WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION AMERICAN COLLEGE OF TRIAL LAWYERS v. John Givens Case No. D2008-1813 1. The Parties
The Complainant is AMERICAN COLLEGE OF TRIAL LAWYERS, Irvine, California, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
The Respondent is John Givens, Dothan, Alabama, United States of America, represented by Cochran, Cherry, Givens, Smith, Lane & Taylor, P.C., United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2008. On November 25, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 25, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2008. The Response was filed with the Center on December 17, 2008. The Complainant submitted a supplemental filing on December 19, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on January 14, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a not-for-profit organization of trial lawyers in the United States and Canada. The Complainant is the owner of a number of United States registrations for the mark AMERICAN COLLEGE OF TRIAL LAWYERS, the earliest of which was registered with the United States Patent and Trademark Office (USPTO) on December 13, 1988, and recites the Complainant's first use of the mark in April 1958 in connection with the services provided by the organization.
The Respondent registered the disputed domain names on November 30, 2007. The disputed domain names currently resolve to a parked webpage containing advertising links to third party websites, but the Respondent makes no claim to have registered the domain names for such use, and otherwise does not claim to have used the domain names for any commercial or non-commercial purpose since their registration in November 2007.
On or about December 17, 2008, concurrent with the filing of the Response herein, the Respondent filed a declaratory judgment action in the Circuit Court of Houston County, Alabama, respecting the domain name dispute with the Complainant, seeking a declaration that the Respondent has the right to own and use the disputed domain names. 5. Parties' Contentions A. Complainant
The Complainant states that it is a widely known non-profit professional organization of trial lawyers in the United States and Canada, founded in 1950, and the owner of valid and subsisting United States registrations for the trademark AMERICAN COLLEGE OF TRIAL LAWYERS. According to the Complainant, it has spent significant sums to advertise and promote its services in the United States through the exclusive, continuous and long standing use of the AMERICAN COLLEGE OF TRIAL LAWYERS mark, which consequently has become well known and famous in the United States as an indicator of the Complainant's standards and services.
The Complainant contends that the Respondent registered the disputed domain names in bad faith in November 2007, long after the Complainant began using its AMERICAN COLLEGE OF TRIAL LAWYERS mark in the 1950s, with actual and constructive knowledge of the Complainant's rights in the mark. The Complainant maintains that the disputed domain names are confusingly similar to its mark, arguing that the Respondent has adopted the distinctive and dominant portion of the Complainant's mark in its entirety. Further, according to the Complainant, the terms “American” and “national” are used interchangeably in the United States and have the same connotation.
The Complainant maintains that it has not licensed or otherwise permitted the Respondent to use its mark or to register domain names reflecting its mark, and that the Respondent has never been commonly known by the disputed domain names. The Complainant asserts that the Respondent's registration of the disputed domain names with prior knowledge of the Complainant's rights, coupled with the Respondent's passive holding of the domain names, establishes bad faith registration and use under the Policy. B. Respondent
The Respondent asserts that the disputed domain names are neither identical nor confusingly similar to the Complainant's AMERICAN COLLEGE OF TRIAL LAWYERS mark, and contends that the Complainant fails to allege any abusive practices by the Respondent respecting the disputed domain names. The Respondent maintains that the Complainant has not previously sought to register the disputed domain names and is unlikely to use the domain names for any purpose.
The Respondent contends that he has rights and legitimate interests in the disputed domain names by virtue of duly registering the domain names and paying for the registrations. The Respondent further avers that he intends to make a commercial use of the domain names, without the intent to mislead consumers or tarnish the Complainant's mark. 6. Preliminary Issues A. Court Proceedings
The Respondent on or about December 17, 2008, filed concurrently with the Response in this case a declaratory judgment action is an Alabama state court concerning the instant domain name dispute. Based on this and on two additional legal proceedings unrelated to this domain name dispute1, the Respondent argues that this proceeding should be dismissed or else stayed.
The Panel notes that the Policy contemplates judicial intervention, which can occur before during or after the dispute resolution process of the Policy is invoked. Pursuant to paragraph 18(a) of the Rules, when notified of “any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
In the present circumstances, this Panel determines that it shall proceed to a decision. It does so without prejudice to any determination that a court of competent jurisdiction may make in relation to this domain name dispute. The Panel notes that the decision in this administrative proceeding carries no precedential weight and is not binding on the court in which the Respondent's declaratory judgment action has been filed. See Report of the WIPO Internet Domain Name Process, paragraph 169(ii). 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “Cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either 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; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain names are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain names and are confusingly similar to the Complainant's AMERICAN COLLEGE OF TRIAL LAWYERS mark for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. The disputed domain names incorporate the “College of Trial Lawyers” portion of the Complainant's mark in its entirety, and the Panel is not persuaded that the presence of the descriptive term “national” in the domain names is likely to dispel the confusing similarity thereby created. Moreover, the terms “national” and “American” likely have a similar connotation when used as here with regard to an organization based in the United States.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant's mark or to appropriate the mark for use with domain names, and there is no indication that the Respondent has been commonly known by the disputed domain names. Nevertheless, the record reflects the Respondent's registration of the disputed domain names, which are confusingly similar to the Complainant's distinctive mark, and, other than their questionable use to generate advertising revenue, the passive holding of the domain names by the Respondent since their registration in November 2007.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Panel finds nothing in the record before it that would bring the Respondent's registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. There is no affiliation between the Complainant and the Respondent, and the Respondent does not claim to have been commonly known by the disputed domain names. Conspicuously absent from the record is any evidence of the Respondent's use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent's bare allegation that he intends to make some commercial use of the domain names in the future does not satisfy the Respondent's burden of production under paragraph 4(c)(1) of the Policy. Nor has the Respondent claimed that he is making any legitimate noncommercial or fair use of the domain names. See Covanta Energy Corporation v. Anthony Mitchell,WIPO Case No. D2007-0185 (“respondent must demonstrate that the domain name is being used without intent for commercial gain in order to successfully invoke paragraph 4(c)(iii) of the Policy.”).
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
A reasonable inference may be drawn from the circumstances in the record that the Respondent knew of and had in mind the Complainant and its AMERICAN COLLEGE OF TRIAL LAWYERS mark when registering the disputed domain names. The record clearly reflects the Respondent's appearance as attorney of record for The American Trial Lawyers Association, Inc. in a declaratory judgment action on behalf of this entity on November 2, 2007, less than a month before the Respondent registered the disputed domain names. This declaratory judgment action was filed in response to a cease and desist letter from the Complainant alleging that the use of “The American Trial Lawyers Association” infringed the Complainant's mark.
The Respondent's registration of domain names confusingly similar to the Complainant's AMERICAN COLLEGE OF TRIAL LAWYERS mark with full knowledge of the Complainant's rights in the mark is evidence of bad faith. See Ticketmaster Corp. v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. The circumstances in the record before this Panel, including the Respondent's registration of the disputed domain names in disregard of the Complainant's rights, the Respondent's passive holding of the disputed domain names since their registration in November 2007, and the total absence of any demonstrable preparations by the Respondent to make any legitimate commercial or noncommercial use of the domain names after more than a year, are indicative of bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: January 28, 2009
1 The two additional cases identified by the Respondent are:
(1) American Association for Justice a/k/a Association of Trial Lawyers of America v. The American Trial Lawyers Association and J. Keith Givens, C.A. No. 07-4626-JNE/JJG (D.Minn.); and
(2) The American Trial Lawyers Association, Inc. v. American College of Trial Lawyers, C.A. No. 1:07cv1024-SRW (M.D.Ala.).
The Complainant through a supplemental filing has submitted copies of the Complaints in these civil actions. The Panel takes notice that the Complainant is not a party in the first of the above listed civil actions, and that the instant domain name dispute is not the subject of either civil action. The Panel further takes notice that the Respondent is not a party in the second of the above listed civil actions, although he does appear as attorney of record for the plaintiff therein.
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