|Complainant||One Mind for Research|
|Panelist||Blackmer, W. Scott|
|Date of Decision||06.03.2013|
The Complainant is International Mental Health Research Organization / One Mind for Research of Rutherford, California, United States of America, represented by Kirkland & Ellis LLP, United States of America.
The Respondent is Benedict Carey of Rutherford, California, United States of America.
The disputed domain name <1mind4research.com> (the “Domain Name) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2013. On January 21, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 21, 2013, 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 for the disputed domain name.
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 January 23, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 14, 2013.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 19, 2013. 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 Complaint refers to the website at “www.1mind4research.org”, which describes “One Mind” as “an independent, non-partisan, non-profit organization dedicated to curing the diseases of the brain and eliminating the stigma and discrimination associated with mental illness and brain injuries.”
A preliminary issue is the proper identification of the Complainant. The Complaint does not state, and the record does not establish, that the named Complainant “One Mind for Research” is actually a legal entity. The Complaint describes it as a “division” of International Mental Health Research Organization (“IMHRO”). IMHRO is registered with the State of California as a nonprofit corporation and listed by the United States Internal Revenue Service as a tax-exempt organization. The Panel notes that the name “One Mind for Research” does not appear in the online database of registered business entities maintained by the California Secretary of State or in the online database of registered tax-exempt organizations, along with their registered “doing business as” names, that is maintained by the Internal Revenue Service. Absent information about the legal status of the named Complainant, the Panel will treat IMHRO as the legal entity that is the real party in interest. The “Complainant” will signify IMHRO hereafter in this Decision.
According to the Complaint, IMHRO “founded” “One Mind”, which “established rights in the One Mind for Research trade name” by using it in “the ordinary course of its activities”, including research, fundraising, and public-awareness campaigning. The Complaint asserts that “One Mind for Research” has been used as a trade name since February 2011. The Complaint also claims common law rights in ONE MIND FOR RESEARCH as a trademark, based on its continuous use since February 2011, on the Complainant’s website and in connection with its activities in raising “millions of dollars” in funding and donated services from individuals and from pharmaceutical companies and other organizations.
The Complaint reports that the Complainant originally registered both the Domain Name and the domain name currently used by the Complainant, <1mind4research.org>. The Respondent registered the Domain Name more than a year later, on April 13, 2012, after the Complainant’s registration had lapsed.
The Domain Name resolved, at the time of the Decision, to a landing page with pay-per-click (“PPC”) advertising links and the message, “Your website is not available / This account is currently suspended.” However, the Complaint annexes screen shots of several pages from the website formerly associated with the Domain Name, demonstrating that these pages included some of the same information found on the Complainant’s website. The “Contact” details shown were the same as on the Complainant’s website, with the exception of the email address. According to the Complaint, the home page of the Respondent’s former website (not annexed to the Complaint) included a “Donate” button, as on the Complainant’s own website, and annexed to the Complaint is an affidavit from an individual who unsuccessfully attempted to donate funds to the Complainant through the Respondent’s website.
The Complainant’s representative attempted to contact the Respondent1 and then complained to the website hosting company, which disabled the Respondent’s website. Shortly after that, a Ms. Jordan contacted the Complainant (the email exchange is annexed to the Complaint). Ms. Jordan identified herself as a student who registered the Domain Name as a “personal hobby”, and she offered to change the content of the website to something inoffensive, such as puzzles or quizzes, if the Complainant would withdraw its complaint to the website hosting company. Ms. Jordan denied that the Domain Name itself was a trademark infringement and also denied having placed a “Donate” button on the website. In a subsequent email, she offered to sell the Domain Name to the Complainant for USD 100. Evidently, the parties did not agree to such a transaction, and this proceeding followed.
The Complainant claims common law trademark rights in ONE MIND FOR RESEARCH and argues that the Domain Name is confusingly similar to this mark. The Complainant contends that the Respondent had no legitimate interest in the Domain Name and used it only to confuse and misdirect Internet users seeking information about the Complainant.
The Complainant suggests that the Respondent must have been aware of the Complainant’s unregistered mark, since the Complainant had used the mark for more than a year, the Complainant itself was the original registrant of the Domain Name, and the Respondent used the Domain Name for a website that “fraudulently” emulated the Complainant’s website, copying or paraphrasing some material from that website and from the Complainant’s Facebook page. The Complaint also points to the Respondent’s offer to sell the Domain Name for USD 100 as evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a 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.”
The Panel is satisfied that the Domain Name is confusingly similar, within the meaning of the UDRP, to the name that the Complainant claims as a mark. The words “one” and “for” in the claimed mark are replaced in the Domain Name by the numbers “1” and “4”, which, when pronounced, would be phonetically indistinguishable to an English speaker. The issue is whether the Complainant’s name is, in fact, legally protected as a trademark or service mark.
The first element of the Complaint is “essentially a standing requirement.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. The Complainant must show that it has rights in a trademark or service mark. An unregistered mark can suffice for this purpose, but the Complainant must show in that case that the name has become “a distinctive identifier associated with the complainant or its goods or services.” WIPO Overview 2.0, paragraph 1.7. UDRP Panels look for evidence such as “length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” Id.
The Complainant’s claimed mark is not registered, and the evidence in the record to support its claim of a common law trademark rights is sparse. The Complaint refers repeatedly to “One Mind for Research” as a trade name (apparently not a registered one), but what is required is evidence that a name has become a brand – that it has acquired secondary meaning as a trademark or service mark associated with goods or services.
The record shows only that the name has been used for roughly two years in connection with a worthy nonprofit organization. In fact, the fundraising materials annexed to the Complaint all concern a single event, a “First Annual Circle of Hope Gala” in Beverly Hills, California in September 2012, a dinner featuring speakers and a presentation by several Hollywood celebrities. The invitations and other related materials are headed “One Mind for Research,” described as a division of the tax-exempt nonprofit IMHRO, but this use of the name is more evidently naming the host organization than trademarking goods or services. The phrase “Circle of Hope” is featured more prominently in some of the materials, and that is the term that is used in naming each of the different levels of sponsorship for the gala event (such as “Circle of Hope Benefactor”, “Circle of Hope Patron”, “Circle of Hope Angel”). “One Mind for Research” is not accompanied by a “TM” or “SM” symbol signaling a claim in an unregistered mark.
The Complaint asserts that “millions of dollars” in donated funds and services have been raised under this name, but the record does not include details or evidentiary support (in the form of a declaration, for example) concerning the number of donors, the level of funds raised, advertising expenditures, media reports, surveys, or even the number of unique visitors to the Complainant’s website. Several companies and individuals are listed as sponsors of the “Circle of Hope” gala event, but again, the name of the organization is not clearly used in that connection as a trademark or service mark. The name “One Mind for Research” appears with artwork on the website and gala invitations, also without any indicated trademark claim for this design logo.
The organization’s name, “One Mind for Research”, was adopted two years ago and, as far as can be ascertained from the record, has been exposed to the public chiefly through the Complainant’s own website. The name is not inherently distinctive but is comprised of dictionary words. The Panel concludes that the relatively recent display of the organization’s name on the Complainant’s website and on invitations for a fundraising event are insufficient to demonstrate that the name has acquired a secondary meaning in association with goods or services, such that it could be legally protected as a common law trademark or service mark.
The UDRP is a “tool”, which was designed for trademark holders to combat abusive domain name registrations. As such, this tool is not available to the Complainant who does not hold the requisite trademark rights. However, this Decision neither impedes the Complainant from pursuing other options in seeking a transfer of the Domain Name nor forecloses the Complainant’s recourse to a court of competent jurisdiction.
Thus, the Complainant has failed to meet its burden of proof on the first element of the Complaint.
Given the Panel’s conclusion on the first element of the Complaint, it is not necessary to address this element.
Given the Panel’s conclusion on the first element of the Complaint, it is not necessary to address this element.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: March 6, 2013
1 The Complainant claims that “Benedict Carey” is a New York Times journalist who has confirmed to the Complainant that he is not the registrant of the Domain Name and is not involved with the registrant of the Domain Name.