Claim Number: FA0904001256835
PARTIES
Complainant is California Association of Marriage and
Family Therapists (“Complainant”),
represented by Holly Pranger, of Pranger Law Group,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therapistfinder.net>, registered
with Wild
West Domains, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge and have no known conflict in
serving as Panelist in this proceeding.
David P. Miranda and G. Gervaise Davis III,
as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 8, 2009; the
National Arbitration Forum received a hard copy of the Complaint on April 10, 2009.
On April 9, 2009, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <therapistfinder.net> domain name is
registered with Wild West Domains, Inc.
and that the Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 April 16, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 6, 2009 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@therapistfinder.net by e-mail.
A timely Response was received and determined to be complete on May 6, 2009.
Complainant filed a timely additional submission on May 11, 2009.
Respondent filed a timely additional submission on May 18, 2009.
All submissions were considered by the Panel.
On May 18, 2009, pursuant to Respondent’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed David P. Miranda and G. Gervaise Davis III, as Panelists and Honorable
Karl V. Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Contentions
Complainant is the California Association of Marriage and Family
Therapists (“Complainant” or “CAMFT”), a
CAMFT is the exclusive owner of Registration Nos. 3,560,755 (Principal
Register) and 2,394,392 (Supplemental Register) for the service mark
THERAPISTFINDER. Complainant has made continuous
use of the mark THERAPISTFINDER in connection with “providing an interactive
electronic database in the nature of an information directory of licensed
marriage, family and child counselors, provided by means of a global computer
network” (“Services”) since 1996. CAMFT
applied for the THERAPISTFINDER service mark on December 9, 1996, with a
first-use date of September 1, 1996, and the service mark was registered on the
Supplemental Register on October 10, 2000.
On January 13, 2009, the service mark was registered on the Principal
Register. CAMFT has been utilizing
<therapistfinder.com> for over twelve years, and <therapistfinder.org>
for over five years. CAMFT has invested,
and continues to invest, in the THERAPISTFINDER service mark and URLs in order
to keep them informative, competitive and current.
The Domain Name <therapistfinder.net>
was first registered on December 21, 1999.
By at least December 2006, <therapistfinder.net>
pointed directly to <findcounseling.com>, which means that any user who
entered the domain name <therapist finder.net> would be automatically
redirected to <findcounseling.com>, a competing website to that of
CAMFT’s <therapistfinder.com>.
There is no legal purpose to Respondent’s use of <therapistfinder.net> except to re-direct traffic to
Respondent’s competing website. The only
purpose of Respondent’s use of <therapistfinder.net>
is to deceive visitors by making them believe they are on a website affiliated
with or sponsored by CAMFT.
Respondent registered the <therapistfinder.net> domain name and
is using the domain name in bad faith in order to attract, for commercial gain,
Internet users to its web site, by when creating a likelihood of confusion with
Complainant’s service mark.
The <therapistfinder.net>
domain name is identical and confusingly similar to CAMFT’s THERAPISTFINDER
service mark and common law marks.
Respondent has no rights to or legitimate interest in the<therapistfinder.net>
domain name or any other domain name confusingly similar to CAMFT’s service
mark and common law marks.
Respondent is not using the domain name <therapistfinder.net> in connection with a bona fide offering of goods or services.
Respondent has not licensed or obtained permission to use the
THERAPISTFINDER service mark, in which Complainant has exclusive rights, and
this is evidence that Respondent lacks a legitimate interest in<therapistfinder.net>.
When Respondent registered <therapistfinder.net>,
it either knew that <therapistfinder.com> was being used by Complainant, or it learned that Complainant had registered
<therapistfinder.com>, and this knowledge means that Respondent did not
act in good faith.
B. Respondent’s Contentions
This action is a case of reverse domain name hijacking in which Complainant
attempts to wrest the domain name therapistfinder.net
from a legitimate business that has used the mark THERAPIST FINDER since
1996. Complainant relies on a recent
trademark registration for THERAPIST FINDER that Complainant procured by
submitting a fraudulent declaration to the U.S. Patent and Trademark
Office. That registration is now the
subject of a cancellation proceeding filed by Respondent on April 15, 2009.
Mir Internet Marketing, Inc. ( “Mir” or “Respondent”) was formed in
Although Mir’s principal service offering was always the THERAPIST
FINDER (eventually the CHICAGOLAND THERAPIST FINDER) online directory, it
initially operated at the domain name mirconnect.com. By August 23, 2000, Mir was using the
domain name therapistfinder.net to
offer its THERAPIST FINDER services. By
2000, Mir had as customers over one hundred therapists who paid to be listed in
the THERAPIST FINDER to offer its online directory services.
Mir has been commonly known as THERAPIST FINDER and CHICAGOLAND
THERAPISTFINDER since 1996.
In 1996, Complainant attempted to register the mark THERAPIST FINDER on
the Principal Register of the U.S. Patent and Trademark Office; however, the
PTO refused to register the mark on the grounds that it was merely descriptive.
While the domain name, <therapistfinder.net> may be similar
to <therapistfinder.com> and <therapistfinder.org>, the Policy also
requires that this similarity extend to a “trademark or service mark” in which
the Complainant “has rights”.
Complainant does not have trademark rights to the term THERAPIST FINDER
because respondent is the prior user, the term is merely descriptive (if not
generic) for the relevant services, and the registration on which Complainant
relies was procured by fraud and is subject to a cancellation proceeding.
The term “therapist finder” is merely descriptive (if not generic) of
an outline directory for therapists. A
search on Google, MSN and other search engines reveals many third parties using
the term “therapy finder” in just this fashion.
A merely descriptive or generic term cannot be protected as a trademark.
Respondent has a legitimate interest in its domain name. Mir established a legitimate business in July
of 1996 to offer THERAPIST FINDER online directly services. In 2000, over 400,000 people used Mir’s
THERAPIST FINDER services.
Under URDP, use of the domain name before notice of the dispute is
grounds for concluding that Mir has a legitimate interest in the domain name therapistfinder.net. The earliest date on which Mir had notice of
any dispute with complainant was on December 27, 2007, when Catherine Atkins,
an attorney for Complainant, contacted Mir demanding that Mir stop
“cybersquatting” of “our protected trademark” THERAPIST FINDER.
Mir’s use of the domain name began before December 27, 2007. Complainant’s application for registration on
the Principal Register was not even filed until June of 2008, eight years after
Mir’s use of the domain name.
It is well-established case law under the UDRP that, in general, a
finding of bad faith registration cannot be made with respect to trademark
rights that are not established at the time of registration. The domain in this case was registered before
1999 and first used by Respondent in 2000.
C. Additional Submissions
Complainant’s Additional
Submission
Respondent, knowing that Complainant was running a business
(not-for-profit) at TherapistFinder.com, took the action of establishing the
exact competing business (for profit) at the “.net.” Respondent uses the “.net” version of
Complainant’s domain to re-direct traffic to its for-profit business,
FindCounseling.com.
Respondent is the owner of over 5,000 domain names and has a history of
infringing intellectual property for the purpose of promoting Respondent’s
business. In addition to registering
domain names that contain the Intellectual property of others and redirect Internet
users, Respondent has made many copyright infringement claims under the digital
Millennium Copyright Act.
Complainant has been using the mark THERAPISTFINDER since at least 1995
which predates Respondent’s alleged date of first use of July 25, 1996.
The PTO has agreed to register THERAPISTFINDER on the Principal
Register, and due to Complainant’s use of THERAPISTFINDER, it has acquired
distinctiveness and secondary meaning. Complainant’s
trademark registration was not procured by a fraudulent declaration.
Between 1996 and 2000, Respondent’s only use of THERAPISTFINDER was as
a small button on a website. On August
23, 2000, the day when Respondent decided to create an entire website at the
.net, a full-fledged site was operating at Therapistfinder.com.
Respondent’s Additional
Submission
Mir’s founders were dedicated full time between 1996 and 2000 to the
development and promotion of the THERAPIST FINDER service. During this time period, Mir promoted the
THERAPIST FINDER.
Between 1996 and 2000, Mir made consistent and increasingly prominent
use of the THERAPIST FINDER mark.
In late 1999, Mir has an opportunity to acquire the domain <therapistfinder.net> and decided
to change the name of its flagship service from THERAPIST FINDER to THERAPIST
FINDER.NET.
On October 10, 2000, the magazine
Evidence in support of Respondent comes from Mir’s clients, the
doctors, psychologists and other licensed clinicians who have purchased
listings in Mir’s THERAPIST Finder directory.
Their testimonials were compiled in 2006 and are set forth in the Newton
Supplemental Declaration.
It is completely irrelevant that Mir has more than one mark and more
than one line of business. Mir has
assembled a large portfolio of descriptive domain names, which it makes
available for use by its customers to promote their practices (hence the large
number of registrations).
It is well-established law that a senior user of a descriptive mark
cannot assert trademark infringement against a junior user that adopts a mark
before secondary meaning is established.
Thus, even assuming Complainant can prove a date of first use preceding
Mir’s, Complainant must also show that it had established secondary meaning
before Mir commenced its use (which occurred at least as early as July of
1996). Complainant states that promotion
of its mark involved the placement of ads in its monthly magazine publication
starting in January of 1996. Complainant
would have advertised at most four times (in January/February, March/April,
may/June and June/July issues of its magazine) before the latest date on which Mir
launched its site. These four ad placements did not create secondary meaning
sufficient to give Complainant an exclusive trademark right to the descriptive
term THERAPIST FINDER.
It was Mir not Complainant that had the “full-blown” THERAPIST FINDER
website, not just on August 23, 2000, but for four years earlier when C.J. Newton
launched the world’s first online therapist directory, which he branded
THERAPIST FINDER.
When Mir acquired the domain name, Complainant’s registration on the
Supplemental Register had not issued. Bad
faith cannot arise when a domain name is registered before Complainant acquires
rights in the mark. Because the mark
THERAPIST FINDER is descriptive, Complaint did not acquire exclusive trademark
rights in the mark until the mark acquired secondary meaning. There is no evidence that this occurred
before Mir acquired the domain name <therapistfinder.net>.
FINDINGS
For the reasons set forth below the panel
finds that Complainant is not entitled to the relief requested.
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.
Since the Panel has found Complainant has not
proven bad faith, no decision is made on this element.
Since the Panel has found Complainant has not
proven bad faith, no decision is made on this element.
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). 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 the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); 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 the respondent acted in bad faith).
Respondent asserts that
its registration of the disputed domain name in 1999 predated Complainant’s
rights in the mark in that Complainant did not obtain sufficient
distinctiveness until after 2000, as the USPTO denied Complainant’s mark for
being descriptive in 2000. The Panel
finds that Complainant does not have sufficient rights in its mark that predate
the registration of the disputed domain name, therefore the Panel finds that
Respondent lacks the requisite intent to register the disputed domain name in
bad faith under Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith
where the respondent registered the domain prior to the complainant’s use of
the mark); see also Open Sys.
Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding
no bad faith where the respondent registered the domain name in question before
application and commencement of use of the trademark by the complainant).
Complainant has not proven this element.
Reverse Domain Name Hijacking
Although
the Panel finds that Complainant has failed to satisfy its burden under the
Policy, this does not necessarily require a finding of reverse domain name
hijacking on behalf of Complainant in bringing the instant claim.
The Panel finds Reverse Domain
Hijacking has not been proven.
DECISION
Complainant having failed to establish all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <therapistfinder.net> domain name remain
with Respondent.
Honorable Karl V. Fink (Ret.), Chair
David P. Miranda, Panelist
G. Gervaise Davis III, Panelist
Dated: June 1, 2009
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