WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION MBTI Trust, Inc. v. Ivan Penev Case No. D2009-0791 1. The Parties
The Complainant is MBTI Trust, Inc. of Fort Washington, Pennsylvania, United States of America, represented by Panitch Schwarze Belisario & Nadel, LLP, United States of America.
The Respondent is Ivan Penev, Yambol, Bulgaria. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2009. On June 16, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2009, GoD, Inc. 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 June 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 9, 2009.
The Center appointed Petter Rindforth as the sole panelist in this matter on July 15, 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.
The Administrative Panel shall issue its decision based on the Complaint, the Policy, the Rules, the Supplemental Rules, and without the benefit of any Response from the Respondent. The case before the Panel was conducted in the English language. 4. Factual Background
The MBTI assessment (also known as the Myers-Briggs Type Indicator assessment) is a personality tool developed over 50 years ago by Isabel Briggs Myers and her mother, Katharine Briggs. In the early 1970's, the MBTI copyrights were exclusively licensed to Consulting Psychologists Press, Inc. (now known as CPP, Inc.). Isabel Myers died in 1980, and her intellectual property is now maintained and controlled by the Complainant.
The Complainant is the owner of the following U.S. federal trademark registrations (Official documentation showing the marks and ownership provided as Annex D of the Complaint):
No 1,444,977 MBTI (word)
First used in commerce: May, 1985
Filed: September 26, 1986
Registered: June 30, 1987
Class: 9, Computer programs for psychological testing and answer scoring
No 1, 611, 241 MBTI (word)
First used in commerce: October 28, 1977
Filed: December 26, 1989
Registered: August 28, 1990
Class: 16, Printed psychological test booklets and answer sheets
No 1, 817, 190 MBTI (word)
First used in commerce: April, 1989
Filed: February 8, 1993
Registered: January 18, 1994
Class: 41, Training workshops in the field of psychological testing and scoring
No 2, 525, 809 MBTI (word)
First used in commerce: November 24, 1999
Filed: September 27, 1999
Registered: January 1, 2002
Class: 42, Providing information regarding psychological testing and scoring on a global computer network; and providing psychological testing services
No 3,171, 836 MBTI (device)
Filed: May 1, 2003
Registered: November 14, 2006
Class: 44, Providing psychological testing and scoring of tests; providing information over the Internet in the field of psychological testing services; providing information over the Internet regarding psychological tests and regarding personality types
No 2, 901, 221 MBTI (Device)
Filed: May 1, 2003
Registered: November 9, 2004
Class: 42
No 3, 130, 244 MBTI (Device)
Filed: May 1, 2003
Registered: August 15, 2006
Class: 41
No 2,933, 745 MBTI (Device)
Filed: May 1, 2003
Registered: March 15, 2005
Class: 16
The Respondent registered the disputed domain name on May 9, 2005. No detailed information is provided about the Respondent's business and activities, apart from what is mentioned below by the Complainant. 5. Parties' Contentions A. Complainant
The Complainant asserts that the MBTI assessment can improve the quality of life for individuals and organizations, and that it is the best known and most trusted personality tool in the world today – available in 21 languages. More than 2 million assessments are administered to individuals annually. While the majority of MBTI assessments are taken on paper, in 2007 Complainant's exclusive licensee, CPP, Inc., developed an electronic version of the MBTI instrument which is now available online.
Complainant, through its exclusive licensee, owns and controls over 170 MBTI-related domain names around the world (listed in Annex C of the Complaint), including .
The Complainant argues that the disputed domain name is materially identical to Complainant's trademark and domain name, and states that the Respondent has never been authorized by or affiliated with Complainant in any way and is not authorized or licensed by Complainant or by Complainant's exclusive licensee to provide any services or goods under the MBTI mark.
On December 30, 2008, the Complainant, through its licensee CPP, Inc., sent Respondent a letter (copy provided as Annex E of the Complaint) informing Respondent of Complainant's rights and in an effort to resolve the conflict in an amicable manner. Respondent did not respond.
The Complainant claims that Respondent derives advertising revenue from the site through links embedded within the same, and that Respondent thus lures individuals seeking information about Complainant's goods and services, in order to obtain pay-per-click revenue. The Complainant further claims that Respondent's information on MBTI, at the site, contains inaccuracies.
Finally, the Complainant states that the disputed domain name was registered and is being used in bad faith, and claims that the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location, and further that the Respondent's actions have prevented Complainant from registering in its own name, thereby depriving Complainant of a valuable marketing tool for its products and services.
The Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the Respondent's domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has established rights in the MBTI trademark in the U.S. through several registrations, listed above and in the Annex D of the Complaint, see AOL LLC v. Mark Interrante, NAF Claim No.681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant's rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The relevant part of the domain name is “e-mbti”. The addition of the generic top-level domain “.com” is insufficient to distinguish the domain name from the Complainant's mark.
The disputed domain name is almost identical to the Complainant's trademark, with the only difference that the letter “e”, followed by the hyphen, has been added. The addition of “e-“ in front of another entities' trademark does not alter the domain name in a way that avoids confusion, especially not when the mark also is used for services provided electronically. As pointed out by the Complainant, the relevant public and visitors to Respondents web site may conclude that “www.” is the official electronic version of the goods and services provided by the Complainant, see Inter-IKEA Systems B.V v. Technology Education Center,WIPO Case No. D2000-0522 (holding that the prefix “e-“ has become a generic or common descriptive term used to identify electronic commerce activity).
The Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark MBTI. B. Rights or Legitimate Interests
Once the Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy, see Clerical Medical Investment Group Limited v. C (Clerical & Medical Services Agency),WIPO Case No. D2000-1228 (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Complainant states that the Respondent is not an authorized agent or licensee of the Complainant and does not seem to be commonly known by the domain name (the WhoIs record showing the domain name registrant as one Ivan Penev).
According to the Complainant, the Respondent is using the disputed domain name for a competing web site, displaying misleading information on the Complainant's services and deriving advertising revenue from the site through links embedded within the same. Although no printout of the Respondent's web site is provided as supporting evidence of these accusations, similar arguments are formulated in the Complainant's cease and desist letter to the Respondent. The actions of the Respondent, as described by the Complainant, do not constitute any legitimate interest to the domain name, see Glaxo Group Ltd. v. WWW Zban, NAF Claim No.203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). This Panel finds no reason to questioning the information provided by the Complainant.
By not submitting a Response, the Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name.
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As concluded above, is confusingly similar to the Complainant's registered trademark MBTI.
The Complainant is based in the United States of America and, although trading worldwide, has not claimed any registered trademark rights outside the United States of America. The Respondent is based in Bulgaria.
The above facts alone cannot be taken as evidence of any bad faith registration and use of the Respondent. However, the further circumstances are - collectively - clear indications that the Respondent registered with knowledge of the Complainant's registered trademark MBTI.
The Panel has no reason to questioning the Complainant's assertions that the MBTI assessment is well known among the relevant public in many countries and available in 21 languages. The specification of 170 domain names registered and controlled by the Complainant's exclusive licensee and the connecting web sites, whereof a number in Europe (although not in Bulgaria) registered before the Respondent's registration of the disputed domain name, indicates that the Respondent must or should have had at least constructive knowledge of the MBTI mark at the time of the registration of .
MBTI is not a generic word, but a rather specific letter combination. The was registered before the Complainant's release of its on-line services, but after Complainant's filing of the MBTI mark in respect of “…providing information over the Internet in the field of psychological testing services; providing information over the Internet regarding psychological tests and regarding personality types”. Further, Complainant registered on January 29, 2005 – less than 4 months before Respondent's domain name registration – the said domain name of the Complainant strongly indicating Complainant's plans to release an electronic version of its services.
In the absence of any reply from the Respondent, this Panel cannot draw any other conclusion than the one that Respondent has tried to create an illusion of commercial relationship with, or endorsement from, the Complainant, knowing that Complainant was planning to use its trademark for services over the Internet.
The Respondent is using the domain name for a web site with competing services and with some misleading information on Complainant's services, obviously in an attempt to intentionally disrupt Complainant's business and compete with Complainant. This is an action of bad faith registration and use under policy paragraph 4(b)(iii). See, Surface Protection Industries, Inc. v. The Webposters a/k/a Mark's Paint Store, Inc.,WIPO Case No. D2000-1613 (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); See also, Paul Barnett Puckett, Individually and d/b/a Nature's Window v. Christopher D. Miller,WIPO Case No. D2000-0297 (finding that the respondent has diverted business from the complainant to a competitor's website in violation of Policy paragraph 4(b)(iii)).
Finally, the fact that the Respondent did not reply to either the letter from the Complainant, or the Complaint filed with the Center, are - not alone, but in connection with the abovementioned other circumstances – further indications of bad faith. See, News Group Newspapers Limited and News Network Limited v. Momm Amed Ia,WIPO Case No. D2000-1623, see also, Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 (failure to positively respond to a complainant's efforts to make contact provides “strong support for a determination of ‘bad faith' registration and use.”)
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Complainant has succeeded in proving the three elements within Paragraph 4(a) of the Policy. 7. 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 name, be transferred to the Complainant.
Petter Rindforth
Sole Panelist
Dated: July 20, 2009
Full & Egal Universal Law Academy