WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bradley D Mittman MD dba FRONTRUNNERS® v. Brendhan Hight, MDNH Inc
Case No. D2008-1946
1.
The Parties
The Complainant is Bradley D Mittman MD dba FRONTRUNNERS®, Laguna Niguel,
California, United States of America, pro se.
The Respondent is Brendhan Hight, MDNH Inc, Las Vegas, Nevada,
United States of America, represented by John Berryhill, United States of America.
2.
The Domain Name and Registrar
The disputed domain name <frontrunners.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 December 19, 2008. On December 19, 2008, the Center transmitted
by email to Moniker Online Services, LLC a request for registrar verification in
connection with the disputed domain name. On December 26, 2008, Moniker Online
Services, LLC 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 January 8, 2009.
In accordance with the Rules, paragraph 5(a), the due date for Response
January 28, 2009. The Response was filed with the Center January 28, 2009.
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The Center appointed William R. Towns, Philip N. Argy and W. Scott Blackmer as
panelists in this matter on March 2, 2009. 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 the owner of a United States registration for the mark
FRONTRUNNERS for use in connection with educational conferences and services in
the field of medicine, including tutorial sessions and correspondence courses.
The Complainant applied to the United States Patent & Trademark Office (USPTO) to
register the mark on July 24, 2005, and the mark was registered by the USPTO
August 8, 2006. The Complainant asserts that the mark has been in use with the goods
and services cited in the registration since as early as June 1996.
The Respondent is in the business of registering domain names for use with paid search
advertising. The disputed domain name <frontrunners.com> was originally registered
in 1999, and was acquired by the Respondent in February 2005 as part of a purchase of
a large domain name portfolio from Ultimate Search. The disputed domain name
resolves to a website at “www.frontrunners.com” (the “frontrunners.com website”) that
features links organized under the headings “Related Searches”, “Favorite Categories”,
and “Entertainment Categories”. The “Related Searches” section includes a search link
based on the term “frontrunners”.
Internet users who click on the “frontrunners” search link on the Respondent’s website
currently are directed to a secondary page with links to websites featuring content
related primarily to contests, competitions, giveaways and sweepstakes. Screen shots
of the Respondent’s website from January 13, 2008, submitted by the Complainant,
reflect that the “sponsored links” for “frontrunners” at that time included
“Amazon.com”, “BizRate.com”, “smarter.com” and “Become.com”, where, according
to the Complainant, FRONTRUNNERS internal medicine review materials are
available for purchase.
5.
Parties’ Contentions
A.
Complainant
The Complainant asserts that the disputed domain name is identical to the
Complainant’s registered mark. The Complainant, doing business as
FRONTRUNNERS®, states that he is a leading preparer of review courses and study
materials related to the American Board of Internal Medicine (ABIM) Certification and
Recertification Exams. According to the Complainant, since the inception of this
business in 1996, the Complainant and his FRONTRUNNERS review materials have
become widely recognized in the field of internal medicine.
The Complainant alleges that the Respondent lacks rights or legitimate interests in the
disputed domain name. According to the Complainant, the Respondent is not
authorized to use the Complainant’s FRONTRUNNERS mark and is not commonly
known by that disputed domain name. The Complainant maintains that the Respondent
is using the disputed domain name to attract Internet traffic to a website featuring links
to third party websites, including sponsored links for “frontrunners” that include
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commercial websites such as “Amazon.com”, where the Complainant’s course review
publications are offered for sale, and from which the Respondent derives pay-per-click
advertising revenues.
The Complainant claims that the Respondent owns over 100,000 other domain names,
and that the Respondent registered and is using the disputed domain name in a bad faith
attempt to attract, for commercial gain, Internet users to the Respondent’s website by
creating a likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant
asserts that the Respondent is a serial cybersquatter involved in numerous proceedings
under the Policy in which bad faith has been found under similar circumstances.
B.
Respondent
The Respondent maintains that it is in the business of registering domain names
incorporating common words, phrases and expressions for use with paid search
advertising. According to the Respondent, the disputed domain name was first
acquired by the Respondent in February 2005, as part of a large portfolio of domain
names purchased from Ultimate Search. The Respondent submits that prior to notice of
this dispute, the Respondent was using the disputed domain name to provide automated
advertising links to goods and services relating to the primary meaning of the phrase
“frontrunners”.
The Respondent argues that the term “frontrunners” is without question a common
phrase, which is synonymous with “leaders”, “best sellers”, and associated with
political elections, contests and athletic events. The Respondent relies upon a Google
search of the term “frontrunners”, which returned more than 1.64 million results, as
reflecting the broad and varied use of the term. According to the Respondent, the
Complainant is nowhere to be found among the leading search results returned by the
Google search. The Respondent further asserts from a search of the USPTO’s online
database that at least 29 other entities lay claim to “front runners” as a trademark or
service mark in connection with a variety of goods and services.
The Respondent takes umbrage at being accused by the Complainant of being a serial
cybersquatter. The Respondent acknowledges that the nature of its business has led to a
significant number of disputes under the Policy, but the Respondent asserts that it has
uniformly and consistently prevailed in such disputes. According to the Respondent, its
business model is well documented, and the use of ordinary words and phrases in
connection with advertising search results repeatedly has been found to be a legitimate
practice. The Respondent maintains that it uses the term “frontrunners” in its
commonly understood meaning to generate paid search advertising, with no intent to
exploit or profit from the Complainant’s mark.
The Respondent notes that it acquired the disputed domain name before the
Complainant registered or had applied to register the FRONTRUNNERS mark, and
further asserts that the Complainant has submitted no evidence to support its claim of
prior use of the mark. The Respondent postulates that a search of the USPTO database
at the time it acquired the disputed domain name in February 2005 would not have
alerted the Respondent to the Complainant’s asserted rights in the mark, given that the
Complainant did not apply to register the mark until July 2005, and that the registration
did not issue until August 2006. The Respondent further argues that there is no
evidence to support the Complainant’s claim to have been using the mark since
June 1996, notwithstanding the first use date claimed in the trademark application.
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The Respondent argues that nothing in the record justifies an inference that the
Respondent registered the disputed domain name with the Complainant in mind or with
any intent to trade on the Complainant’s limited claim of rights in the mark. According
to the Respondent, the Complainant’s federal registration does not demonstrate
possession of a chronologically relevant right against which bad faith intent could have
been exercised by the Respondent relative to the registration or acquisition of the
disputed domain name.
6.
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 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 name is the sole remedy 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 a 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 a 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.
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B.
Identical or Confusingly Similar
The Panel finds that the disputed domain name <frontrunners.com> is identical to the
Complainant’s FRONTRUNNERS mark, in which the Complainant has demonstrated
rights in 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. Wal-Mart Stores, Inc. v. Richard
MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc.
v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. In this
case, such a comparison reflects that the disputed domain name and the Complainant’s
mark are identical. The fact that the Complainant did not secure the registration of its
mark until after the Respondent had registered the disputed domain name is not
material for purposes of the first element of the Policy.
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, the burden is shifted to the Respondent to come
forward with evidence of rights or legitimate interests in the disputed domain name.
The Panel notes that the disputed domain name is identical to the Complainant’s mark,
and it is uncontroverted that the Complainant has not authorized the Respondent to use
the FRONTRUNNERS mark. The Complainant contends that the Respondent
registered the disputed domain name, which is identical to the Complainant’s mark, and
is using the domain name to generate click through advertising revenues. Taking the
evidence at its most favourable to the Complainant, which is a concession we make
solely to allow his argument to be ventilated, the Complainant could achieve a prima
facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra;
Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or
legitimate interests in the disputed domain name 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 Respondent maintains that it registered the disputed domain name because of its
appeal as a dictionary term or commonly used descriptive phrase, and not because of its
value as a trademark, and asserts that it has the right to register and make a descriptive
use of the disputed domain name. A number of panels have concluded that a
respondent has a right to register and use a domain name to attract Internet traffic based
on the appeal of a commonly used descriptive phrase, even where the domain name is
identical or confusingly similar to the registered mark of a complainant, provided it has
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not been registered with the complainant’s trademark in mind. See, e.g., National Trust
for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private
Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case
No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case
No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case
No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises,
Inc., WIPO Case No. D2000-0047.
Thus, where a respondent registers a domain name consisting of a “dictionary” term
because the respondent has a good faith belief that the domain name’s value derives
from its generic or descriptive qualities rather than its specific trademark value, the use
of the domain name consistent with such good faith belief may demonstrate a legitimate
interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case
No. D2005-1304. See also Media General Communications, Inc. v. Rarenames,
WebReg, WIPO Case No. D2006-0964 (domain name must have been registered
because of, and any use consistent with, its attraction as a dictionary word or
descriptive term, and not because of its value as a trademark).
Because, as discussed below, the Panel concludes that the Complainant has failed to
meet its burden of proof respecting bad faith registration and use under
paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has
established rights or legitimate interests in the disputed domain name is not strictly
necessary to the Panel’s decision in this case, but our inclination is that the Respondent
has done so.
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
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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. Match.com, LP v. Bill Zag and
NWLAWS.ORG, WIPO Case No. D2004-0230.
The Panel, after careful consideration of the totality of the circumstances in the record,
does not find the evidence sufficient to demonstrate that the Respondent registered the
disputed domain name with the aim of profiting from and exploiting the Complainant’s
rights in the FRONTRUNNERS mark. The primary rule in relation to domain name
registrations is “first come, first served”, to which the Policy provides a narrow
exception. See Macmillan Publishers Limited, Macmillan Magazines Limited and HM
Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658. While
the Complainant has rights in FRONTRUNNERS to the extent of its use as a
non-descriptive source indicator for the Complainant’s products and services, the mark
nonetheless is comprised of a common “dictionary” term, which the record indicates to
be subject to significant and widespread third-party use.
As noted above, a number of panels have concluded that a respondent has a right to
register and use a domain name to attract Internet traffic based on the appeal of
commonly used descriptive or dictionary terms, in the absence of circumstances
indicating that the respondent’s aim in registering the disputed domain was to profit
from and exploit the complainant’s trademark. See, e.g., National Trust for Historic
Preservation v. Barry Preston, supra. The Policy was not intended to permit a party
who elects to register or use a common term as a trademark to bar others from using the
common term in a domain name, unless it is clear that the use involved is seeking to
capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill
Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry
Preston, supra. The use of a domain name for third-party advertising is not per se
illegitimate under the Policy, provided that the respondent is not seeking to take
advantage of the complainant’s rights. See, e.g., The Landmark Group v.
DigiMedia.com, L.P., NAF Claim No. 0285459.
The Panel notes that Paragraph 2 of the Policy implicitly requires some good faith
effort to avoid registering and using domain names corresponding to trademarks in
violation of the Policy, where a registrant is engaged in the wholesale registration of
large numbers of domain names. Media General Communications, Inc., supra. See
Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World
Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc.
and Domain Manager, WIPO Case No. D2007-0062. However, Paragraph 2 of the
Policy has generally not been read as routinely requiring registrants to conduct
trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton
LLC and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254, and
a complainant generally must proffer some evidence, whether direct or circumstantial,
indicating that the respondent had the complainant’s mark in mind when registering the
disputed domain name. See The Skin Store, Inc. v. eSkinStore.com, WIPO Case
No. D2004-0661.
No such showing has been made by the Complainant in this case. The circumstances as
reflected in the record do not indicate that the Respondent actually knew, reasonably
should have known, or could even be deemed to have constructive notice of the
Complainant’s rights in the FRONTRUNNERS mark at the time the Respondent
acquired the disputed domain name. Clearly, a search of the USPTO trademark
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database at that time would not have alerted the Respondent to the Complainant’s rights
in the mark.
Further, while the Respondent has been a party to a number of UDRP proceedings, this
without more does not establish a clear pattern of abusive domain name registration
practices which may under other circumstances support an inference of the
Respondent’s bad faith in this case. And as noted above, the registration of a domain
name in order to generate pay-per-click advertising revenue is not a per se violation of
the Policy where the registrant is not seeking to take advantage of the complainant’s
rights.
We observe that the Wayback Machine (“www.archive.org”) has cached six versions of
the site to which the disputed domain resolved between October 18, 2000 and
January 9, 2007. In none of those versions is there any apparent link to a product or
services of the Complainant or any product or service competitive with that of the
Complainant. That is corroborative of the Respondent’s contentions both in respect of
the Respondent’s use as well as that of its predecessor.
In the final analysis, the ultimate burden of proof with respect to all three elements of
paragraph 4(a) of the Policy remains with the Complainant. For the reasons set forth
above, the Panel is unable to conclude from the totality of the circumstances as
reflected in the record that the Respondent registered the disputed domain name with
the aim of profiting from and exploiting the Complainant’s mark. See CNR Music B.V.
v. High Performance Networks, Inc., WIPO Case No. D2005-1116. Accordingly, the
Panel concludes that the Complainant has failed to satisfy its burden of showing bad
faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the
Policy.
7.
Decision
For all the foregoing reasons, the Complaint is denied.
____________________________
William R. Towns
Presiding Panelist
_______________________
Philip N. Argy
Panelist
_______________________
W. Scott Blackmer
Panelist
Dated: March 16, 2009
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