The State Bar of California v. Nanci Nette / Name Management Group
Claim Number: FA1808001800982
Complainant is The State Bar of California (“Complainant”), represented by James J. Chang of The State Bar of California, California, USA. Respondent is Nanci Nette / Name Management Group (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <calsb.org>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2018; the Forum received payment on August 20, 2018.
On August 14, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <calsb.org> 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 August 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 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@calsb.org. Also on August 21, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
A. Complainant
Complainant asserts trademark rights in THE STATE BAR OF CALIFORNIA, CALIFORNIA STATE BAR and CALSB. Complainant submits that the disputed domain name is confusingly similar to one or more of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the domain name; and the domain name has not been used for a bona fide purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith having targeted Complainant and then used the domain name in bad faith by sending malware to Internet users looking for Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a public corporation responsible for admission of attorneys to the California state bar and for regulation of legal profession in that State;
2. Complainant is the owner of, inter alia, United States Patent and Trademark Office ("USPTO”) Reg. No. 2,573,230, registered May 28, 2002, for the mark, THE STATE BAR OF CALIFORNIA;
3. the disputed domain name was first registered on August 10, 1996; and
4. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademarks or to register any domain name incorporating its trademarks.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry — namely, does Complainant have relevant trademark rights, and if so, is the disputed domain name identical or confusingly similar to the trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant has demonstrated rights in THE STATE BAR OF CALIFORNIA by way of its USPTO registrations. However, the Panel does not find the disputed domain name to be identical or confusingly similar to that trademark – there is simply no visual or phonetic similarity between the compared terms.
Complainant also asserts (unregistered) trademark rights in CALIFORNIA STATE BAR. The Panel need not examine the evidentiary foundation for that claim because, again, there is insufficient objective similarity between the compared terms – whilst the letters “cal” may in certain contexts be readily understood as an abbreviation for “California”, the letters “sb” do not necessarily stand for “State Bar” and do not provide an unambiguous context for the letters “cal”. The Panel finds that the letters of the domain name need not be perceived as an abbreviation at all. Indeed, in a prior UDRP case involving Complainant, The State Bar of California v. eWebNation.com, Inc., FA0105000097137 (Forum June 14, 2001) where the domain name <castatebar.com> was at issue, the panel stated that “‘castatebar” at first sounds like gobbledegook”, but went on to find in light of Complainant’s reputation in the unregistered trademark CALIFORNIA STATE BAR and other factors[i] that the compared terms were confusingly similar because the disputed domain name in that case would be dissected into the elements “cal”, “state” and “bar”. There is no parallel argument to be made here. To the extent that the letters “calsb” would be perceived as an abbreviation at all, they may stand for a variety of things, as a casual search by the Panel reveals: www.calsb.ca/home.html (The Canadian Academy of Legal Studies in Business (CALSB)), a not for profit organization established for academic and educational purposes.
Complainant further asserts that it is commonly referred to by the abbreviation CALSB. An exception to the reasoning above would of course arise where Complainant has unregistered trademark rights in CALSB. If that has been proven then the disputed domain name is identical to CALSB and paragraph 4(a)(i) of the Policy is satisfied.[ii] The evidence accompanying the Complaint includes a Declaration dated August 10, 2018 by Leah Wilson, CEO of Complainant. It is only paragraph 7 of that Declaration which is relevant to the question of whether Complainant has unregistered trademark rights in CALSB. Paragraph 7 reads:
The [Complainant’s] members and the general public commonly refer to the [Complainant] by the name “California State Bar”. “Cal SB” is often used as a shorthand reference to the [Complainant]. Since at least 1996, the [Complainant] has owned and used the website <calsb.org>.
The evidence accompanying the Complaint further includes a Declaration dated August 8, 2018 by Michael Williams, IT Manager of Complainant. He declares that the disputed domain name “was one of several domain names maintained to support the public webpage of the [Complainant].” Further, that after 2010 Complainant continued “its use internally” and “for testing purposes … hosting the [Complainant’s] intranet and other internally assessable sites”. He declares that “external visitors … were presented to a blank page (i.e., “Page not found”).” Furthermore, he declares that in 2017 Complainant inadvertently allowed the domain name registration to lapse.
Otherwise, the remaining evidence accompanying the Complaint which might prove common law trademark rights in CALSB comprises Exhibit 3 and 4, being Wayback Machine screenshots for <www.calsb.org> from December 21, 1996 and January 31, 2010, respectively. Exhibit 3 shows a “Members Records Online” portal. Exhibit 4 shows what appears to be a drill-down page from www.calbar.org carrying Complainant’s name as the banner title together with a “CalBar connect” logo and a menu selection including “Attorney Resources” and “Member Services” and a “My State Bar Profile” log-on.
The question is whether this combined information shows unregistered trademark rights in CALSB. There is no evidence at all of use of the letters CALSB as a trademark. At most, the Panel has Leah Wilson’s sworn, but unsubstantiated, statement that “Cal SB” is used as a shorthand reference to Complainant. The expression “Cal SB” is, by any measure, more likely to allude to Complainant than the bare letters CALSB. Absent actual proof that the public would understand the letters CALSB in a domain name context to refer to Complainant, the Panel can attach little weight to Leah Wilson’s statement. Moreover, Leah Wilson’s statement that the Complainant has owned and used the website (sic) <calsb.org> since 1996, must be qualified by the further evidence that it was “one of several domain names” (Michael Williams) owned by Complainant and that from December 21, 1996 the disputed domain name has been devoted to a members area of Complainant’s online presence (Exhibits 3 & 4), not available at all to the public since at least 2010 (Michael Williams).
Of further note is that fact that in The State Bar of California v. eWebNation.com, Inc., a defended case, the respondent argued amongst other things that there was no confusion between the names, inter alia, because Complainant “uses the abbreviation “cal” for California on its own website, www.calbar.org.” (emphasis added by this Panel). That reference to Complainant’s “own website” at www.calbar.org was not contradicted and is a sound indication that even in 2001 Complainant’s official, public facing website used the abbreviation “CalBar”. The Panel notes that the domain name <calbar.org> was registered on August 28, 1995.
Arbitrations under the Policy are offered not just by the Forum by the other providers, including the World Intellectual Property Office (“WIPO”). In common with the Forum, WIPO panels seek to ensure that the Policy operates in a fair and predictable manner and so, in its present third iteration, WIPO publishes its Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”) which summarizes consensus panel views on a range of substantive and procedural issues. The WIPO Jurisprudential Overview 3.0 asks at paragraph 1.3: What does a complainant need to show to successfully assert unregistered or common law trademark rights? The consensus answer, relevantly, is that:
To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.
Even when those criteria are appropriately read to take account of the activities and function of Complainant, the Panel finds that Complainant has not shown common law trademark rights in CALSB. Accordingly, Complainant has not established rights in a term which might be identical or confusingly similar to the disputed domain name.
The Panel therefore finds that Complainant has not satisfied the requirements of paragraph 4(a)(i) of the Policy.
No findings required.[iii]
No findings required.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <calsb.org> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: September 24, 2018
[i] Being the likelihood of confusion given the way in which internet search engines operate.
[ii] For the purposes of comparison the non-distinctive gTLD, “.org”, can be disregarded - see, for example, 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) finding that the <nexcare.org> domain name incorporated complainant’s NEXCARE mark and merely added “.org.” which did not distinguish the disputed domain name from Complainant’s mark.
[iii] See, for example, 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, its failure to prove one of the elements makes further inquiry into the remaining element unnecessary); 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).
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