American Psychological
Association v. Asmah Dar
Claim Number: FA0703000936954
PARTIES
Complainant is American Psychological Association (“Complainant”), represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA 22314. Respondent is Asmah Dar (“Respondent”), 3102 Cherry Mill Ct, Houston, TX 77059.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <psycsearch.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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 14, 2007.
On March 14, 2007, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <psycsearch.com> domain name 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 March 22, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 11, 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@psycsearch.com by e-mail.
A timely Response was received and determined to be complete on April 10, 2007.
A timely and complete Additional Submission was received from
Complainant on April 13, 2007.
On April 17, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, the American
Psychological Association (“APA”), is a scientific and professional
organization that represents psychology in the
APA maintains numerous online psychological and social science research databases at its <www.apa.org> website. APA’s database materials are compiled and offered in connection with APA’s Database PsycINFO, and include APA’s own databases as well as databases offered through third-party vendors. The materials offered through APA’s PsycINFO database are extensive. Therefore, a sophisticated search engine to research these materials is of great assistance to psychology and social science researchers. APA’s search engine service created for this purpose is named PSYCSEARCH.
APA is the owner of the registered service mark PSYCSEARCH. APA uses the PSYCSEARCH service mark to promote and provide its computerized searching and research services.
The disputed domain name is confusingly similar to APA’s registered PSYCSEARCH mark in which it has exclusive rights.
Respondent registered and is using the disputed domain name, and is using the website banner name “Psycsearch,” in connection with a website that markets and sells search services for psychological literature. Respondent touts its Psycsearch service website as “[t]he most comprehensive Psychology Search engine on the web.” Respondent, through the website at the disputed domain name, offers users search capabilities in connection with hundreds of articles on various psychological and social science topics, including psychological disorders.
Respondent’s website also includes links to information about APA’s published manual on scholarly writing and editing, “APA STYLE,” as well as “click-through” revenue generating links to third-party vendors purporting to offer information and services that are associated with or are endorsed by APA, when they are not.
To the extent that Respondent is offering through its website at the disputed domain name a computerized search engine (and/or its HTML equivalent) for retrieval of psychological and social science literature, Respondent is promoting and providing services identical to those services offered by APA under its PSYCSEARCH mark.
On its website located at the disputed domain name, Respondent is falsely associating its so-called “Psycsearch” services with APA’s PSYCSEARCH services. Therefore, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with APA and its PSYCSEARCH mark as to the source, sponsorship, affiliation, or endorsement of the website and the services offered thereon. ICANN Policy ¶ 4(a)(i).
The APA did not grant any authorization to Respondent in its use of the disputed domain name and therefore Respondent has no rights or legitimate interests in respect to the disputed domain name. Nor is Respondent affiliated with or commonly known as “psycsearch.”
Neither Respondent nor its business is, and cannot be without engaging in illegal infringement, commonly known by the disputed domain name. Further, neither Respondent nor “Psycsearch” has acquired genuine, bona fide, or non-infringing trademark or service mark rights in the disputed domain name.
Respondent registered the disputed domain name in bad faith and is using the domain name in bad faith because it (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 its website by creating a likelihood of confusion with APA’s PSYCSEARCH mark as to the source, sponsorship, affiliation, or endorsement of its website and services advertised on its website. ICANN Policy ¶¶ 4(b)(iii), (iv).
In falsely associating its “Psycsearch” website and the online research services offered there, Respondent is attempting intentionally to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the APA, the PSYCSEARCH mark, and APA’s PSYCSEARCH services as to the source, sponsorship, affiliation, or endorsement of the web at the disputed domain name site and its services. ICANN Policy ¶ 4(b)(iv). Internet users who encounter the services advertised and offered through the website at the disputed domain name will believe that Respondent and its website are associated with or endorsed by the APA as a professional organization that offers research services which it advertises, which is not the case. This is evidence of Respondent’s bad faith under the UDRP. ICANN Policy ¶ 4(b)(iv).
Respondent’s registration and use of the disputed domain name is disrupting the business of the APA by misleading Internet users to mistakenly believe that Respondent’s business is somehow associated with or endorsed by the APA and thus confusion is likely. This is evidence of bad faith under the UDRP. ICANN Policy ¶ 4(b)(iii).
Finally, 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 ICANN Policy.
See Societe des Hotels Meridien
v. Modern Limited -Cayman Web Dev., D2004-0321 (WIPO June 14,
2004). Because its business is based
upon multiple infringements of the PSYCSEARCH and APA STYLE marks, Respondent
is not engaged in the preparation for use, nor the use of the disputed domain
name in connection with a bona fide
offering of goods or services. These
facts support a finding of Respondent’s bad faith under the UDRP.
B. Respondent
Respondent is a psychology major
student at
The website at the disputed domain name was created as a result of a psychology Master’s project. The intention was to create a website that integrates articles, forums, and psychology-related web search results to queries. The purpose of this website was to provide a forum for students, professionals and others to attain information for research purposes, general interest or sharing information.
Respondent has spent two years in creating this website and building a
customer base. Respondent has invested
time and money in the process. Since
Respondent is not from an I.T. background, freelance developers were hired and
paid to build this website. Further, Respondent has spent money on advertising
over the past two years about the free services offered at the disputed domain
name. Respondent pays Google Adwords to
display the ad for the disputed domain name when a user searches for keyword “psychology.”
One of the primary intentions with which this website was started was
to provide free counseling services to members. The section is already available on the website
which allows users to post questions anonymously. Respondent wishes to become a professional
counselor and offer free advice to the users as a means of giving back
something to the community as not everyone can afford visiting a counselor. Respondent is graduating this year and wishes
to work on this website full time providing more services to the users.
The website contains
The website at the disputed domain
name uses Google Adsense to display ads on the website. Google randomly chooses which ads are
displayed on the page. Respondent has no
affiliation with the third-party vendors that choose to use
The services provided at the disputed domain name are different from those offered by Complainant, in that Respondent provides free psychology-related search results from the World Wide Web. Complainant’s PSYCSEARCH services search articles within the PSYCINFO database. Complainant’s services require a payment whereas all the services provided at the disputed domain name are free. The website at the disputed domain name allows users to search for psychology-related articles from all over the web for free; it allows users to access free psychology-related articles that are scattered all around the web; it allows users to share their problems and concerns and to get advice from other people using the forums. As a future enhancement, it will also allow other students and professors to post their articles/papers on the website. Hence, the services offered at the disputed domain name are not identical to the services offered by Complainant (APA).
There is no statement on the website at the disputed domain name to the
effect that it is related to or affiliated with
Also as noted above, all the services provided are free. The website at the disputed domain name was
not created with the intention of making commercial gain. On the contrary, it has been created by a
psychology student with the sole purpose of giving back something to the
community. The Google Ads on the website
are not a major source of income; in fact Respondent spends money to advertise
on Google about the free services offered on the website at the disputed domain
name.
The disputed domain name was not registered
to create confusion with
Since the website was a psychology-related
search engine, <psycsearch.com> would be the first name that would
come to mind. It was a natural choice
and was not chosen to create confusion with
In order to avoid any risk of confusion,
Respondent can put a disclaimer on the top of the website
stating that her website is not linked to nor has any affiliation with
Complainant claims that PSYCSEARCH was
registered as a trademark back in 1997. Respondent registered the contested
domain name in 2005. Complainant had
eight years to register that domain name during which time they could have
easily registered the domain.
Now after Respondent has invested time and
money for two years in trying to develop a portal for free psychology-related
services, Complainant wants the domain name to be transferred to them. Respondent has legitimate interests in the
domain name as it is related to building the career of Respondent and also
because Respondent has spent considerable amount of time on the domain name.
The website at the disputed domain name was created with the intention
of providing individuals true psychology-related services like unbiased search
results, free articles, free forums, etc. Individuals who register domain names in bad
faith typically have one page put up at that domain and that page consists of
only ads. That way when the user visits
the website, there is nothing there except ads on which they have to click and
the individual ends up making money. On
the contrary, Respondent’s website is a complete website providing hundreds of
articles to users and a search engine that searches only psychology-related
websites on the web. It was created by a
psychology major student for her Master’s project.
Respondent has no commercial gain from the website. Respondent is not a cybersquatter registering
domains solely for the purpose of making money. Respondent being a psychology major student,
wanted to provide free services to the users. Respondent in turn is spending money
advertising about the free services offered by the website.
C. Additional Submissions
Respondent does not dispute that the disputed domain name is confusingly similar to APA’s registered PSYCSEARCH mark. Moreover, the addition of the top-level domain name, “.com,” does not affect the subject domain name for the purpose of determining whether it is identical or confusingly similar to APA’s PSYCSEARCH mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Respondent also does not contest APA’s rights in its registered
PSYCSEARCH mark as pleaded in the Complaint.
It is
irrelevant whether Respondent was actually aware of APA’s PSYCSEARCH mark
because Respondent is on inquiry notice of federally registered marks. See
Respondent is using the disputed
domain name, which is identical to APA’s PSYCSEARCH mark, in association with the same services as those offered by APA –
“integrat[ing] … information for [psychology] research purposes ….” APA provides the same services in connection
with its PSYCSEARCH mark, as well as on its <apa.org> website. APA also promotes and offers for sale printed
manuals and computer software programs that serve as assistance guides in
writing scholarly papers in the fields of psychology and related social
sciences under the APA STYLE and APA-STYLE HELPER marks. The fact that Respondent’s website includes
links to information about the APA STYLE manual is at the very least indirect
proof that (i) Respondent was aware of APA and its marks prior to registering
the contested domain name, (ii) Respondent’s use of the disputed domain name is
a knowing infringement of APA’s trademark rights, and (iii) Respondent
registered and is using the domain name with the intent of misleading
prospective users conducting research in the behavioral and psychological
sciences on the Internet as to the source of Respondent’s services.
Assuming arguendo (without
conceding) that Respondent’s website could be considered as offering bona fide services, where, as here, a
domain name is identical to another’s trademark, and the use of the domain name
has the affect of diverting away the other’s potential customers or users, such
usage cannot be used to support a finding of a legitimate interest. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9,
2001).
Respondent also admits that she receives income from the
“click-through” advertisements associated with the disputed domain name. Regardless of whether Respondent considers
this income “major,” clearly Respondent benefits by diverting Internet traffic to her website. Use of a contested domain name for such a
purpose is not considered a bona
fide offering of goods or services
within the meaning of ICANN Policy ¶ 4(c)(i), nor is
it a legitimate noncommercial or fair use within the meaning of ICANN Policy ¶
4(c)(iii). See Wal-Mart Stores, Inc. v. Power of
Choice Holding
Respondent does not deny that she is without authorization from APA to use APA’s PSYCSEARCH mark, whether as a domain name, a web page banner, or in any other manner or medium. See June Bug Enters., Inc. v. myspecialprice.com, FA 833078 (Nat. Arb. Forum Dec. 27, 2006); see also National Rifle Assoc. v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000); and see Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000).
Lastly, Respondent claims that she adopted the disputed domain name in the hope of “building” her career. Such assertions do not constitute legitimate rights or interests in the contested domain name, but rather evince Respondent’s intent to trade upon APA’s rights in its PSYCSEARCH mark. Moreover, Respondent clearly failed to perform any due diligence before adopting APA’s PSYCSEARCH mark as a domain name for her own use. While Respondent claims to have “spent considerable amount of time on the domain,” she pursued those efforts in furtherance of capitalizing upon trademark rights that did not belong to her.
Respondent claims
that her website at the disputed domain name is a “complete website” that
provides different services from those offered by APA and will not confuse
prospective visitors. However,
Respondent completely ignores that her unauthorized use of APA’s PSYCSEARCH mark
as a domain name causes initial interest confusion. Even if prospective consumers are
sophisticated, initial interest confusion works a cognizable trademark injury. See Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 260 (2nd Cir. 1987). In fact, the use of another’s trademark in a
way that captures a consumer’s attention can be considered an act of
infringement. Brookfield Comms., Inc. v. West Coast Entm’
Corp., 174 F.3d 1036, 1062 (9th Cir. 1999),
quoting, Dr. Seuss Enters. v. Penguin Books,
USA, Inc., 109 F.3d 1394, 1405 (9th Cir. 1997), petition for cert. dismissed, 118 S.Ct. 27 (1997). Therefore, even if a visitor to Respondent’s website
eventually was to realize that it is not sponsored by, affiliated with or endorsed
by APA, initial interest confusion is undoubtedly present, and the damage to
APA already has been done, in that Respondent’s use of APA’s PSYCSEARCH mark
has already diverted the user searching for APA’s services to Respondent’s website
instead.
Apart from Respondent’s concession that she earns money from the website at the disputed domain name (or by the accompanying Google advertisements on the site), the contested domain name at issue is obviously connected with Complainant, APA. Under these circumstances, unauthorized use or registration of the disputed domain name by anyone other than APA, even in connection with a purportedly legitimate business, suggests “opportunistic bad faith.” See Pavilion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000).
Respondent does not contest that
she registered the disputed domain name and operates a website associated with
this domain name in order to incur a benefit, whether it is income through the
site or its advertisements, an attempt at bolstering her career, or as a way to
garner a customer base. Respondent’s
services are such that an ordinary Internet user would be lead to believe that
Respondent’s services are somehow associated with those of APA. Moreover, Respondent’s use of the disputed
domain name and provided links to APA STYLE are disrupting APA’s business as an
independent resource for online information and materials in the fields of
psychology and the behavioral sciences.
Respondent’s actions constitute bad faith in registering and using the
disputed domain name under ICANN Policy 4(b)(iii). See
Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat.
Arb. Forum Dec. 23, 2000); see
also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003).
FINDINGS
Complainant has trademark rights in the
string PSYCSEARCH.
Complainant operates a website offering
services to search the psychological literature. Those search services are offered under
Complainant’s mark PSYCSEARCH.
Respondent is a graduate student in
psychology and created the website at the disputed domain name as a Master’s
project, with the intent to provide a forum for students, professionals, and
others to find, for free, information for research purposes or general
interest.
Respondent has put considerable effort, both
personal and financial, into creating the website at the disputed domain
name. Respondent pays money to advertise
the website via Google.
Respondent has no commercial gain from the website.
Respondent wishes to become a professional
counselor and offer free advice to the users as a means of giving back
something to the community as not everyone can afford visiting a counselor. Respondent is graduating this year and wishes
to work on this website full time providing more services to the users.
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 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;
(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.
The contested domain name is obviously identical
to Complainant’s mark PSYCSEARCH. The
Panel notes the cases cited by Complainant to support this point and agrees
that those citations are appropriate.
According to Paragraph 4(c) of the Policy, “any
of the following circumstances, in particular but without limitation, if found
by the Panel to be proved based on its evaluation of all evidence presented,
shall demonstrate your rights or legitimate interests to the domain name for
purposes of Paragraph 4(a)(ii): … (iii) you are making
a legitimate noncommercial or fair use of the domain name, without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark or
service mark at issue.”
Respondent has admitted that she receives
advertising revenues from Google.
However, she states that those revenues are minor and that she has no
commercial gain from the website. As a
consequence, the Panel infers that the advertising revenues do not compensate
Respondent’s costs for the project.
Complainant has not provided any evidence or convincing arguments to the contrary. Thus, the Panel finds that Respondent has provided sufficient evidence to show that she has no intent for commercial gain to misleadingly divert consumers or to tarnish Complainant’s service mark.
It is clear that to provide free search services for publicly available information and articles is a legitimate noncommercial use in the sense of the Policy. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name); see also Bharatplanet.com Ltd v. Adnet Solutions, AF-0290 (eResolution Sept. 18, 2000) (finding that the respondent’s active use of the <bharathmail.com> domain name and pending expansion plans was evidence that the respondent had legitimate interests in the contested domain name and was not using it in bad faith).
See also Britannia Building Society v. Britannia Fraud Prevention, D2001-0504 (WIPO July 6, 2001):
The Respondent’s actions cannot be characterized as consistent with an "intent for commercial gain to misleadingly divert consumers." That phrase refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales. See Universal City Studios, Inc. v. G.A.B. Enterprises, D2000-0416 (WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc., D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for commercial gain" and thus no loss of legitimacy. That some Internet users might initially be confused into thinking that, because of the use of the mark in the Domain Name, <britanniabuildingsociety.org> is Complainant’s official website is of no moment . . . . Second, and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet.
Complainant argues
that Respondent’s use of the contested domain name cannot possibly be
legitimate, because it violates U.S. trademark and unfair competition laws. Whether or not this is the
case is a matter that should be resolved by the
U.S. law recognizes
a fair use defense against allegations of trademark infringement. According to the
It is beyond the scope of this Panel to determine whether or not Complainant’s mark is descriptive, and whether or not Respondent’s use of the mark might or might not be acceptable fair use.
However, the Panel finds that Respondent has presented a valid prima facie case to the effect that her use of Complainant’s mark might be permissible fair use.
Thus this Panel holds that Respondent’s use of the contested domain name is legitimate in the sense of the Policy, without prejudice to what might be found by a national court applying national trademark and unfair competition laws.
Further, Paragraph 4(c)(i) of the Policy states that a legitimate interest exists if the Respondent can show “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
Again, to provide
free search services is a bona fide
offering of goods or services, unless it conflicts with some national
laws. But the determination of whether
that is or is not the case is best left to national courts, especially since,
for the reasons set forth below, the point is moot: the Complaint must in any
case be dismissed because Complainant has failed to prove that Respondent
registered and used the disputed domain name in bad faith.
Complainant cites Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001). But that case must be distinguished
from the present case. There was no
Response in the cited case, therefore, the Panel was
given no plausible explanation for the registration of the contested domain
name. Such is not the case here. Respondent has, as noted above, plausibly
explained why her registration and use of the disputed domain name is
legitimate in the sense of the Policy (without prejudice to a contrary finding
by a national court on grounds of trademark or unfair competition law).
Complainant cites Wal-Mart Stores,
Inc. v. Power of Choice Holding
Complainant cites June Bug Enters., Inc. v. myspecialprice.com, FA 833078 (Nat. Arb. Forum Dec. 27, 2006), National Rifle Ass’n v. fredg.com, FA 95837 (Nat. Arb. Forum Nov. 30, 2000) and Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 14, 2000). But those cases must be distinguished from the present case. In the cited cases, the arguments put forth by the respondent were not plausible and were correctly discounted by the Panel. Such is not the case here, where Respondent’s arguments regarding her reasons for choosing the disputed domain name are convincing.
Complainant cites Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003). But those cases must be distinguished from the present case. In the first cited case, there was no Response. As noted above, in the present case Respondent has provided plausible explanations, which must be taken into account by the Panel. In the second cited case, the Panel found, on the basis of the evidence submitted, that the respondent was making a commercial use of the disputed domain name, to sell goods in direct competition with the complainant. Such is not the case here, where the Panel finds that Respondent is not making a commercial use of the disputed domain name.
Even if the Panel were to hold that
Respondent has no rights or legitimate interests in the disputed domain name,
the Complaint would fail because Complainant has failed to satisfy its burden
of proving that Respondent registered and used the disputed domain name in bad
faith.
Complainant makes many allegations regarding Respondent’s bad faith, but provides no evidence to support them. For example, Complainant asserts that Respondent’s registration and use of the disputed domain name is disrupting the business of the APA, but it provides no evidence to support that assertion. Similarly, the Complaint asserts that an ordinary Internet user would be lead to believe that Respondent’s services are associated with those of the APA, but provides no evidence to support this statement, which is not prima facie obvious, since it may well be the case that an ordinary person, especially one not residing in the USA, may not be aware of the existence of the APA or of its publication search service.
Mere allegations are not sufficient to
establish bad faith registration and use. See
Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA
406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to
establish that respondent registered and used the disputed domain name in bad
faith because mere assertions of bad faith are insufficient for a complainant
to establish UDRP ¶ 4(a)(iii)).
Further, the Respondent has convincingly
argued that:
1.
She was
not aware that PSYCSEARCH was a service mark registered by Complainant. This assertion is plausible because there is
no mention of the string PSYCSEARCH on Complainant’s home page
<www.apa.org>, nor on the site map, nor even on the PsycINFO main
page. PSYCSEARCH is mentioned only in
web pages further down the site’s hierarchy, such as
<www.apa.org/psycinfo/training/applic/homepage.html> or
<www.apa.org/psycinfo/training/searchsteps.html>.
2.
She
wanted to, and did, create a free search service for psychological articles
that are in the public domain. See Mule
Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no
bad faith where the respondent has an active website that has been in use for
two years and where there was no intent to cause confusion with the
complainant’s website and business).
3.
The
choice of the string “psycsearch” for such a service is obvious. See Eastbay Corp. v. VerandaGlobal.com, Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that
using a domain name consisting of a common descriptive and generic expression
as a portal to a website featuring various advertisements and links is a bona
fide offering of goods or services); see also Energy
Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001)
(finding that the respondent has rights and legitimate interests in the domain
name where “Respondent has persuasively shown that the domain name is comprised
of generic and/or descriptive terms, and, in any event, is not exclusively
associated with Complainant’s business”).
It must not be forgotten that the domain name
system is inherently first-come, first-served.
As Respondent correctly points out, Complainant could have registered
the disputed domain name at any time between 1997 and 2005. The purpose of the Policy is not to
allow trademark owners to obtain domain names that, for whatever reason, they
failed to register earlier. The purpose
of the Policy is to protect trademark owners from cybersquatters, that is, from
people who abuse the domain name system in a very specific way, which specific
way is outlined in Paragraph 4(a) of the Policy.
The closest equivalent to a legislative
history for the Policy can be found in the 30 April 1999 Final Report of the
WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy
(available online at: http://www.wipo.int/amc/en/processes/process1/report/index.html
). This report states at paragraph 135:
In view of the weight of opinion against
mandatory submission to an administrative procedure in respect of any
intellectual property dispute arising out of a domain name registration, the
final recommendations of the WIPO Process contain two major changes in respect
of the suggested administrative dispute‑resolution procedure:
(i) First,
the scope of the procedure is limited so that it is available only in respect
of deliberate, bad faith, abusive, domain name registrations or
“cybersquatting” and is not applicable to disputes between parties with
competing rights acting in good faith.
(ii) Secondly,
the notion of an abusive domain name registration is defined solely by
reference to violations of trademark rights and not by reference to violations
of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited
to cases of abusive registrations (or cybersquatting), as defined below, and
would not be available for disputes between parties with competing rights
acting in good faith.
And at 166:
The first limitation would confine the
availability of the procedure to cases of deliberate, bad faith abusive
registrations.
Complainant correctly points out that
Respondent registered and is using the disputed domain name in order to incur a
benefit. Indeed, one would expect that
most, if not all, owners of domain names register them in order to incur a
benefit. The question to be answered by
UDRP Panels is whether Complainant has provided sufficient evidence to prove
that Respondent, by attempting to incur a benefit, has acted deliberately, in bad
faith, and abusively (“cybersquatting”).
Complainant appears to believe that
Respondent must have acted in bad faith because trademark registrations are
published, and thus publicly known. But
Respondent’s failure to verify the existence of Complainant's trademark is not,
in and of itself, evidence of bad faith in the sense of the Policy. Indeed, it is clear from the travaux preparatoires of the Policy that
mere failure to conduct a trademark search does not constitute bad faith
behavior. The 1999 WIPO Report cited
above states at paragraph 103:
… the performance of
a prior search for potentially conflicting trademarks should not be a condition
for obtaining a domain name registration .… Particularly in an international
context, the requirement of searches prior to the registration of a domain name
was generally considered to be unrealistic and conducive to unnecessary delays
in the registration process.
And the report states at paragraph 105:
It is not recommended that domain name
registrations be made conditional upon a prior search of potentially
conflicting trademarks but it is recommended that the domain name application
contain appropriate language encouraging the applicant to undertake voluntarily
such a search.
Complainant cites Societe des
Hotels Meridien v. Modern Limited -Cayman Web Dev. D2004-0321 (WIPO
June 14, 2004). But that case must be
distinguished from the present case.
There was no Response in the cited case,
therefore, the Panel was given no plausible explanation for the registration of
the contested domain name. Such is not
the case here. Respondent has, as noted
above, plausibly explained why her registration and use of the disputed domain
name were not made in bad faith.
Complainant cites Pavilion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) and Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000). But those cases must be distinguished from
the present case. In the first cited
case, there was no Response. As noted
above, in the present case Respondent has provided plausible explanations,
which must be taken into account by the Panel.
In the second cited case, there was a Response, but the arguments put
forth by the respondent were not plausible and were correctly discounted by the
Panel. Such is not the case here, where
Respondent’s arguments are convincing.
Respondent has offered, in
order to avoid any risk of confusion, to put a disclaimer on the top of the website
stating that her website is not linked or has no
affiliation with
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Richard Hill, Panelist
Dated: April 30, 2007
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