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Successful Money Management Seminars Inc. v. Direct Mail Express [2001] GENDND 471 (7 March 2001)

National Arbitration Forum

The above-entitled matter came on for an administrative hearing before the undersigned three-member panel on the Complaint of Successful Money Management Seminars, Inc. (hereinafter "Complainant") against Direct Mail Express (hereinafter "Respondent.")

The record reflects that the Complaint herein was received by the National Arbitration Forum ("the Forum") on January 22, 2001. In accord with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 4 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), the Forum has verified that the Complaint satisfies the formal requirements of the Policy, Rules and Supplemental Rules. In accordance with the Rules, paragraph 4(c), the formal date of the commencement of the administrative proceedings is January 24, 2001.

The Complainant is Successful Money Management Seminars, Inc., whose address is given as 12100 SW Tualatin Road, Tualatin, Oregon 97062. Complainant’s authorized representative is given as Robin Smith whose telephone number is 503/403-3207. The Respondent is Direct Mail Express, Inc., 2441 Bellevue Ave., Daytona Beach, Florida 32114, whose authorized representative is Michael Panaggio, telephone number 904/ 257-2500.

The domain name which is the subject of this Complaint under ICANN Rule 3(b)(6) is "seminarsuccess.com", registered with Network Solutions.

The appointed panelists are Robert R. Merhige, Jr., chairperson, Honorable Richard Wickersham (ret.) and Professor Milton Mueller. Each of the panelists certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a panelist in this proceeding.

In its Amended Complaint, Complainant seeks a transfer of the domain name registration, seminarsuccess.com from Respondent to Complainant.

An exhibit filed in this proceeding purporting to be a copy of a letter from a law firm representing the Complainant herein reflects that on July 21, 2000, a Complaint was filed in "Oregon Federal Court" on behalf of Complainant against the Respondent. In the letter of July 21, 2000, referred to above, counsel for the Complainant states an intention to withhold service of the Complaint referred to until the parties "have had an opportunity to discuss the matter. . ." The record is devoid of evidence as to the status of any such law suit.

Under the circumstances aforementioned and in the exercise of our discretion pursuant to Rule 18(a), the panel has concluded it appropriate to proceed to a decision of the matters before us.

A. Complainant

Complainant asserts that it is in the business of creating, selling and supporting educational seminar systems to financial planners and that Respondent is guilty of using Complainant’s mark; the phrase "successful seminar" in bad faith in the text of its web site for purposes of misdirecting consumer search-engine inquiries.

B. Respondent

Respondent asserts that it has both rights and legitimate interests in the subject domain name in connection with a bona fide offering of its direct-mail marketing goods and services relating to business seminars. It further asserts that it has been using the domain name prior to any notification of a dispute concerning same.

The record reflects that the Complainant has a substantial number of marks registered with the United States Patent and Trademark Office. Complainant contends that it has been using these marks in connection with financial planning literature and direct-mail for more than 20 years. The domain name in issue, "seminarsuccess.com," is not amongst those that it has registered. An exhibit reflecting copies of the actual records of the Complainant’s registered marks contained an abundance of expressed disclaimers of various words and phrases apart from the precise marks as shown in the registrations. We find the word "seminar" to be a common descriptive word of general application. Indeed, each of the words making up the domain name in issue are generally applicable to the business engaged in by each of the parties to these proceedings.

The record reflects that Respondent has utilized the domain name for e-mail and as a web site address prior to the time the Complaint in this cause was filed.

Complainant claims that it is in the business of creating, selling and supporting educational seminar systems. Respondent has, since at least July 1999, been using the domain name in connection with an offering of its direct-mail marketing of goods and services relating to business seminars, which web site is used for the marketing of direct-mail advertising materials and contends that it has been using the domain name for this purpose prior to any notification of a dispute concerning same. Though Complainant contends it has been using the name "Successful Seminars" for many years, Respondent denies that and suggests that Complainant has "re-christened" itself "Successful Seminars" for the purpose of the instant Complaint and has misrepresented the scope and extent of its registered trademarks for the purpose of conveying an undue impression of what rights it may have in various terms. The record is silent as to Complainant’s claim of use of the domain name in issue.

Despite Respondent’s contention that the Complainant had "re-christened itself for purposes of the Complaint and has misrepresented the scope and extent of its registered trademarks for the purpose of conveying an undue impression of what rights it may have in various terms," it is to be noted that that contention was contained in Respondent’s Response filed January 24, 2001. Complainant, in its filing designated "Complainant’s Additional Response," which is dated February 21, 2001, makes no direct denial of Respondent’s assertion other than a bald, unsupported statement that "Since at least as early as 1992, Complainant’s written policy has required that Complainant be identified by telephone as ‘Successful Seminars.’ All of Complainant’s receptionists are trained to answer the telephone with the greeting, ‘Successful Seminars,’ thus identifying Complainant to consumers, venders and member licensees as Successful Seminars."

It is to be noted that despite the fact that it is said to have "a large number of marks (over 50)" registered with the United States Patent and Trademark Office, the evidence is devoid of Complainant having any registration of the phrase "Successful Seminars." The words "seminar" and "success" are of general application in the field of commercial seminars and we find no evidence that those words, apart from any others, have been utilized by Complainant as a trademark.

We find the word "seminar" to be descriptive, at best. The Panel, however, concludes that the Complainant has failed to sustain its burden of demonstrating that this generic word, combined with the generic word "success" forms a distinctive service mark. See Pet Warehouse v. Pets.Com, D2000-0105 (WIPO Apr. 13, 2000).

We conclude as well that the record before us fails to establish that the Respondent in this cause has registered a domain name constituting a distinctive mark of another.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the Complainant must prove each of the following 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.

We are satisfied that the Respondent has been using the domain name in connection with a bona fide offering of its direct-mail marketing of goods and services relating to business seminars. The unrefuted evidence is that its web site is used for the marketing of direct-mail advertising materials for clients desiring to use such materials to promote business seminars and that such use commenced prior to any notification of a dispute concerning the domain name in issue.

We find as well, for the reasons aforementioned, that though the domain name registered by the Respondent is identical to the mark claimed by Complainant, Complainant has failed to satisfy this Panel by a preponderance of the evidence that it has rights in the name. Coupled with that conclusion is our further conclusion that Complainant has failed to bear its burden of establishing that the Respondent has no rights or legitimate interest in respect to the domain name or that the domain name has been registered and is being used in bad faith.

Though Respondent argues that the domain name is not identical or confusingly similar to any term in which the Complainant has rights, we find the issue to be effectively moot for reason of the fact that we conclude that the phrase "seminar success" is not confusingly similar to any term in which the Complainant has rights.

Respondent rebuts Complainant’s asserted rights in the terms Seminar Success. Respondent contends and we find that Complainant holds no trademark registration for this combination of words.

We conclude that the terms contained in the domain name are generic and cannot acquire secondary meaning as a trademark. See Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (finding that "genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration"); SOCCERPLEX, INC. v. NBA Inc., FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed to show that it should be granted exclusive use of the domain name ""Soccerzone.com," as it contains two generic terms and is not exclusively associated with its business); Pet Warehouse v. Pets.Com, Inc., supra (finding that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning).

The record reflects as well that the Patent and Trademark Office has heretofore made determinations that the bare words "success" and "seminar" cannot acquire a secondary meaning as a trademark. An exhibit in this cause represented to be copies of the Patent and Trademark Office records for a stylized registered mark for "Saleswise Success Seminars" (US Reg. No. 2,391,647), an abandoned application for the mark "Success Seminars" (US Application No. 73619011). As noted on Reg. No. 2391647, the registrant, neither of the parties herein, was required to disclaim the term "Success Seminars" apart from the styled mark as shown. The reason for abandonment of the word mark "Success Seminars" for the indicated services of promoting seminars is obvious, in accordance with the ordinary meaning of those terms.

The Respondent is using the domain name in connection with its direct-mail marketing goods and services. We find that this is a bona fide offering of goods and services under Policy ¶ 4(c)(i). See 3Z Productions v. Globaldomain, FA 94659 (Nat. Arb. Forum June 9, 2000) (finding a legitimate interest in a domain name is shown by website development); Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000) (finding that the Respondent has rights and legitimate interests in the domain name where Respondent is using the domain name for a legitimate and fair purpose and there is evidence that it is known by the disputed domain name); Port of Helsinki v. Paragon Int’l Projects Ltd., D2001-0002 (WIPO Feb. 12, 2001) (finding rights and legitimate interests in the domain name, portofhelsinki.com, where the Respondent was using the domain name to provide information about services available in different ports around the world).

The record further reflects that the Respondent has effectively made use of the domain name continuously for e-mail and as a web site address. Its utilization, which is unrefuted, had been made for the aforementioned purpose prior to any notification of a dispute concerning same. There is no question of its legitimate right or interest in same. See, e.g., Shirmax v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000).

We find the domain name was registered and is being used in good faith. We find Respondent has shown that it has a legitimate interest in the domain name because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute. See DFJ Assoc., Inc. v. AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000).

Finding, for the reasons heretofore enumerated, as well as our conclusion that the Complainant has failed to establish by the greater weight of the evidence the proof required for it to be granted the relief sought, pursuant to the authority vested in this Panel, it is DIRECTED that Complainant’s request that the domain name in issue be transferred to it is hereby DENIED.

Robert R. Merhige, Jr., U.S.D.J. (retired), Chairperson

Richard Wickersham

Milton Mueller

Dated: March 7, 2001