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American Psychological Association, Inc.
v. Reference Point Software, L.L.C.
Claim Number: FA0306000162195
PARTIES
Complainant
is American Psychological Association,
Inc., Washington, DC ("Complainant") represented by Brian D. Anderson of Oblon Spivak, McClelland, Maier &
Neustadt, P.C. Respondent is
Reference Point Software, L.L.C., Reisterstown, MD ("Respondent")
represented by Timothy J. Madden.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <apa-style.com>
and <style-apa.com> registered
with Tucows, Inc.
PANEL
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.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 12, 2003; the Forum
received a hard copy of the
Complaint on June 16, 2003.
On
June 13, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <apa-style.com> and <style-apa.com> are registered
with Tucows, Inc. and that Respondent is the current registrant of the names. Tucows,
Inc. has verified that Respondent
is bound by the Tucows, 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
June 17, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 7, 2003 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 postmaster@apa-style.com and postmaster@style-apa.com by
e-mail.
A
timely Response was received and determined to be complete on July 7, 2003.
A
timely Additional Submission from Complainant was received and determined to be
complete on July 14, 2003.
On July 22, 2003, pursuant to Complainant's request to
have the dispute decided by a single-member
Panel, the Forum appointed Rodney C. Kyle as
Panelist.
RELIEF SOUGHT
Complainant
requests that registration of each of the domain names at issue be transferred
from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant
Basically,
in the Complaint, Complainant makes three main contentions and submits evidence
it contends supports aspects of them.
First, Complainant basically contends by
way of three points that (i) each of the domain names at issue is registered to
Respondent,
beginning from September and October 2000; (ii) there are three marks in which
Complainant has trademark rights: U.S. Trademark Registration No. 2,374,449 for
APA-STYLE HELPER
(for computer software in the form of a guide for assisting in
the writing of scholarly papers in the fields of psychology and the
social
sciences, which mark Complainant used in commerce at least as early as August
13, 1998), APA STYLE to which Complainant has
common law rights and a U.S.
federal application filed on May 19, 2003 (for (1) downloadable electronic journals
pertaining to psychological topics periodically published and distributed to
members and to other
persons in the psychology and social science communities,
and (2) printed manuals for computer software in the form of a guide for
assisting in the writing of scholarly papers in the fields of psychology and
the social sciences, based
on using
that mark in connection with printed manuals at least as early as 1990 and in
connection with downloadable electronic journals
at least as early as August 1,
2001), and APA to which
Complainant has common law rights by having used that mark in connection with its
goods and services for several decades;
and (iii) each of the domain names at issue is identical
or confusingly similar to one or more of said trademarks, and more particularly
that each of the domain names at issue is confusingly similar to Complainant's
APA-STYLE HELPER mark despite doing either or both
of (as per Edward Hines Lumber Co.
v. Genesis Group OSI, FA 97697 (Nat. Arb. Forum July 30, 2001)) omitting
one word (i.e."helper") or (as per
Piaggio & C.S.p.A. v. Pierpaolo Breda, D2001-1075 (WIPO October 17,
2001)) switching the order of the words.
Second,
Complainant basically contends by way of six points that Respondent has
no
"rights or legitimate interests" in respect of either of the domain
names at issue in that (i) Complainant has not authorized Respondent to register either
of the domain names at issue, though before
this dispute Complainant was amenable to Respondent's use of "APA
Style" as a subtitle in the product name of one of Respondent's products
if Respondent's
promotional material included a disclaimer of affiliation with
Complainant, such
amenability having resulted from prior negotiations regarding a potential
arrangement and from the facts detailed in item "(v)" of this paragraph;
(ii) expressly referring to Policy paragraph 4(c)(i): before any notice of the dispute to
Respondent, Respondent did not use, or make demonstrable preparations to use,
either of the domain
names at issue or a name corresponding to either of the
domain names at issue, in connection with a bona
fide offering of goods or services, in that (as detailed in item "(vi)" of this
paragraph), Respondent is a competitor of Complainant and is using domain names that are confusingly
similar to Complainant's APA-STYLE HELPER mark to misleadingly direct Internet
users to Complainant's
website, which, as per Inverlink
Consultores S.A. v. Besa, S.A.,
FA 97287 (Nat. Arb. Forum July 23, 2001), is neither a bona fide use nor a legitimate interest; (iii) expressly
referring to Policy paragraph 4(c)(ii): Respondent
(as an individual, business, or other organization) has not been commonly known
by either of the domain names at issue
and instead Respondent is
known as Reference Point Software; (iv) expressly referring to Policy paragraph
4(c)(iii): Respondent is not
making a legitimate noncommercial or fair use of the domain names without
intent for commercial gain to misleadingly
divert consumers, in that (as detailed in
item "(vi)" of this paragraph), Respondent
is a competitor of Complainant and is using
the domain names at issue to intentionally mislead and divert consumers to
Respondent's website, which, as per Inverlink, supra, ESAT Digifone
Ltd. v. Fitzgerald, D2000-0602 (WIPO Aug. 2, 2000), and Arab Bank for
Investment and Foreign Trade v. Wagenheim, D2000-1400 (WIPO Dec. 19, 2000), cannot be considered legitimate; (v)
facts relating to the above-mentioned past amenability include that:
-
a college librarian had inquired of Complainant regarding what appeared to
be an APA software product for formatting papers pursuant
to the Complainant's
style rules, but the librarian was actually referring to Respondent's product, so Complainant objected to Respondent's use of APA in its
product names in that on November 27, 1995, Complainant wrote to Mr. Plaut
of Respondent objecting to use of APA FOR WORDPROCESSING (APA4WP) as the name
of their product on the ground that it created a likelihood of confusion with
Complainant's products,
-
in a letter
dated December 5, 1995, Respondent agreed to change the name of the product and
use a disclaimer, and Mr. Plaut indicated
his intent to use "Reference
Point Templates for APA Style" as the new product name and that all
changes to labels and
promotional materials would be complete by the end of
January 1996,
-
Complainant
accepted Respondent's new product name in a letter dated December 12, 1995, and
-
Complainant found that copies of Respondent's promotional material bearing
the product name APA STYLE FOR WORD PROCESSING and APA4WP
were circulating as
late as mid-1996 but Respondent
explained that that material was old, and that Respondent had changed
Respondent's promotional materials as agreed
in December 1995, so in light of Respondent's assurances at
that time, Complainant took no further action on that matter; and lastly that
(vi) facts relating to the above-mentioned
Complainant-Respondent
competition, and Respondent’s use of the domain names at issue, include that:
-
since 1998, Complainant has offered its APA-STYLE HELPER software as a
companion to an editorial style manual published by Complainant,
-
Respondent's
registration and use of the domain names at issue came to Complainant's notice on or around
August 7, 2002, when Complainant became aware that Respondent had registered each
of the domain names at issue, and that
the domain names at issue were being
used to redirect Internet users to Respondent's website at <www.charm.net/~rps/>,
-
said website included a product information page with the heading
"APA-Style Template" and with text beginning with "APA style, APA format," in bold
text, that the title to the page, which appears in the header of the printout
and the top left of the Internet Explorer
browser, reads "APA Software by
Reference Point Software. Make Apa
Style, Format and Referencing a Snap," and that no disclaimers were
present on the website,
-
printouts from what is commonly referred to as the Waybackmachine evidence
that Respondent was using the domain names at issue to
direct visitors to its
website during 2001, in that users typing in, or linking to, the domain names
at issue would automatically
arrive at Respondent's website,
-
Respondent's use of APA and APA STYLE in the domain names at issue and on
its website was contrary to the above-mentioned earlier
understanding between
the Parties, so Complainant, through its outside counsel, wrote to Respondent
on October 29, 2002 demanding
that Respondent cease all use of APA STYLE and
transfer the domain names at issue to Complainant,
-
Respondent responded through counsel in a letter dated November 15, 2002,
denying infringement and indicating that the changes Respondent
had made to its
website and advertising materials were temporary, and
-
further communications between the Parties did not resolve the dispute.
Third, Complainant basically
contends by way of three points that Respondent's
registration and use of each of the
domain names at issue is in bad faith, in that at the
time Respondent registered
the domain names at issue Respondent
clearly had actual
notice, or had knowledge, of at
least Complainant's APA-STYLE HELPER mark and the
Parties had engaged in
significant communications regarding Respondent's use of APA
and APA STYLE in its
product names in a manner that causes a likelihood of confusion,
and, in any event, (i) expressly referring to Policy paragraph 4(b)(ii): Respondent
registered the domain
names at issue in order to prevent Complainant from reflecting at
least the APA-STYLE HELPER
mark in a corresponding domain name, in that
Respondent has registered
two variations of Complainant's mark, which constitutes a
pattern of conduct under
the Policy as per Meijer, Inc. v.
Porksandwich Web Services,
FA 97186 (NAF July 6,
2001); (ii) expressly
referring to Policy paragraph
4(b)(iii): Respondent and
Complainant are competitors of one another (in that
Respondent produces
software that competes with Complainant's products) and
Respondent registered the
domain names at issue primarily for the purpose of disrupting
the business of
Complainant (in that Respondent's use of the domain names at issue to
promote the services of Respondent
and to direct Internet users and consumers to
Respondent's website
trades upon at least Complainant's APA-STYLE HELPER mark);
and (iii) expressly referring to
Policy paragraph 4(b)(iv): by
using the domain names at
issue, Respondent intentionally
attempts to attract, for commercial gain, Internet users to
Respondent's website by creating a
likelihood of confusion with at least Complainant's
APA-STYLE HELPER mark as to the
source, sponsorship, affiliation, or endorsement of
Respondent's website.
B.
Respondent
Basically,
in the Response, Respondent makes three main contentions and submits evidence
it contends supports aspects of them.
First,
in response to Complainant's first main set of contentions, although Respondent
makes various other contentions, Respondent
does not put in issue either (i)
the first of Complainant's three points (which is as to the basic facts of the
registrations of
the domain names at issue); or (ii) the APA-STYLE HELPER
aspects of Complainant's second point (which is as to the trademark
registration
existence and ownership by Complaint, trademark registration
scope, and date of first use of that mark in commerce) and of Complainant's
third point (which is that each of the domain names at issue is confusingly
similar thereto).
Second,
in response to Complainant's second main set of contentions, Respondent
apparently does not put in issue the aspect of Complainant's
second and fourth
points that Respondent is a competitor
of Complainant; indeed, Respondent pleads that Respondent sells a software
template which sets up
a blank document in the editorial style set forth in the
manual published by Complainant. As well, Respondent apparently does not
put in
issue Complainant's third point (which third point denies that Policy paragraph
4(c)(ii) avails Respondent). Respondent does
however basically make contentions
by way of two points. Respondent's first contention is largely against
Complainant's first point
(which Complainant's first point is of Complainant's
non-authorization of Respondent's registration of either of the domain names
at
issue and is also of Complainant's conditional, past, amenability to Respondent's
use of "APA Style" as a subtitle in the product name of one of
Respondent's products, as
particularized in Complainant's fifth point); Respondent's second contention is
largely against Complainant's second and fourth points
(which Complainant
points respectively deny that Policy paragraphs 4(c)(i) and 4(c)(iii) avail
Respondent, and are particularized
in Complainant's sixth point). Respondent's
two contentions basically are that (i) for a period of time ending in July of
1994, Complainant
attempted to acquire Respondent's software template and what
little communication there was between the Parties between July of 1994
(when
Complainant's attempts to acquire the software terminated) through June of 1996
was centered on what Complainant considered
Respondent's trading upon the
acronym of Complainant's name but, unsuccessful in its quest to obtain
Respondent's software template,
Complainant apparently otherwise acquired or
developed its own software template years later; and (ii) the communications
between
the parties prior to July of 1996 did not concern the domain names at
issue and instead it was in a period of approximately six years
during which
the parties had no communication with one another that Respondent did register
the domain names at issue (four years,
in fact, after the parties had last
communicated), and Respondent then utilized the domain names at issue for a
period of over two
years without objection from Complainant in that, without
any notice of dispute from Complainant, Respondent used the domain names
at
issue as part of its overall marketing, including that both customers and
potential customers alike utilized the domain names
at issue as a method of
contacting and doing business with Respondent.
Third,
basically in response to Complainant's third main set of contentions,
Respondent basically contends by way of three points
that despite Complainant's
Policy paragraph 4(b)(ii), 4(b)(iii), and 4(b)(iv) contentions, Complainant has
provided no evidence respectively
that (i) Respondent prevented the owner of a
mark from reflecting the mark in a corresponding domain name, let alone a
pattern of
such conduct-- instead: Respondent did nothing to prevent
Complainant from reflecting the mark in a corresponding domain name and
Complainant was free during this period of time to reflect the mark in a domain name and did so,
whereas Complainant did not object until the fall of 2002 (i.e. some two-plus
years after the
domain names at issue were registered, which registration
occurred some four years after negotiations broke down regarding the
acquisition
of Respondent's template and the discussions between the parties
over the use of the letters APA ended); (ii) Respondent registered
the domain
names at issue for the purpose of disrupting the business of a competitor (i.e.
Complainant)-- instead:
Respondent
registered the domain names at issue for the purpose of furthering its own
business and in a period during which the parties
had no contact with one
another for approximately four years and, as mentioned above, previous to
Respondent's registrations, Complainant
registered its domain name; and (iii)
Respondent intentionally attempted to
attract for commercial gain Internet users to its website by creating a
likelihood of confusion with any mark of Complainant
as to the source,
sponsorship, affiliation, or endorsement of the website-- instead: on both
Respondent's hard copy and electronic
materials Respondent disclaimed being
associated or affiliated with Complainant.
C.
Additional Submission
Complainant's
Additional Submission appears to not permissibly provide anything pertinent
that, in view of the Complaint and the Response,
was not already apparent to
the Panel as being at issue in this proceeding or as being the responsibility
of the Panel.
FINDINGS
The
Panel finds:
(i)
each of the
domain names at issue is registered to Respondent, there is the U.S. trademark
registration of APA-STYLE HELPER in which
Complainant has rights, and each of
the domain names at issue is confusingly similar thereto;
(ii)
Respondent
has no rights or legitimate interests in respect of either of the
domain names at issue; and
(iii) each
of the domain names at issue has been registered and is being used in bad
faith.
DISCUSSION
Introduction
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
and 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:
(i)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(ii)
the Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii)
the domain
name has been registered and is being used in bad faith.
In
view especially of Rule 15(a), the Panel notes four rules and principles of law that it especially deems applicable to
ascertaining whether each of those three elements has been proven. First, that:
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already ascertained
by one or more of the four methods here
outlined).[1]
Second,
especially as to mode "3", that Rule 10(d) provides that "The
Panel shall determine the admissibility, relevance,
materiality and weight of
the evidence." Third, as to construing and applying Rule 10(d), especially
as to whether mode "1"
rather than mode "3" applies: a
complainant's pleading of fact that is not disputed (or, phrased differently,
not "put
in issue") by a respondent against whom it is contended, is
an admission by that respondent,[2]
so evidence tendered as being rationally probative of (i.e. as being
"relevant to") establishing that fact becomes immaterial,
and hence
inadmissible, as to establishing that fact.[3]
Fourth, as to whether mode "2" rather than either of mode
"1" or mode"3" applies, a canvassing of law
and commentary
shows that:
It
was not desirable, nor indeed possible, to foreclose the trier's use of
background information but should the matter noticed be
in the forefront of the
controversy, should the fact be determinative, the law protected the adversary
by insisting that the matter
be so commonly known, and hence indisputable, that
its notice could not prejudice the opponent.[4]
The third of the four rules and
principles of law set out in the immediately preceding paragraph hereof is
applicable to some of the
Parties' contentions on this topic. Specifically, the
Panel finds that Respondent admits the following: (i) the first of the
above-listed
of Complainant's three points on this topic (including that the
domain names at issue are registered to Respondent beginning from
September and
October 2000); and (ii) the
APA-STYLE HELPER aspects of Complainant's second and third points on this topic
(including that Complainant has U.S.
Trademark Registration No. 2,374,449 for
APA-STYLE HELPER and that each of the domain names at issue is confusingly
similar thereto).
In view especially of the immediately
preceding paragraph hereof, Policy paragraph 4(a)(i) is proven as to each of
the domain names
at issue.
The context in which this part of this
discussion occurs includes (i) Policy paragraph 4(c); and (ii) administrative
panel decisions
as to burden of production.
Policy
Paragraph 4(c)
Policy paragraph 4(c) is basically
directed from a domain name registrar to a domain name registrant and prospective
mandatory administrative
proceeding respondent, and includes that:
When you receive a complaint, you should
refer to [Rule 5] in determining how your response should be prepared. Any of
the following
circumstances, in particular but without limitation, if found by
the Panel to be proved based on its evaluation of all evidence presented,
shall
demonstrate your rights or legitimate interests to the domain name for purposes
of [Policy paragraph] 4(a)(ii):
(i) before any notice to you of the
dispute, your use of, or demonstrable preparations to use, the domain name or a
name corresponding
to the domain name in connection with a bona fide offering
of goods or services; or
(ii) you (as an individual, business, or
other organization) have been commonly known by the domain name, even if you
have acquired
no trademark or service mark rights; or
(iii) you are making a legitimate
noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly
divert consumers or to tarnish the trademark or service
mark at issue.
(See endnote 2 hereof for some provisions
of Rule 5.)
As for Policy paragraph 4(c)(ii) and the
preamble of Policy paragraph 4(c), neither of them appears to be contended for
by Respondent.
More particularly, Respondent's contention that, without
objection from Complainant, Respondent used the domain names at issue for approximately
two years after those domain names were registered, as part of its overall marketing,
including that both customers and potential customers alike utilized the domain
names at issue as
a method of contacting and doing business with Respondent,
does not actually appear to be a contention within either of those Policy
paragraph 4(c) provisions. As for Policy paragraph 4(c)(ii), see RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy paragraph 4(c)(ii) to
require a showing that a respondent has been commonly
known by the domain name
prior to registration of the domain name in order for that respondent to
prevail; moreover, Complainant's
undisputed contentions (which are therefore
admitted by Respondent) include that Respondent is known as Reference Point
Software
and that the domain names at issue automatically resolve to
Respondent's website at <www.charm.net/~rps/>, all of which would tend to point away
from the conclusions that would be contended for by Respondent. As for the
Policy paragraph
4(c) preamble, Respondent does not dispute, and therefore
admits, that Respondent's registration and use of the domain names at issue
came to Complainant's notice on or around August 7, 2002; Respondent's contention
does not avail Respondent because it is a contention that even though during
those two years Complainant did not know of such registration and use, and
apparently had no reason to suspect such registration
and use, that by such
registration and use Respondent nonetheless obtained Policy paragraph 4(a)(ii) "rights or
legitimate interests."
As for Policy paragraphs 4(c)(i) and
4(c)(iii), each of them appears to be contended for by Respondent, such as by
pleading and by
evidence. The resulting issue appears to be whether, by the
communications around 1995 and 1996 between the Parties or by some other
means,
within either of those two Policy paragraphs Respondent has a privilege to have
registered, and has a privilege to use, each
of the domain names at issue. The
Panel resolves that issue through five basic considerations.
First, the Panel takes judicial notice of
15 U.S.C. §1057 (entitled "Certificates of registration")[6]
and of 37 C.F.R. §2.151 (entitled "Certificate")[7]
made in accordance therewith, as well as of U.S. Patent and Trademark Office
practice regarding certificates (to the extent that
taking judicial notice of
such practice was possible by analogy with that Office's Trademark Electronic
Search System, "TESS",
available at
<http://www.uspto.gov/main/trademarks.htm>) and combines such judicial
notice with a fact previously found by
the Panel. Specifically, the
"TESS" record for Complainant's APA-STYLE HELPER registration shows
that the date of registration
is August 8, 2000 and, when that is combined with
the above discussion on the topic of confusing similarity (which yields that
Respondent
registered the domain names at issue in September and October 2000),
the Panel finds that for on the order of one to two months before
Respondent
registered the domain names at issue Respondent had constructive notice of
Complainant's APA-STYLE HELPER trademark rights.
Second, Respondent is a competitor of
Complainant. (Complainant pleads such, and Respondent does not deny it and
hence admits it;
indeed, Respondent's pleading as to Respondent's selling its
particular software template amounts to an admission of competing with
Complainant's APA-STYLE HELPER software.) As a result, such constructive notice
of Complainant's APA-STYLE HELPER trademark rights
appears to basically be
dispositive of the Policy paragraph 4(c) issue unless, by the communications
between the Parties around 1995
and 1996 or by some other means, Respondent has
the above-defined privileges. As for such communications, in response to
Complainant's
contention that Respondent's registration and use of the domain
names at issue was contrary to those communications Respondent basically
contends that those communications did not cover those domain names and, in any
event, that Respondent complied with the communications.
Accordingly, the
Parties evidence of those communications and of Respondent's promotional
materials is material; basically, it is
also relevant and admissible. As shown
in the following two paragraphs, in view especially of that evidence,
Complainant has made
a prima facie
showing as to each of the domain names at issue.
Third,
as for evidence of the communications between the Parties, Complainant submitted
evidence (i.e. Complaint Exhibits 10, 11,
12, and 13) as did Respondent (i.e.
Response Exhibits 5, 6, 7, 8, 9, 10, 11, 12, and 13, the first three of which
largely deal with
template acquisition and the last six of which basically
repeat Complaint Exhibits 10, 11, 12, and 13). Those exhibits do not appear
to
show that the communications between the Parties around 1995 and 1996 referred
to domain names; instead, they appear to show that
those communications
referred to and cover Respondent product names and the use thereof in
Respondent promotional materials, and
as a result Respondent appears to be
correct in contending that those communications did not cover the domain names
at issue. However,
that is not to say that as a result of those communications
Respondent has a privilege to have registered, and has a privilege to
use, each
of the domain names at issue. Instead, Respondent does not have either such
privilege. Basically, as in Nat’l
Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000), so
too in this case:
[Respondents] mistakenly, and
unreasonably, rely on [a letter from the complainants] to justify their alleged
"fair use".
That letter does refer to "fair use", but only
in the context of use of [the complainants'] marks in the text at a website
itself, not in a domain name
(underlining
added) and as in Allen-Edmonds Shoe Corp.
v. Takin’ Care of Business,
D2002-0799 (WIPO Oct. 10, 2002), so too in this case:
even where a reseller is an authorized
reseller, without a specific agreement between the parties, the reseller
does not have the right to use the licensor’s trademark as a domain name.
Nikon, Inc. and Nikon Corporation v.
Technilab, Inc., WIPO D2000-1774 (February 26, 2001); 2 T.J. McCarthy,
McCarthy on Trademarks and Unfair Competition, § 18:52 (4th Ed. 2000)
("licensee’s
use [of a mark] inures to the benefit of the licensor-owner
of the mark and the licensee acquires no ownership rights in the mark
itself."). Thus, even if Respondent is acting on behalf of an "authorized"
dealer (indeed, even if Respondent were
itself an authorized dealer), its use
of Complainant’s mark would not be legitimate absent a specific agreement
between Complainant and Respondent to the contrary.
There is no evidence of
such an agreement here. The Panel finds that Complainant has shown that
Respondent has no legitimate interest in the domain name.
(Underlining added.)
Fourth, there is the evidence of
Respondent's promotional materials. Complainant submitted evidence relating to
usage of "APA
Style" in 2002 and 2001 in Respondent's website prior
to notice of this dispute to Respondent (i.e. Complaint Exhibits 15 and
16
respectively) by which it appears that the website included some content that
complied with the communications (such as references
to "Reference Point
Templates for APA Style") but also included content that clearly does not
comply (such as "APA-Style
Template" or "APA Style", each
on its own rather than as a product name subtitle, and "APA Style Templates
for
Word Processing" which is basically the opposite of the
communications' required "Reference Point Templates for APA Style").
Also, by that Complainant’s evidence it appears that Respondent's website did
not have any sort of disclaiming text. All this evidence from Complainant is
of substantial weight in Complainant's favor. In contrast, Respondent
submitted evidence of its promotional materials which, although containing
disclaimers of Respondent’s affiliation
with Complainant, is either not
apparently from a website and is undated (i.e. Response Exhibit 23 which
appears to be the front
and back of a copy of a Respondent brochure from
sometime in 2002 or later and which basically includes the required subtitling)
or is dated 7 July 2003 (i.e. the date of the Response) and is from what the
Panel has been referring to as Respondent's website
(i.e. Response Exhibit
19) or from a website
comprising Respondent's name (i.e. Response Exhibit 20). The copies in each of
those three Response Exhibits also
contains either or both of "APA
Style" and "APA style" on its own rather than as part of a
product name subtitle.
All this evidence from Respondent is of little or no
weight in Respondent's favor.
Fifth, in view of all of the above,
Complainant has made a prima facie
showing that Respondent's activities in respect of each of the domain names at
issue were not "bona fide" within the meaning
of that expression as
it appears in Policy paragraph 4(c)(i) and were neither "without intent
for commercial gain to misleadingly
divert consumers" nor "legitimate
noncommercial or fair use of the domain name" within the meaning of those
two expressions
as they appear in Policy paragraph 4(c)(iii).
Administrative
Panel Decisions As To Burden Of Production
Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) includes that when, as in this case, as to each of the domain names at
issue "the complainant
has made a prima
facie showing, the burden of production shifts to the respondent to show by
providing concrete evidence that it has rights to or legitimate
interests in
the domain name at issue" (emphasis in original). (To similar effect see
e.g. Gene Logic Inc. v. Bock, FA
103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth
Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27,
2002).) Respondent has not met that burden as to either domain name at issue.
Summary
In view especially of the ten immediately
preceding paragraphs hereof, Policy paragraph 4(a)(ii) is proven as to each of
the domain
names at issue.
The context in which this part of this
discussion occurs includes Policy paragraph 4(b).
Policy paragraph 4(b) is basically
directed from a domain name registrar to a domain name registrant and
prospective mandatory administrative
proceeding respondent, and includes that:
For the purposes of [Policy 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
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
(iii) you have registered the domain name
primarily for the purpose of disrupting the business of a competitor; 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.
As for each of Policy paragraphs 4(b)(i),
4(b)(ii), and 4(b)(iii), they basically define respective types of bad-faith
registration
and provide that if any one of such types of registration has been
ascertained by a panel then bad-faith use is in turn evidenced
via application
of the respective one of those three provisions. In this proceeding, although
Policy paragraph 4(b)(i) does not appear
to be contended for, Policy paragraphs
4(b)(ii) and 4(b)(iii) appear to be contended for. However, in view of the
Panel's disposition
of the Parties' contentions regarding Policy paragraph
4(b)(iv), it is unnecessary for the Panel to further address the Parties'
Policy
paragraph 4(b)(ii) and 4(b)(iii) contentions.
As
for Policy paragraph 4(b)(iv), it basically defines a type of bad-faith use and
provides that if such type of use is ascertained
by a panel then bad-faith
registration is in turn evidenced via application of that provision. In this
proceeding, Policy paragraph
4(b)(iv) is contended for by Complainant and
against by Respondent, each in ways set out above and that will not be repeated
here;
in support of its contention Respondent submitted Response Exhibits 19,
20, and 23. Those exhibits no more avail Respondent in connection
with Policy
paragraph 4(a)(iii) than they availed Respondent in connection with Policy
paragraph 4(a)(ii), and it is clear (from
the above reasons given under the
headings of "Identical or Confusingly Similar" and "Rights or
Legitimate Interests")
that the following circumstances are present: by
Respondent's use of each of the domain names at issue, Respondent has
intentionally
attempted to attract, for commercial gain, Internet users to
Respondent's web site, by creating a likelihood of confusion with Complainant's
APA-STYLE HELPER mark as to the source, sponsorship, affiliation, or
endorsement of Respondent's web site. Similarly, see e.g. G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) and Am. Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000).
Moreover,
as for website disclaimers (as contrasted with Respondent's Exhibit 19, 20, and
23 evidence of webite disclaimers, to which
evidence the Panel ascribed above,
and still ascribes, little or no weight in Respondent's favor), see e.g. Madonna Ciccone p/k/a Madonna v. Parisi and
'Madonna.com, D2000-0847, (WIPO Oct. 12, 2000), which is extensively cited
and applied for the proposition that:
Respondent's
use of a disclaimer on its web site is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet Users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent's actions.
Such confusion is a basis for finding a violation of Complainant's
rights.
Similarly see e.g. Prudential Ins. Co. of Am. v. Prudential Mortgage Loans, FA 103880,
(Nat. Arb. Forum March 20, 2002), which includes that the "fact that the
Internet user ultimately discovers that
a site is not that of Complainant, or
that Respondent disclaims any association with Complainant, does not cure the
fault."
In view especially of the five
immediately preceding paragraphs hereof, Policy paragraph 4(a)(iii) is proven
as to each of the domain
names at issue.
DECISION
All
three elements required under the Policy having been established regarding each
domain name at issue, the Panel concludes that
the relief requested by Complainant
shall be GRANTED.
Accordingly, it is Ordered that the <apa-style.com> and <style-apa.com> domain names be TRANSFERRED from Respondent to
Complainant.
Rodney C. Kyle, Panelist
Dated: August 5, 2003
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