Mills & Associates, LLC v. Center for Internal Change Inc.
Claim Number: FA0903001251337
Complainant is Mills & Associates, LLC (“Complainant”),
represented by Donald EE. Morris,
of Dozier Internet Law, PC, Virginia,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <onlinediscprofile.com> and <onlinediscprofiles.com> (the “Domain Names”), registered with Godaddy.com, 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.
Christopher Gibson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“NAF”) electronically on March 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2009.
On March 10, 2009, Godaddy.com, Inc. confirmed by e-mail to the NAF that the <onlinediscprofile.com> and <onlinediscprofiles.com> Domain Names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on April 6, 2009.
On April 20, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Christopher Gibson as Panelist.
PRELIMINARY ISSUE: OTHER CORRESPONDENCE
On April 13, 2009, Respondent submitted an Additional Submission that was in compliance with Supplemental Rule 7. The additional documentation intended to correct mistaken portion of the Response, provide an exhibit that was incorrect, and submit substitute exhibits for the original Response. The National Arbitration Forum notified Respondent that this documentation initially was not submitted in accordance with any Rules or Supplemental Rules, and Respondent then submitted the Additional Submission in compliance with Supplemental Rule 7. The Panel will accept and consider Respondent’s Additional Submission.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
The Complainant, Mills & Associates, LLC, is a
Complainant contends that the Domain Names, minus the generic “.com,” are identical and confusingly similar to the Marks. Complainant also contends that Respondent does not have any demonstrable rights or legitimate interests in the Domain Names. The Domain Names do not reflect any name by which the Respondent is commonly known or in which the Respondent has any rights. No corporate records, website information, or WHOIS information reflects any association of the Respondent with the Marks or the Domain Names, except for Respondent’s infringing use. At the time Complainant registered the Domain Names, Complainant had already been in continuous and active operation of its business and had used the Marks since 2000. Complaint had already become an industry leader. Respondent was aware of the Marks and the Complainant’s rights therein at the time of registration. At no time did Complainant authorize Respondent to use the Marks or register the Domain Names.
Complainant contends that Respondent’s use of the Domain Names to offer the same goods in direct competition with Complainant is not legitimate noncommercial or fair use. Rather, it is a bad faith tactic to attract Internet users to Respondent’s website by creating a likelihood of confusion with the complainant’s Marks. With regard to bad faith, Complainant alleges that once Respondent registered the Domain Names, Respondent immediately began using them to redirect traffic from Complainant’s websites to Respondent’s websites, which sell goods and services in competition with the Complainant. The Domain Names serve to confuse Internet users who are searching for Complainant’s websites. The use of the Domain Names makes it clear that registration and use of them was done intentionally to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainant’s Marks.
Respondent, Center for Internal Change Inc., claims that Complainant has no legitimate trademark rights that would warrant transferring the Domain Names, and that Complainant has failed to establish the necessary elements for transfer of the Domain Names. The Domain Names, <onlinediscprofile.com> and <onlinediscprofiles.com> tell the observer what is being provided, not who the provider is. Respondent claims that Complainant is abusing the UDRP to gain possession of generic, albeit valuable Domain Names. Respondent requests that the Panel make a finding of reverse domain name hijacking.
Respondent argues that Complainant did not submit any documentation
from which the Panel could determine that the Marks have acquired secondary
meaning or are famous. Complainant owns
no federal trademark registration.
Complainant recently received its state trademark registrations (for
With respect to rights or legitimate interests, Respondent contends that Complainant has failed to make a prima facie showing that Respondent lacks any legitimate rights in the Domain Names. Since as early as 2000, Respondent has offered DISC-related products and services. The term “DISC” in this context refers to a behavioral model based on the work of Dr. William Moulton Marston. The products offered by the Respondent relate to personality assessment tests. In October 2003, Respondent registered the Domain Names in good faith to use them in connection with Respondent’s online versions of DISC-related products and services. The terms “Online DISC Profile” (as well as plural) and “Online DISC” describe DISC profiles that may be purchased via the Internet or have results that are computer generated, as opposed to paper versions that are scored by hand.
Since registration of the Domain Names, Respondent has invested significant resources into developing and using the websites associated with the Domain Names. Respondent’s total investment includes expenditures of over $275,000 to promote its websites. From 2004 through to the present, Respondent explains that it has offered various versions of DISC-related online assessment products and services, acting as an authorized seller of DISC products from different companies. Respondent has provided documentary evidence in support of its assertions. In sum, Respondent’s legitimate offerings of goods have been continuous since the time of registration, and transfer of the Domain Names would result in significant damage to Respondent and a windfall to the Complainant. Respondent thus claims it possess legitimate rights in the Domain Names for at least two reasons: (i) before any notice to Respondent of the dispute, Respondent made use of the Domain Names in connection with a bona fide offering of goods, and (ii) Respondent is making legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert or to tarnish the Marks of the Complainant.
Concerning bad faith registration, Respondent urges that Complainant bears the burden of establishing that Respondent registered and is using the Domain Names with Complainant’s Marks as a target. Because Complainant has provided no evidence that Respondent engaged in this activity, its Complaint must be denied. First, Respondent emphasizes that the Domain Names are made up of generic or highly descriptive words. They are compound terms where each element is generic or highly descriptive when joined to form the compound term. The term DISC is a descriptive term in the industry of personality or behavioral assessments. “Online” describes products and services promoted via the Internet. The term “Profile” is commonly used to describe the process or product of the administration of DISC assessment. The very nature of domain names requires the formation of a continuous string of characters – the Domain Names here are thus compound terms formed by the union of these words.
Due to the weak nature of these terms for trademark purposes, they are not associated with any particular source and no one can claim exclusive rights to use of the words as a trademark. Complainant has failed to provide any evidence that it is known by these terms, or provide evidence of secondary meaning or fame. Complainant has failed to provide any evidence that actual confusion has occurred. This is not a case in which Respondent selected domain names incorporating a famous or distinctive mark that, it should have known, it was not entitled to use.
Respondent states that descriptive use of the terms in the Domain Names is evident throughout the industry. Respondent has provided affidavits of a DISC-products manufacturer and licensor and three competing DISC-product distributors, to demonstrate the common use of the terms within the relevant field.
Respondent also argues that Complainant is estopped from denying that the terms in the Domain Names are generic and descriptive. First, Complainant has used the terms in this fashion on its own website. In addition, Respondent has used the Domain Names for almost five years and Complainant did not object. Respondent has provided evidence that Complainant’s owner was not only aware of the Domain Names registered by the Respondent, but complimented the Respondent’s president on the creativity of its website and offered consultation and coaching. Complainant encouraged Respondent to register other domain names, and Complainant itself has registered over 700 domain names. Respondent has put in evidence of the communications between the Complainant and the Respondent. It is clear that they know each other and were aware of each other within the relevant industry.
Respondent explains that until approximately 2008, Complainant did not express its objection its objection to Respondent’s use of the Domain Names. In November 2008, Respondent received a “cease and desist” letter, to which Respondent’s attorney responded explaining that Respondent’s registration and use of the Domain Names was in good faith and it had a legitimate interest in using the Domain Names. No response was received until this case was commenced. Finally, Respondent argues that Complainant’s allegations are insufficient to prove that any of the Marks had acquired common law rights in 2003, when the Domain Names were registered. A complainant seeking to assert rights in an unregistered trademark must provide evidence of use sufficient to establish common law rights. Here, Complainant states that it began using the Marks in 2000, which is the same year the Respondent began using the same descriptive terms in promoting its DISC products and services. As such, it is incredulous for Complainant to claim it had any superior trademark rights or priority over Respondent. Instead, Complainant has asserted unsubstantiated and conclusory allegations that its Marks have become strong and well-known in their field. However, Complainant has provided no information about the extent of its advertising, or any financial documents or examples of advertising to support its claims. Thus, there is no meaningful way for the Panel to find common law rights without merely accepting the word of the Complainant.
1. Complainant registered its trademarks DISCPROFILE, DISCPROFILES and ONLINEDISC marks with the state of Illinois on January 14, 2009 (Reg. Nos. 90,036,315; 90,036,250; and 90,036,242 respectively) and the state of Delaware on December 3, 2008 (Reg. Nos. 99,764; 99,762; and 99,763 respectively).
2. The Domain Names were registered by the Respondent in October 2003 and have been used by the Respondent since that time in relation to its business.
3. The Complainant and Respondent are competitors in the field of DISC-related products and services.
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.
The threshold for asserting
trademark rights under the Policy is very low.
Here, the Complainant has presented evidence of trademark registrations
The Panel finds that, on their face, the Domain Names are confusingly similar to the Complainant’s Marks. Although the Complainant’s Marks are not very distinctive in their field, the Marks remain the dominant portion of the Domain Names. The Domain Names are thus confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
While Respondent contends that the Domain Names are comprised of common, descriptive terms and as such cannot be found to be confusingly similar to Complainant’s Marks, the Panel considers that such a determination is not relevant under Policy ¶ 4(a)(i), as this portion of the Policy considers only whether Complainant has rights in a trademark and whether the disputed domain names are identical or confusingly similar to that mark. Considerations that the Domain Names <onlinediscprofile.com> and <onlinediscprofiles.com> are comprised of generic and descriptive terms will be discussed in the analysis of the Policy ¶ 4(a)(ii) below.
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under the Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
As discussed above, the Panel has determined that Respondent has rights or legitimate interests in the Domain Names pursuant to Policy ¶ 4(a) (ii). These findings also support the conclusion that Respondent did not register or use the Domain Names 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.”); 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).
REVERSE DOMAIN NAME HIJACKING
Although the Panel has found that Complainant failed to satisfy its
burden under the Policy, this does not necessarily result in a finding of
reverse domain name hijacking on the part of the Complainant in bringing the
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Christopher Gibson, Panelist
Dated: May 4, 2009
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National Arbitration Forum
 The Complaint does not explain anything about “DiSC” related services and products. The Response, however, explains that DiSC is an acronym which refers to the terms “Dominance,” “Influence,” “Steadiness” and “Conscientious,” commonly used in connection with a self-assessment behavioral model and test for individuals based on the work of Dr. William Moulton Marston.