The Complainant is CPP, Inc., Mountain View, California, United States of America, represented by Hogan & Hartson L.L.P., United States of America.
The Respondent is Nokta Internet Technologies, Berkeley, California, United States of America, represented by Renova, Ltd., Spain.
2. The Domain Name and Registrar
The disputed Domain Name <consultingpsychologists.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2008. On April 17, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 17, 2008, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 24, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 April 30, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2008. The Response was filed with the Center May 20, 2008.
The Complainant submitted a Reply to the Response dated May 28, 2008, and the Respondent submitted an Objection and Response to the Reply dated June 9, 2008.
The Center appointed W. Scott Blackmer, Steven L. Snyder and David E. Sorkin as panelists in this matter on June 20, 2008. The Panel finds that it was properly constituted. Each member of 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 business corporation organized under California law in 1956. It was established originally under the name Consulting Psychologists Press, Incorporated, which was changed to Consulting Psychologists Press, Inc. and then changed again (in 2002) to CPP, Inc., according to the Declaration of Steven Waldo, the Complainant’s Vice President and Chief Legal Officer, and the online business entity database operated by the California Secretary of State. The same sources indicate that a sister company, also incorporated in California, operates under the name Consulting Psychologists Press International, Inc. The domain names <cpp.com> and <consultingpsychologistspress.com> both resolve to a website labeled “CPP, Inc. – Leaders in Workforce Development” and headed “WELCOME TO CPP.COM!”. The Complainant states that this website attracts approximately 50,000 visitors monthly.
Since 1956, the Complainant has published personality tests and texts on psychology and organizational behavior, and offered associated services, with an emphasis on individual and organizational development, conflict management, career management, and personality assessment. The Complainant is the exclusive publisher of the widely used MYERS-BRIGGS TYPE INDICATOR personality testing instrument (the “MBTI”) and the exclusive licensee of several MBTI, MYERS-BRIGGS, and MYERS-BRIGGS TYPE INDICATOR trademarks and service marks, which are registered in the United States of America to The Myers-Briggs Type Indicator Trust (“the MB marks”).
The Complainant states that it owns an unregistered, “famous” mark, CONSULTING PSYCHOLOGISTS PRESS. The Panel notes that this mark does not appear on the Complainant’s website and is not mentioned on the “Trademarks and License” page of that website. The Complainant states that it expends substantial sums in advertising; the only figure given is USD $1.1 million in the year 2001. The Complaint does not state what, if any, portion of this advertising displays the unregistered mark, and it furnishes no examples of such advertising. The Complainant also refers to the distribution of printed test-related materials displaying the mark CONSULTING PSYCHOLOGISTS PRESS.
The Respondent gives a California postal address, but no entity with the name “Nokta Internet Technologies” is listed as a California business entity or as a foreign company registered to do business in California in the online business entity database operated by the California Secretary of State. The Response does not indicate whether the Respondent is a legal entity, nor does it identify the person or persons using “Nokta Internet Technologies” as a trade name or alter ego.
The Respondent registered the Domain Name on October 17, 2004. According to the Response, the Respondent “has been using the Domain Name since 2004 in association with an advertising driven search portal site generating information that cannot be said to be unrelated to the phrase” represented by the Domain Name, i.e., “consulting psychologists.” Here is how the Respondent describes the website to which the Domain Name resolves:
“The web page is portrayed only when users enter the term directly in the browser (‘Direct Navigation’). Direct Navigation is a recognized method used by approximately 15% of Internet users to locate information on the Internet. In Direct Navigation, users type a constructed search phrase in the form of a domain name in the browser instead of using a search engine such as Google. The entered domain name is then parsed by software systems of third parties into separate logical words which are transmitted automatically to large search engines such as Google. Pursuant to contract between the 3rd party and Google, Google returns a list of search results that are contextually related to words that formed the domain name originally entered by the user. The results essentially include content that Google is paid by its customers to present when the same terms are entered in a standard search performed through the Google search engine – the domains are used in the same manner as ‘key word’ search terms. All of this is performed in milliseconds and the results are almost instantaneously presented to the user.”
The Respondent cites media articles in support of its contention that Direct Navigation represents a large and growing industry. The Response does not discuss the revenue stream from its use of the Domain Name for a direct-navigation advertising portal. However, the cited articles, and the description of Google’s AdSense service on its website at “www.google.com”, indicate that the Respondent’s business model is pay-per-click (“PPC”) advertising, in which the advertising search engine provider shares with the domain name holder a portion of the fees it obtains from advertisers for bringing Internet users to their websites.
The landing page associated with the Domain Name currently displays photographs of what appear to be white-coated medical doctors with stethoscopes draped around their necks (an image doubtless meant to suggest medical professionals but not especially apt for psychologists) and links for “Sponsored Listings” and “Related Searches”. These links take the user to websites operated by a variety of consultants and educational services. The links are by no means limited to psychologists or psychological training; they include, for example, dentists, real estate agents, and engineers. The Complainant points out that some links lead to websites making apparently unlicensed use of the MB marks and offering personality tests with terminology similar to that of the MBTI.
The Respondent acknowledges that it has been named in other UDRP proceedings before the present one: Champion Broadcasting Systems, Inc. v. Nokta Internet Technologies,
WIPO Case No. D2006-0128 (no response was submitted, and the panel made a finding of bad faith and ordered transfer of the disputed domain name); Diners Club International Ltd. v. Nokta Internet Technologies, NAF Claim No. FA0720824 (settled by transfer); ChildCare Careers, LLC v. Nokta Internet Technologies, NAF Claim No. FA1163699 (complaint denied); Voip Review LLC v. Nokta Internet Technologies, NAF Claim No. FA1095192 (complaint denied). The Respondent was also the defendant in a 2007 federal civil action in California concerning alleged trademark infringement and cyberpiracy, Mad Dogg Athletics, Inc. v. Nokta Internet Technologies d/b/a Spinningexervicese, Civ. No. 2:07-cv-01740-AHM-VBK (C.D. Cal.), which was settled by the parties without trial.
Counsel for the Complainant sent the Respondent a cease-and-desist letter dated March 5, 2008, demanding transfer of the Domain Name and the immediate suspension of any use of the MB marks and the Complainant’s unregistered CONSULTING PSYCHOLOGISTS PRESS mark. The Respondent did not reply to this letter.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its common-law CONSULTING PSYCHOLOGISTS PRESS mark, and that the Respondent has no rights or legitimate interests in using a confusingly similar Domain Name for a pay-per-click advertising portal. The Complainant infers that the Domain Name was registered and used in a bad-faith effort to mislead Internet users for commercial gain, consistent with a pattern of abusive domain name registrations.
B. Respondent
The Respondent challenges the Complainant’s claim to common-law protection of the unregistered mark. The Respondent argues that it has a legitimate interest in using a generic phrase for a Domain Name associated with a direct navigation advertising portal. The Respondent denies prior knowledge of the Complainant’s claimed mark and any intent to exploit the mark by misleading Internet users as to source or affiliation.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name 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 in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall 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.
A. Supplemental and Overlong Filings
Both parties submitted supplemental filings, and the Response itself exceeded the Center’s word limit by several thousand words.
The Policy is designed to provide an expeditious and economical administrative remedy in appropriate domain name disputes. There is no provision for discovery or hearings as in judicial proceedings and formal arbitration. Consequently, the time periods allowed for pleading and decision are short, and the Rules, paragraph 5(b)(i), contemplate that dispute resolution service providers such as the Center will adopt Supplemental Rules that may include “word and page limits and guidelines” (paragraph 1, “Definitions”). Paragraph 10 of the Center’s Supplemental Rules limits the Complaint and the Response to 5000 words each, and neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the Panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to new arguments.
The Panel has reviewed the parties’ supplemental filings, which are chiefly concerned with the Complainant’s common-law trademark claim, and concludes that they do not meet this standard for inclusion in the record. The Complainant’s objection to the overlong Response is well-founded, but the Decision, as explained below, does not turn on the Respondent’s lengthy arguments and detailed evidence concerning the generic nature of the Domain Name, which may therefore be disregarded. The Complainant’s supplemental filing also includes copies of documents bearing its former company name. The Panel has examined these documents and finds that they do not establish trademark use of the name, as discussed below. In any event, the Complainant should have furnished with the Complaint itself sufficient documentary evidence to support its claim to common-law trademark rights; that is part of the Complainant’s burden of proof and should not have been left to supplemental filings.
B. Identical or Confusingly Similar
The Complainant asserts that it has common-law rights in the mark CONSULTING PSYCHOLOGISTS PRESS, and that the Domain Name is confusingly similar to this mark. The Policy by its terms is not limited to protecting nationally registered marks, and UDRP panels have accepted unregistered marks as grounds for a UDRP complaint, particularly where both parties were located in a jurisdiction (such as the United States of America) that offers legal protection for unregistered marks under some circumstances. In such cases, however, the Complainant must adduce sufficient evidence to demonstrate that the claimed mark has in fact been used as a mark labeling goods or services and, through its use, attracted significant goodwill and reputation associated with the Complainant’s goods or services in a definable market. See, e.g., Imperial College v. Christophe Dessimoz,
WIPO Case No. D2004-0322.
The Complainant in the current proceeding has not established the trademark use of a truncated version of its former company names, “Consulting Psychologists Press, Incorporated” and “Consulting Psychologists Press, Inc.” The Complainant’s website does not use the claimed mark CONSULTING PSYCHOLOGISTS PRESS, and it is not listed on the “Trademarks and License” page of the website. The claimed mark also does not appear in the print catalogue and test materials furnished by the Complainant. These contain only instances of the Complainant’s former company name, including the word “Incorporated” or the abbreviation “Inc.” No trademark symbol accompanies these names, and the trademark statements printed on the materials refer only to the MB trademarks. The Complainant has furnished no other advertising or labeling showing how it uses the claimed mark, much less evidence of widespread distribution and market awareness supporting its claim that the alleged common-law mark is “famous”.
Moreover, even if the Panel accepted the claimed common-law mark for purposes of paragraph 4(a)(i) of the Policy, it is doubtful whether the Panel could find confusing similarity with the Domain Name. The Domain Name consists of two common English words, and the Respondent offers evidence that many professionals characterize themselves as “consulting psychologists”. There is no claim that the Complainant has trademark rights in that shorter, two-word phrase that comprises the Domain Name. The additional common word “press” found in the Complainant’s asserted mark – but not in the Domain Name – is therefore a significant differentiator, suggesting that the Complainant is not itself a consulting psychologist but provides publications of relevance to consulting psychologists. Lacking that word, the generic Domain Name is even less likely to be confused with the Complainant’s claimed mark.
The Panel finds, therefore, that the Complainant has not established the first element of the Complaint.
C. Rights or Legitimate Interests
Given the Panel’s conclusion on the first element of the Complaint, it is not necessary to assess the Respondent’s claims to a legitimate interest in registering and using the Domain Name.
D. Registered and Used in Bad Faith
The Panel’s holding on the first element of the Complaint obviates the need for further analysis, but the Panel notes that the same facts that called into question the Complainant’s asserted common-law trademark rights also undermine its contention that the Respondent must have registered the Domain Name in a bad-faith effort to exploit the claimed mark.
To establish bad faith, there must be sufficient evidence from which to infer that the Respondent was aware of the Complainant’s mark and sought to exploit it, both at the time of registration and subsequently. See, e.g., Kooks Custom Headers, Inc. v. Global DNS, LLC,
WIPO Case No. D2008-0233 (and citations therein). The Respondent denies prior knowledge of the Complainant in 2004 when it registered the Domain Name. The Complainant’s claim that by that time it held a long-established and “famous” common-law trademark in a descriptive phrase is not supported by sufficient evidence to warrant a conclusion that the Respondent must be prevaricating.1 Thus, the Panel could not make a finding of bad-faith registration on the current record.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer Presiding Panelist
Steven L. Snyder
Panelist
David E. Sorkin
Panelist
Dated: July 4, 2008
1 The history of prior UDRP and judicial proceedings involving the Respondent hardly establishes a “pattern” of abuse (one transfer in a default proceeding, one by settlement, two complaints denied, and one lawsuit settled). In any event, this history does not compel an inference of bad faith in a UDRP proceeding where the Complainant has not even established that it possessed a mark that could be abused.
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