The Resource Center for Pregnancy and Personal Health v. Abigail Hutchings
Claim Number: FA2002001885848
Complainant is The Resource Center for Pregnancy and Personal Health (“Complainant”), represented by James A. Sheridan of Sheridan Law LLC, Colorado, USA. Respondent is Abigail Hutchings (“Respondent”), represented by Pamela N. Hirschman of Sheridan Ross P.C., Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <truth4greeley.com>, registered with FastDomain Inc.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 26, 2020; the Forum received payment on February 26, 2020.
On February 27, 2020, FastDomain Inc. confirmed by e-mail to the Forum that the <truth4greeley.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. 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 March 5, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2020 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 firstname.lastname@example.org. Also on March 5, 2020, 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 March 25, 2020.
On March 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant made the following contentions.
Complainant, The Resource Center for Pregnancy and Personal Health, is a clinic offering pregnancy testing, education, medical testing, and counseling in Greeley, Colorado. Complainant has rights in the TESTS4GREELEY.COM mark through its trademark application with the United States Patent and Trademark Office (“USPTO”) (e.g., Serial No. 88746448, filed Jan. 3, 2020). See Amend. Compl. Annex A. Respondent’s <truth4greeley.com> domain name is confusingly similar to Complainant’s TESTS4GREELEY.COM mark as it incorporates the mark in its entirety, merely substituting the word “tests” with the word “truth.”
Respondent has no rights or legitimate interests in the <truth4greeley.com> domain name. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to confuse Internet users as to the source of the website’s content; the disputed domain name’s resolving website includes colors and design elements that are similar to those used in Complainant’s website. Respondent’s right to free speech does not extend to registering a confusingly similar domain name since Respondent could have selected a different domain name.
Respondent registered and uses the <truth4greeley.com> domain name in bad faith. Respondent disrupts Complainant’s business by using a confusingly similar domain name. Additionally, Respondent registered and uses the disputed domain name for criticism of Complainant.
Complainant has not established any rights in the TESTS4GREELEY.COM mark through registration with the USPTO because Complainant only filed an application for a trademark with the USPTO on January 3, 2020 and the application is currently pending. An application for a trademark is not regarded as a trademark. Moreover, Complainant does not establish trademark rights through its registration of the domain name <tests4greeley.com>.
Respondent’s <truth4greeley.com> domain name is not identical or confusingly similar to the Complainant’s alleged TESTS4GREELEY.COM mark because it does not incorporate the mark, Complainant cannot claim exclusive rights in the geographically descriptive element “4greeley,” and the terms “truth” and “tests” are not similar in sound, appearance, or meaning.
Respondent has rights or legitimate interests in the <truth4greeley.com> domain name. Respondent uses the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Specifically, Respondent uses the disputed domain name to provide news and information and display criticism about anti-abortion counseling centers. Moreover, Respondent seeks no commercial gain from its use of the disputed domain name.
Complainant has not provided any evidence that Respondent registered or uses the <truth4greeley.com> domain name in bad faith. 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 or use. Complainant has failed to satisfy its burden of proving that Respondent registered and used the <truth4greeley.com> domain name in bad faith.
Complainant has not established all three elements required to be proved under the Policy and for that reason the Complaint must fail.
1. Complainant is a United States non-profit corporation that states that it is “a community-funded medical center specializing in Pregnancy and STD resources and support”. It has two locations, at Greeley and Windsor, in the State of Colorado.
2. Respondent is an entity that states that its mission is to have “…the Resource Center and other Anti-Abortion Counseling Centers around Colorado to be held accountable for abusing the trust of the communities they serve.” It also wants truth, transparency and responsibility from such centers.
3. On September 17, 2019, Respondent registered the disputed domain name.
4. On January 3, 2020 Complainant filed Trademark Registration Application No. 88/746,448 with the United States Patent and Trademark Office for TESTS4GREELEY.COM
5. The evidence shows that the domain name is not identical or confusingly similar to a trademark in which the Complainant has rights.
6. The evidence shows that the Respondent has a right or legitimate interest in the domain name.
7. The evidence shows the domain name was not registered and used 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.
These criteria are not merely formal, but go to the very basis of the UDRP. Without proof of all three requirements, a complainant cannot succeed using this administrative procedure, often referred to as arbitration, and would have to initiate court proceedings if it wished to take the matter further.
The first question that arises is whether Complainant has a trademark or service mark on which it may rely in this proceeding. That requirement is known as a standing requirement because only those applicants who can prove a trademark or service mark have standing to make the Complaint.
In that regard, Complainant relies on an application for a trademark. That application is Trademark Registration Application No. 88/746,448 with the United States Patent and Trademark Office for TESTS4GREELEY.COM made on January 3, 2020.The application is currently pending. Respondent submits that Complainant has not established any rights in the TESTS4GREELEY.COM mark because its pending application with the USPTO does not confer any rights. That is because an application is not a trademark. The Respondent is right because a pending trademark application is not sufficient to establish trademark rights under Policy ¶ 4(a)(i). See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). There are many other UDRP decisions to the same effect. The Panel therefore finds that Complainant does not have rights in the TESTS4GREELEY.COM mark under Policy ¶ 4(a)(i).
Complainant has not submitted that it has an unregistered or common law trademark. It is well established that in UDRP proceedings, it is not necessary to prove a registered trademark, and that an unregistered or common law trademark is sufficient because it is “a trademark” within the meaning of Policy ¶ 4(a)(i). But a complainant who claims a common law trademark must prove that the claim is made out, in other words that the words relied are in fact a common law trademark.
In the present case, Complainant has not argued for that type of trademark and it would be extremely difficult to make out such a case because Complainant would have to show a secondary meaning in the words TESTS4GREELEY, i.e. that as well as their primary meaning, they also have a secondary meaning to link the words to the Complainant as a trademark. See the decision cited by Respondent, Florida Weimaraner Rescue, Inc. d/b/a Weimaraner Rescue of Florida v. Weimaraner Rescue of Florida a/k/a Lauren R Simmons and TechKraft Inc. c/o Jim Horn, FA 1356030 (Forum Dec. 28, 2010) (holding that “the standard of proving secondary meaning for a descriptive mark requires the proponent to show that the mark “has acquired a meaning additional to their primary, merely descriptive, meaning and are understood by the relevant public to designate services provided by complainant.”). In the present case, the relevant public would be those likely to be interested in knowing what the trademark related to or availing themselves of those services. The words in question, however, only describe the goods and services provided under the trademark, namely tests provided in Greeley, and not tests provided in Greeley by the Complainant. Nor is there any evidence that has been provided to show that the words could be or have been interpreted by the relevant public as indicating that the source of the goods and services in question is the Complainant. Accordingly, no case has been made out that the Complainant has an unregistered or common law trademark.
Accordingly, Complainant has not shown that it has a trademark that it can rely on in this proceeding.
Even if a trademark had been shown, there is a further problem facing Complainant. Assuming that there were a trademark for TESTS4GREELEY, Respondent contends that its <truth4greeley.com> domain name is not identical or confusingly similar to that trademark. The Panel agrees. Clearly the domain name is not identical to the claimed trademark as it deals principally with ‘”truth” whereas the trademark deals with “tests”. Nor is the domain name confusingly similar to the trademark. The reason is that the difference between the domain name and the trademark—“truth” for “tests”—is sufficient to distinguish the disputed domain name from the mark, so the internet user would probably not even regard them as similar let alone confusingly so. The two notions conjured up by the domain name and the trademark respectively are so uncertain and unlimited that the domain name is concerned with truth in Greeley, meaning truth in any context, and the trademark is concerned with tests of, presumably, anything, in Greeley. Most internet users would thus see the two as dealing with entirely different subjects and not to be confusing at all. See Webvan Group, Inc. v. Atwood, D2000-1512 (WIPO Feb. 20, 2001) (“[W]hen a mark is a relatively weak non-distinctive term, courts have found that the scope of protection may be limited to the identical term and that the addition of other descriptive matter may avoid confusion”).
Further, Respondent argues that the element that is similar —that is, the “4greeley” portion of the mark—is not exclusive to Complainant because it is a geographically descriptive element. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) ("[G]eographical [sic] terms are rarely, if ever, protected by trademark law because to do so would preclude others from using such words in a descriptive manner."). Complainant also contends that the descriptive terms “truth” and “tests” are not similar in sound, appearance, or meaning.
The Panel agrees and for the reasons just set out, the Panel finds that the disputed domain name is sufficiently different from the TESTS4GREELEY.COM mark that the internet user would assume they stood for different goods and services and that the <truth4greeley.com> domain name is therefore not confusingly similar to any trademark for TESTS4GREELEY.
The Complainant has therefore failed to make out the first of the three elements that it must establish.
Generally, if a Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark and the disputed domain name is not identical or confusingly similar to the mark, the Panel may decline to analyze the other two elements of the Policy. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Panel has considered following this course. However, as the parties have put considerable effort into their consideration of the other two issues which are issues of greater substance, the Panel will make some brief remarks on those issues.
It would be a very bold decision to deprive a party of a domain name which is being used for the dissemination of news, information and opinion and which is not otherwise contrary to the law. Such a decision would not be justified by anything contained in the law relating to domain names and nor would it be justified in a society that prides itself on allowing the free exchange of views and opinions.
For the foregoing reasons, the Respondent has shown a right and legitimate interest in the domain name and the Complainant has failed to make out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
The Policy sets out the specific criteria for bad faith in the following way :
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you (meaning the registrant of the domain name) have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel finds that the facts of the present case do not bring it within any of the foregoing provisions and the Complainant has therefore not shown that the Respondent registered and used the domain name in bad faith. In the first place, bad faith is seen as a transgression aimed at the complainant’s trademark and in the present case there is no trademark on which the Complainant can rely. Secondly, the Panel has already ruled that the Respondent has a right and legitimate interest in the domain name making a finding of bad faith very difficult.
The Complainant, however, goes beyond those specific provisions, as it was entitled to do and submits that the Respondent registered and used the domain name in bad faith because “(t)he domain name was registered for criticism”. The Complainant then cites 3 prior UDRP decisions said to be in support of that proposition, although not by name. UDRP decisions are not precedents, but it is useful to see how other panelists have dealt with similar issues in the past. The Panel has looked at what it presumes are the three cases cited and finds that none of them contains the proposition contended for by the Complainant. Indeed, it would be surprising if they did, because there is no principle that equates bad faith with criticism in the universal sense in which the Complainant is expressing it. Moreover, the panelists in the three cases cited made the point that they were dealing with domain names that included the trademarks owned by the complainants bringing the claims or virtually the same as those trademarks. In other words the domain names were giving the false impression that they actually were the trademarks owners’ domain names. Nothing could be further from the present case, where the Complainant’s alleged trademark was not in the domain name or alluded to and nor was the domain name confusingly similar to the alleged trademark.
The Panel therefore finds that the Complainant has not discharged its burden of proving that the domain name was registered and used in bad faith and has not made out that ground.
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 <truth4greeley.com> domain name REMAIN with Respondent.
The Honourable Neil Anthony Brown QC
Dated: March 30, 2020
[i] The whole issue is dealt with in Levine, Domain Name Arbitration, Second edition, Legal Corner Press, 2019, pages 383-411
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