainant has satisfied its light burden.
On the other hand, before any notice to the Respondent of the dispute, Respondent used the at-issue domain name in connection with a bona fide offering of goods or services. The Policy at ¶ 4(c)(i) considers such evidence demonstrative of a respondent’s rights and interest in an at-issue domain name. Complainant counters that it is irrelevant whether Respondent claims to operate a “legitimate business” if the contested domain name used is obviously connected with Complainant. In such case “opportunistic bad faith” is suggested pursuant to the Panel’s holding in Pavilion Agency, Inc. v. Greenhouse Agency Ltd. However, it is not clear in the instant case that the at-issue domain name is “connected” with the Complainant in the trademark sense. Here the at-issue domain name appears to be used in a descriptive manner rather than as a source identifier or trademark. See Chicago Bd. Options Exchange Inc. v. Private, FA 804703 (Nat. Arb. Forum Nov. 29, 2006); see also The Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007). Additionally and as noted below, there does not appear to be bad faith on the part of the Respondent that might negate the Respondent’s contention that registration was for legitimate business reasons, rather than some attempt to trade off the Complainant’s mark.
Given the forgoing the Panel finds that the Respondent has legitimate interests in the domain name.
Mere assertions of
bad faith are insufficient to show bad faith under the Policy. See Starwood
Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005). Complainant
must demonstrate, via competent evidence, that Respondent’s conduct maps to one
of the enumerated indicia of bad faith set out in the Policy or otherwise
constitutes bad faith with regard to the registration and use of the at-issue
domain name. Complainant presents no compelling evidence that Respondent acted in
bad faith in either registering or using the at-issue domain name.
Respondent has not been shown to act in any
of the express bad faith manners set out in ¶ 4(b) of the Policy. Respondent has not offered to sell the
at-issue domain name to Complainant, prevented Complainant from reflecting its
mark in the domain name, registered the domain name primarily to disrupt
Complainant’s business, or attempted to divert Internet users to the domain
name for its own commercial gain. Nor is
there other evidence in Complainant’s papers that demonstrates to the Panel
that notwithstanding the lack of any specific Policy enumerated bad faith
scenario, the at-issue domain name’s registration and use was nevertheless in
bad faith.
Respondent requests a finding that the Complainant has engaged in reverse domain name hijacking. Complainant has not engaged in such conduct. To show reverse domain name hijacking Respondent needs to show that the “Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the Complaint in bad faith.” See Goldline Int’l v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001). This Respondent cannot do. Complainant shows that the at-issue domain name is confusingly similar to its trademark; presents some evidence that registration and use was in “bad faith;” and makes out a prima facie showing that Respondent has no rights or interest in the at-issue domain name. There is no basis for claiming that the Complainant has filed its Complaint in bad faith; thus Complainant has not attempted reverse domain name hijacking.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Paul M. DeCicco, Panelist
Dated: February 12, 2007
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