Life Enrichment Trust Inc. v. Stephen Spano
Claim Number: FA1401001538622
Complainant is Life Enrichment Trust Inc. (“Complainant”), represented by Tristram R. Fall of Fox Rothschild LLP, Pennsylvania, USA. Respondent is Stephen Spano (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifeenrichmenttrust.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2014; the National Arbitration Forum received payment on January 10, 2014.
On January 13, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lifeenrichmenttrust.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lifeenrichmenttrust.com. Also on January 15, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 4, 2014.
On February 10, 2014, Complainant filed an Additional Submission which was also timely.
On February 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
a) Complainant has rights in the LIFE ENRICHMENT TRUST mark, which Complainant uses in connection with fiduciary representative and trustee services. As a court approved fiduciary, Complainant allows people to safeguard assets and plan for the financial future of their loved ones with disabilities without the risk of endangering funding for the needs of the individual. Complainant owns the United States Patent and Trademark Office (“USPTO”) registration for the LIFE ENRICHMENT TRUST mark (Reg. No. 4,411,190 filed Apr. 16, 2013; registered Oct. 1, 2013). Complainant has been using this mark continuously since February 19, 2004, in commerce, and Complainant has operates the website <lifeenrichmenttrust.org>, created February 3, 2004.
b) The <lifeenrichmenttrust.com> domain name is identical to Complainant’s mark. Respondent merely removes spacing from the mark and adds the generic top-level domain (“gTLD”) “.com” to create the disputed domain name—changes which do not distinguish the disputed domain name from the LIFE ENRICHMENT TRUST mark.
c) Respondent does not have any rights or legitimate interests in respect of the disputed domain name.
a. Respondent is not commonly known by the disputed domain name. The WHOIS record for the <lifeenrichmenttrust.com> domain name lists “Stephen Spano” as the domain name registrant, and Complainant has not given Respondent permission or authorization to use the LIFE ENRICHMENT TRUST mark.
b. Respondent uses the <lifeenrichmenttrust.com> domain name to resolve to a website under the <elderlawservices.com> domain name for the law firm Spano & Dawicki which helps its clients with “Planning Solutions to Protect Your Investments and Your Family.” Complainant and Respondent provide overlapping, if not partially identical, services: creating and managing special needs trusts.
d) Respondent’s bad faith registration and use of the <lifeenrichmenttrust.com> domain name.
a. Respondent is intentionally diverting Internet users to its competing website, thus disrupting Complainant’s business.
b. Consumers who are familiar with Complainant that later encounter Respondent’s website are likely to be confused into believing that the website is somehow sponsored by or affiliated with Complainant. Respondent’s decision to free ride on Complainant’s goodwill is evidence of its bad faith. Respondent registered and is using the disputed domain name in order to profit from this confusion and usurping of goodwill.
B. Respondent
a) Respondent is an elder and special needs attorney who has been using the name Life Enrichment Trust for many years before Complainant was formed or sought a mark. Respondent was a founding member of the Academy of Special Needs Planners in 2006, past president of the National Elder Law Foundation, past president of the Life Care Planning Law Firms Association, and past president of the National Academy of Elder Law Attorneys, Massachusetts Chapter.
b) Complainant is a nonprofit in Pennsylvania; Respondent practices in Massachusetts. Respondent and Complainant practice in a similar industry many states apart.
c) Respondent has used the Life Enrichment Trust name since 2004 pursuant to Complainant’s exhibit dated March 28, 2013, from Mesmer & Deleault, Respondent’s attorney.
d) Respondent registered the domain name in February of 2007 and has been promoting life enrichment trusts for many years.
e) The <lifeenrichmenttrust.com> domain name was not registered in bad faith.
a. There is no likelihood of confusion between Respondent and Complainant as Respondent is not licensed to practice in Complainant’s state of Pennsylvania and Complainant is not licensed to practice in Respondent’s state of Massachusetts.
b. Respondent’s domain name registration long predates Complainant’s application for its mark in 2013. Complainant admits that it did not register the mark until 2013.
c. Respondent rejects Complainant’s claim that it created a website in 2004 as a review of the domain name <lifeenrichmentservices.org> at the Internet archive website <web.archive.org> reveals that as late as March 1, 2007 the website was merely a <register.com> placement page. Rather, it was not until September 5, 2007 that Complainant’s website displayed any of Complainant’s nonprofit’s information on the archival website.
The Panel notes that the <lifeenrichmenttrust.com> domain name was registered on February 2, 2007.
C. Additional Submissions
a) Complainant’s Additional Submission
i. Lack of trademark registration does not preclude a complainant from asserting its trademark rights for the purposes of a domain name dispute under the Policy.
ii. Even though Complainant agreed to disclaim all rights in the term “Trust,” as used in its registered mark “LIFE ENRICHMENT TRUST,” the balance of the mark was not disclaimed and the mark as a whole is not merely descriptive.
iii. Complainant asserts common law rights in its mark “LIFE ENRICHMENT TRUST” that existed long before Complainant obtained its trademark registration in 2013. Complainant has been using the mark “LIFE ENRICHMENT TRUST” since 2004. See the attached Affidavit and its Exhibit A. Complainant is clearly the senior user of the mark “LIFE ENRICHMENT TRUST”, and has sufficient use to claim rights in this mark.
Complainant established that it had rights in the marks contained in the disputed domain name. The disputed domain name is identical to Complainant’s “LIFE ENRICHMENT TRUST” mark.
Respondent has rights to or legitimate interests in the disputed domain name.
Respondent has not registered and used the disputed domain name in bad faith.
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."
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 rights in the LIFE ENRICHMENT TRUST mark, which Complainant uses in connection with fiduciary representative and trustee services. Complainant notes that, as a court approved fiduciary, Complainant allows people to safeguard assets and plan for the financial future of their loved ones with disabilities without the risk of endangering funding for the needs of the individual. Complainant further notes that it owns the USPTO registration for the LIFE ENRICHMENT TRUST mark (Reg. No. 4,411,190 filed Apr. 16, 2013; registered Oct. 1, 2013). Panels have found that the registration of a mark is evidence of having rights in said mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Further, panels have held that the rights established by trademark registration extend back to the date of the trademark application filing. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). Given this precedent, the Panel finds that Complainant has rights in the LIFE ENRICHMENT TRUST mark dating back to April 16, 2013 pursuant to Policy ¶ 4(a)(i).
Further, Complainant asserts that it has been using this mark continuously since February 19, 2004, in commerce, and Complainant has operates the website <lifeenrichmenttrust.org>, created February 3, 2004. The panel in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. As such, as the Panel finds that Complainant has sufficiently demonstrated that the public has created and association between Complainant and the mark, the Panel finds that Complainant has common law rights in the mark under Policy ¶ 4(a)(i).
Complainant next alleges that the <lifeenrichmenttrust.com> domain name is identical to Complainant’s mark. According to Complainant, Respondent merely removes spacing from the mark and adds the gTLD “.com” to create the disputed domain name—changes which do not distinguish the disputed domain name from the LIFE ENRICHMENT TRUST mark. Panels have agreed, finding spacing and gTLDs to be irrelevant. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). As such, the Panel finds that Respondent’s <lifeenrichmenttrust.com> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent states that it is an elder and special needs attorney who has been using the name Life Enrichment Trust for many years before Complainant was formed or sought a mark. Respondent notes that it was a founding member of the Academy of Special Needs Planners in 2006, past president of the National Elder Law Foundation, past president of the Life Care Planning Law Firms Association, and past president of the National Academy of Elder Law Attorneys, Massachusetts Chapter. Respondent asserts that it has used the Life Enrichment Trust name since 2004, pursuant to Complainant’s exhibit dated March 28, 2013, from Mesmer & Deleault, Respondent’s attorney. As such, the Panel finds that Respondent has created an association between itself and its offerings and thus it is commonly known by the <lifeenrichmenttrust.com> domain name pursuant to Policy ¶ 4(c)(ii). See Digitronics Inventioneering Corp. v. @Six.Net Registered, D2000-0008 (WIPO Mar. 1, 2000) (finding that the respondent was commonly known by the <six.net> and <sixnet.com> domain names even though the complainant had registered the SIXNET trademark because the respondent demonstrated that its customers associated the respondent’s company with the domain names).
Respondent further argues that it has been using the domain name in connection with its business of being an elder and special needs attorney in Massachusetts. Respondent notes that it registered the domain name in February of 2007 and has been promoting life enrichment trusts for many years. In Digital Interactive Sys. Corp. v. Christian W, FA 708968 (Nat. Arb. Forum July 3, 2006), the panel concluded that the complainant failed to satisfy Policy ¶ 4(a)(ii) because the respondent provided sufficient evidence to convince the panel that it was using the disputed domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Therefore, the Panel finds that Respondent has been making a bona fide offering of goods or services under Policy ¶ 4(c)(i) because the jurisdictional limitations on the practice of law minimize the odds that there will be wrongful or unfair competition.
Respondent further argues that its business predates Complainant’s business, noting that Complainant’s own website for the LIFE ENRICHMENT TRUST business was not operable until well after Respondent’s first use. See Response at pp. 3–4. The Panel agrees that Respondent has a Policy ¶ 4(a)(ii) right and legitimate interest in this domain name because it began a meaningful use of its domain name prior to Complainant’s first open and public use of the LIFE ENRICHMENT TRUST mark. See, e.g., The Music Zoo Corporation v. -, FA 1500499 (Nat. Arb. Forum July 24, 2013) (finding that the respondent had Policy ¶ 4(a)(ii) rights and legitimate interests when its domain name registration predated complainant’s trademark rights).
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 concludes that the respondent acted in bad faith).
As the Panel concludes that Respondent has rights or legitimate interests in the <lifeenrichmenttrust.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further finds that Respondent has not registered or used the <lifeenrichmenttrust.com> domain name in bad faith if it finds that Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also 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)).
Respondent argues that the <lifeenrichmenttrust.com> domain name was not registered in bad faith. Respondent notes that Complainant is a nonprofit in Pennsylvania, Respondent practices in Massachusetts, and Respondent and Complainant practice in a similar industry many states apart. In Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001), the panel found that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant. Therefore, the Panel finds that Respondent did not intend for any disruption to Complainant’s business as Respondent foresaw no connection being made between the two entities. Accordingly, the Panel finds that Respondent did not register and is not using the <lifeenrichmenttrust.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent further asserts that there is no likelihood of confusion between Respondent and Complainant as Respondent is not licensed to practice in Complainant’s state of Pennsylvania and Complainant is not licensed to practice in Respondent’s state of Massachusetts. The Panel therefore finds that Respondent did not intend to create a likelihood of confusion to profit off of Internet users’ mistakes, and thus did not register and is not using the <lifeenrichmenttrust.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).
Lastly, Respondent argues that its domain name registration long predates Complainant’s application for its mark in 2013. Respondent notes that Complainant admits that it did not register the mark until 2013. Respondent claims that it has used the Life Enrichment Trust name since 2004 pursuant to Complainant’s exhibit dated March 28, 2013, from Mesmer & Deleault, Respondent’s attorney, and Respondent registered the domain name in February of 2007 and has been promoting life enrichment trusts for many years. In Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000), the panel found no bad faith where the respondent registered the domain prior to the complainant’s use of the mark. Similarly, the Panel here refuses to find bad faith under Policy ¶ 4(a)(iii).
Respondent rejects Complainant’s claim that it created a website in 2004 as a review of the domain name <lifeenrichmentservices.org> at the Internet archive website <web.archive.org> reveals that as late as March 1, 2007 the website was merely a <register.com> placement page. Respondent asserts that rather, it was not until September 5, 2007 that Complainant’s website displayed any of Complainant’s nonprofit’s information on the archival website.
Complainant argues in its Additional Submission that it has been using the mark “LIFE ENRICHMENT TRUST” since 2004 and Complainant is clearly the senior user of the mark “LIFE ENRICHMENT TRUST”, and has sufficient use to claim rights in this mark.
The Panel finds that there is no sufficient evidence that Complainant’s mark “LIFE ENRICHMENT TRUST” was used and known enough to infer the Respondent’s bad faith at the time of Respondent’s registration of the disputed domain name on February 2, 2007. The Panel’s observation is also based on the Respondent’s assertion that it was not until September 5, 2007 that Complainant’s website displayed any of Complainant’s nonprofit’s information on the archival website.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <lifeenrichmenttrust.com> domain name REMAIN WITH Respondent.
Ho-Hyun Nahm, Esq., Panelist
Dated: February 19, 2014
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