Advanced Education Systems LLC v. Jay Bean c/o MDNH, Inc.
Claim Number: FA0703000948593
PARTIES
Complainant is Advanced Education Systems, LLC (“Complainant”), represented by Michael
D. Oliver, of Bowie & Jensen, 29 W. Susquehanna
Ave, Suite 600, Towson, MD 21204.
Respondent is Jay Bean c/o MDNH, Inc. (“Respondent”), represented by John Berryhill,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trainingpros.com>, registered
with Moniker
Online Services.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Hon. Nelson Diaz (retired), Hon. Daniel B. Banks, Jr. (retired) and Hon.
Paul A. Dorf, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 28, 2007; the
National Arbitration Forum received a hard copy of the Complaint on April 2, 2007.
On April 3, 2007, Moniker Online Services confirmed by e-mail to
the National Arbitration Forum that the <trainingpros.com> domain name is
registered with Moniker Online Services
and that Respondent is the current registrant of the name. Moniker Online
Services has verified that Respondent is bound by the Moniker Online Services 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 April 9, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 30, 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@trainingpros.com by e-mail.
A timely Response was received and determined to be complete on April 30, 2007.
An Additional Submission from Complainant was received on May 7, 2007. Although this Additional Submission did not
comply with Supplemental Rule 7 due to the late submission of payment, the
Panel in its discretion has considered the submission, as well as Respondent’s
reply thereto.
On May 9, 2007, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. Daniel B. Banks, Jr. (retired) and Hon. Paul A. Dorf, Panelists, and Hon. Nelson Diaz (retired)
as the Presiding Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
·
Complainant
asserts rights in a mark, TRAININGPRO and design, through a trademark
registration with the United States Patent and Trademark Office (“USPTO”) (Reg.
No. 2,840,332 issued May 11, 2004) and claims a first use date of at least as
early as October 1, 2001;
·
Complainant
asserts rights in a mark, TRAININGPRO KNOWLEDGE NOW and design, based on a trademark
registration with the USPTO (Reg. No. 2,752,917 issued August 19, 2003) and
claims a first use date of at least as early as October 1, 2001;
·
Complainant asserts that Respondent’s <trainingpros.com>
domain name is confusingly similar to
Complainant’s TRAININGPRO mark, as the disputed domain name merely adds the
letter “s” to the end of Complainant’s mark, as well as the generic top-level
domain (“gTLD”) “.com” to the end of the mark.
Such additions do not negate the confusing similarity between
Complainant’s mark and Respondent’s disputed domain name under Policy ¶ 4(a)(i);
·
Based on Respondent’s
WHOIS information, which does not indicate that Respondent is commonly known by
the disputed domain name, and the absence of any other evidence in the record
to suggest that Respondent is or has ever been commonly known by the disputed
domain name, Complainant contends that Respondent is not commonly known
by the <trainingpros.com>
domain name;
·
Complainant asserts that Respondent is using the
disputed domain name to host a website that displays a variety of hyperlinks to
third-party websites, some of which are in direct competition with
Complainant. Complainant asserts that use
of the <trainingpros.com> domain
name to operate a “link-farm”
is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii);
·
Complainant
asserts that Respondent registered and used the disputed domain name in bad
faith for purposes of commercially benefiting from the goodwill associated with
Complainant’s TRAININGPRO mark.
B. Respondent
·
Respondent does not dispute that Complainant
holds a registration with the USPTO for the TRAININGPRO mark, but notes that
Respondent registered the disputed domain name on December 8, 2002, prior to
both the filing date of Complainant’s trademark application and the
registration;
·
Respondent further asserts that Complainant’s
registrations show only that it owns rights in two stylized marks, TRAININGPRO and design and TRAININGPRO KNOWLEDGE
NOW and design. Because Complainant’s registrations with the USPTO are for design
marks, small differences become far more significant when comparing the
disputed domain name and the marks;
·
Respondent further
asserts that Complainant has not provided adequate proof of common law rights
in the TRAININGPRO mark that pre-date the registration of the <trainingpros.com>
domain name;
· Respondent further asserts that Complainant’s mark TRAININGPRO is merely descriptive (if not the common descriptive term or generic) for the associated services – professional training. Given widespread use of the terms “training pro” and “training pros,” Complainant cannot claim exclusive trademark rights and cannot show that a confusing similarity is actionable;
·
Respondent further asserts that the <trainingpros.com>
domain name is comprised of common, descriptive terms and,
therefore, Respondent has rights or legitimate interests in the disputed domain
name; Respondent further asserts
that using the <trainingpros.com> domain name to host advertisments for businesses
related to the descriptive terms provides Respondent with rights and legitimate
interests in the disputed domain name;
·
Respondent also
asserts that without sufficient proof of secondary meaning in the common law
mark, TRAININGPRO, prior to the date that Respondent registered the
disputed domain name, there can be no finding that the domain name was
regisitered in bad faith.
C. Additional Submissions
·
Complainant also asserts common law rights in
the TRAININGPRO mark based on
continuous use of the mark since at least October 4, 2001;
·
Complainant also asserts common law rights in
the TRAININGPRO KNOWLEDGE NOW mark based on continuous use
of the mark since at least October 1, 2001;
·
Complainant takes exception to Respondent’s
assertion that the trademark at issue is a stylized mark due to the limitations
inherent in Internet domain names;
·
Complainant
also asserts that Respondent’s use of the <trainingpros.com> domain name to advertise goods and services in
competition with Complainant constitutes disruption under Policy ¶ 4(b)(iii)
and is evidence of bad faith registration and use;
·
Respondent
replies that Complainant’s Additional Submission should be given no
consideration under ICANN’s Rule 12 especially in light of the fact that there
was nothing in the Response that could not reasonably have been anticipated by
Complainant;
·
Respondent
further replies that Complainant’s registrations with the USPTO do not prove
the existence of exclusive protectable rights for “training pro” separate and
apart from the stylized design marks depicted on the register;
·
Finally, Respondent
denies Complainant’s contention that the parties are in competition.
FINDINGS
The Panel finds that Respondent’s domain name, <trainingpros.com>, is not confusingly similar to a mark in which Complainant has established prior rights. The Panel further finds that Complainant has not made a prima facie showing that Respondent has no rights or legitimate interests in respect of the <trainingpros.com> domain name and that Respondent was not lawfully entitled to register and use a domain name consisting of a common, descriptive phrase.
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.
In order for Complainant to satisfy the requirements of Policy ¶ 4(a)(i), the Panel must find trademark rights that
pre-date the registration of the disputed domain name. See Phoenix Mortgage Corp. v. Toggas,
D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a)(i)
“necessarily implies that Complainant’s rights predate Respondent’s
registration . . . of the domain name”). Although Complainant
possesses federal registrations for the marks, TRAININGPRO and design and TRAININGPRO
KNOWLEDGE NOW and design, the rights conferred by these USPTO are limited to the
distinctive graphical manner in which the marks are actually depicted and do not confer exclusive rights to “trainingpro”
in other forms and styles and most certainly do not confer exclusive rights
in the common, descriptive phrase
“training pro.” Cf. B2BWorks,
Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001) (holding that the complainant
did not have exclusive rights to use of the terms “B2B” and “Works” in
association with other words, even with a registered trademark for B2BWORKS). Further,
it is uncontroverted that Respondent registered the domain name in
question on December 8, 2002, prior to the date of Complainant’s registrations.
Rights in a descriptive mark such
as TRAININGPRO, exist only upon proof that the mark had
acquired distinctiveness or “secondary meaning” prior to Respondent’s acquisition of rights in the contested
domain name. See McCarthy
on Trademarks and Unfair Competition, § 16:34 at 16-54 (4th ed. 2003) (the issue of priority and
ownership is not which party first used the mark, but which party first
achieved secondary meaning in the mark); Saratoga
Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1043 (2d Cir. 1980) (Secondary
meaning must be established prior to other’s use of a similar name. Secondary meaning occurs when, “in the
mind of the public, the primary significance of a product feature or term is to
identify the source of the product rather than the product itself.”). See also Inwood Labs., Inc.
v. Ives Labs. Inc., 456
Complainant does not meet its heavy burden. Its sole evidence that the common law mark,
TRAININGPRO, had developed secondary meaning or had acquired distinctiveness
prior to the date on which Respondent registered the disputed domain name
consists of two mentions of “TrainingPro” on a website dated October 4, 2002, a
mere two months prior to the date on which Respondent registered the disputed
domain name. These few references, of course,
prove nothing about public recognition of the mark. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that
the complainant failed to establish common law rights in its mark because mere
assertions of such rights are insufficient without accompanying evidence to
demonstrate that the public identifies the complainant’s mark exclusively or
primarily with the complainant’s products).
Nothing in
the record indicates that relevant consumers saw the mark, much less that Complainant’s
advertising, promotion and use of the mark in the two months prior to
Respondent’s registration of <trainingpros.com> caused consumers to
identify the source of the product rather than the product itself. See Inwood
Labs., Inc., 456
The Panel credits
Respondent’s assertion that the <trainingpros.com> domain name is comprised of common terms and,
therefore, determines that Respondent has rights or legitimate interests in the
disputed domain name. See
SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25,
2000) (finding that the complainant failed to show that it should be granted exclusive use of the domain name <soccerzone.com>, as it contains two
generic terms and is not exclusively associated with its business); see also
Lucky Money, Inc. v. ilovesschool.com, FA 96383 (Nat. Arb.
Forum Mar. 9, 2001) (finding the complainant cannot claim exclusive common law
rights to an expression, “Lucky Money,” comprised of generic terms). As the first to register the domain name,
Respondent is entitled to retain it. See CRS Tech. Corp. v.
CondeNet, FA 93547 (Nat. Arb. Forum Mar. 28, 2000).
DECISION
Complainant having failed to establish the first and second elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <trainingpros.com> domain name remain
with Respondent.
Hon. Nelson Diaz (retired), Hon. Daniel B. Banks,
Jr. (retired) and Hon. Paul A. Dorf, Panelists
Dated: May 23, 2007
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