The Complainant is DogsBite.org of Austin, Texas, United States of America, represented internally.
The Respondents are formally Domain Privacy of Fareham, Hampshire, the United Kingdom of Great Britain and Northern Ireland and Animal Farm Foundation Inc. of New York, United States of America, represented by Husch Blackwell Sanders LLP, United States of America. The Response confirms that Domain Privacy is in fact the proxy agent for Animal Farm Foundation Inc. (hereafter the “Respondent”).
The disputed domain names <dogsbite.com> and <dogsbite.net> are registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2010. On May 27, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On May 27, 2010, eNom transmitted by email to the Center its verification response confirming that:
(a) both domain names are registered with it;
(b) the Respondent is listed as the registrant of the domain name <dogsbite.net> and that the contact details for the Respondent are as listed in the Complaint; and
(c) English is the language of the registration agreements of both domain names.
The Registrar further advised that the name of the registrant of the domain name <dogsbite.com> had been changed to “Domain Privacy”, but otherwise the contact details for that registrant remained the same.
In response to a notification by the Center that the name of the registrant of the domain name <dogsbite.com> had changed, the Complainant filed an amended Complaint on May 28, 2010. The Center verified that the Complaint together with the amended 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 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2010. The Response was filed with the Center on June 21, 2010.
The Center appointed Warwick A. Rothnie, Adam Samuel and Robert A. Badgley as panelists in this matter on July 13, 2010. 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.
Since October 2007, the Complainant has run a website which provides material on incidents where pit bull type dogs have attacked people. It campaigns for bans to be imposed on the ownership of such dogs. It does not own any registered trademarks. The Respondent campaigns for animal rights and opposes the views of the Complainant in many areas. The Respondent registered the domain name <dogsbite.net> in July 2009 and the domain name <dogsbite.com> in March 2010. Both domain names redirect to the website at “www.nationalcanineresearchcouncil.com”.
This section sets out the parties' contentions with which the Panel may or may not agree.
The Complainant's website, “www.dogsbite.org” is a public education website about dangerous dogs and in particular pit bull dogs. It was launched in October 2007. It contains about 2,000 web pages and over 400 downloadable .pdf files. Nearly all chronicle victims of serious pit bull attacks. United States media has quoted from the reports on the site and press in the United States, Australia, United Kingdom and Japan have interviewed the Complainant's founder on pit bulls and dangerous dogs generally. The Complainant became a non-profit corporation in December 2009, registered in Colorado, one of the Untied States.
Under common law, the effect of the Complainant's reports and local and national media recognition, the Complainant's name is a distinctive identifier associated with its statistical data reports and its campaign to reduce serious dog attacks. One of the disputed domain names sold for USD11,000 in March 2010. The Complainant owns <dog-bites.org>, <dogsbiteblog.org> and <dogsbiteblog.com>.
DOGSBITE, the Complainant's core brand, is included in the two disputed domain names. Users who type “dogsbite” into a Google search are seeking to find the Complainant's website. When a person types the address directly into a URL bar and assumes the “.com” extension, the user will unwittingly be sent to the Respondent, the Complainant's key competitor.
Users of the Complainant's website often leave comments at media stories and refer to the Complainant's domain name in the comment while typing the disputed domain name <dogsbite.com> by accident. In March 2009, a personal injury law firm posted a blog post about the new study released by the Complainant which includes a mistaken reference to the dispute domain name <dogsbite.com>.
The Respondent has never attempted to build a website at the other end of either domain name. They have simply forwarded both domain names to the Complainant's key competitor, NCRC. The disputed domain names were not connected to a bona fide offering of goods or services at any period between the 2007 launch of the Complainant's website and today. No website, brand or products have ever been developed around the disputed domain names.
No reasonable person confuses the terms “dog bites” or “dogs bite” with “fatal canine aggression” or “fatal dog attacks”. The information produced in this area by the NCRC website is limited and non-specific. Neither NCRC nor the Respondent has ever been commonly known by the disputed domain names. It is known that the Respondent and those associated with them loathe the Complainant and its founder.
The Respondent is intentionally and misleadingly diverting unsuspecting users to the NCRC website for non-legitimate purposes. A Google search for <dogsbite.com> showed the title of the site as referring to pet supplies which the NCRC does not sell. False title and meta tag descriptions are intentionally misleading and were probably designed to improve the domain name's search engine ranking results.
The deliberate concealment of the Respondent's identity by using a proxy service and forwarding the domain name to the Complainant's key competitor demonstrates registration and use in bad faith.
Stacey Coleman, the executive director of the second Respondent deliberately provided misleading registrant information, the address of two unrelated charitable foundations instead of the Respondent's address. The second Respondent is not a dog bite group or dog bite informational resource and had no legitimate purpose in registering the domain. Both domain names were registered for the primary purpose of disrupting the Complainant's business. Within the pit bull community, the Complainant is exceedingly well-known as the principal opponent of that community.
Attempts to silence and obstruct the Complainant involve the sending of obscene threatening -mails to the Complainant and its founder and threats of frivolous lawsuits by the pit bull community of which the Respondent is a participant.
The Complainant cannot establish rights in its alleged mark DOGSBITE.ORG. If a mark is considered merely descriptive, it is incapable of functioning as a trademark. A mark is merely descriptive when used on or in connection with the services that contain a term that directly and immediately conveys some knowledge of the characteristics of the product or service. A mark is descriptive if it conveys an immediate idea of the ingredients, qualities or characteristics of the goods. The Complainant has not registered the mark or any variation of it. The mark is incapable of registration because it is descriptive if not generic. It consists of two words which describe information provided by the Complainant. A complainant cannot claim rights in a mark comprised of two or more words when the words are common and descriptive and particularly when these words are not exclusively associated with the Complainant's business. Janis Bradley used the term “Dogs Bite” in her book well before the Complainant purchased launched its principal website. The owner of <dogbitelaw.com> is a lawyer. Best Friends Animal Sanctuary provides information on dog bites and owns <dogsbite.us>.
Descriptive marks cannot be protected unless secondary meaning is shown. To establish that, the Complainant must show that the public identifies the source of the product from the mark, rather than the product itself. The Complainant's mark is not a source indicator. The Complainant's use of its name is not by itself enough. A corporate name is insufficient to establish protectable rights. Creating and operating a company having as its name a common word plus a dot and a TLD suffix does not give the company itself the sole right to use the word.
A search using Google for “dogsbite” failed to reveal the Respondent's domain name. Correctly performed, it shows numerous third party domain names containing the same or similar words.
The Respondent report extensively on issues relating to dog bites, dog bite fatalities and community safety in this area. The Respondent's website, “www.animalfarmfoundation.org', was launched in 2001 and soon became a national resource on this subject. The Respondent has been using its name and providing information related to dog bites since 2001. The Respondent is making a fair use of the domain names without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. The Complainant and Respondent are not competitors. They are opponents.
In February 2009, the Respondent bought a batch of domain names relating to dogs biting and dog bite statistics that contain similar common terms and immediately redirected all domain names to the NCRC website. In July, it did the same thing. It did so in good faith in order to provide information relating to dogs that bite on the basis of current scientific thinking.
Under the Policy, the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
The major issue here is whether the Complainant has rights in a trademark or service mark DOGSBITE or DOGSBITE.ORG. It has not registered any trademark.
In Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784, the panel described United States trademark law in this area saying:
“This result is consistent with United States trademark law in which names are protectable as trademarks or service marks upon a showing that the name has become distinctive through the acquisition of secondary meaning. See Adray v. Adray-Aart, Inc., 68 F.3d 362 (9th Cir. 1995), amended on other grounds, 76 F.3d 984 (9th Cir. 1996) (personal names are capable of becoming strong trademarks upon a showing of secondary meaning). See also, McCarthy on Trademarks and Unfair Competition ‘13:2 (4th ed. 2000). Secondary meaning is the consumers' association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991) (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the marks use. Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp. 2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).”
Much of the law in this area is derived from the 2nd Circuit's decision in Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217. The Court in finding for the Complainant in its claim for trademark infringement set out in some detail the requirements for a common law trademark right:
“A mark acquires secondary meaning when “it [is] shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.”. Thus, the crux of the doctrine of secondary meaning “is that the mark comes to identify not only the goods but the source of those goods,” even though the relevant consuming public might not know the name of the producer. … Nonetheless, someone seeking to establish secondary meaning must show that the purchasing public associates goods designated by a particular mark with but a single--although anonymous—source [...]
The focus of secondary meaning therefore is the consuming public. Hence, so must be the inquiry into whether the mark owner has a protectible interest. Although the mark owner strives to create a secondary meaning for its product, it is the consuming public which, in effect, determines whether that effort has succeeded.
Again, it is not always the general public's understanding but--depending upon the product--often only a segment of consumers that need be examined. …
Moreover, it is only necessary to show that a substantial segment of the relevant group of consumers made the requisite association between the product and the producer.
[…] the elements utilized in determining whether secondary meaning had been created, noting that “no ‘single factor [was] determinative,' and [that] every element need not be proved… are (1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and, (6) length and exclusivity of the mark's use[…]
Of course, no absolute time span can be posited as a yardstick in cases involving secondary meaning […] Instead, the length and exclusivity of a mark's use is evaluated in light of the product and its consumers.”
So, the Complainant's name must have become distinctive through the acquisition of a secondary meaning. Secondary meaning is the consumer's association of the mark with a particular source or sponsor established out of long association of the name with the business whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favour of its meaning as a word identifying that business.
The relevant facts here are that the Complainant has been running a website for not quite three years as compared with the eight years in Centaur Communications, through which it provides vast amounts of material on incidents when dogs have bitten humans. It has issued about 70 press releases through the website (of which 28 or 29 would appear to have been published before the July 2009 acquisition by the Respondent of the “dogsbite.net” name. There are a number of media articles referring to the Complainant although many are quite recent. The Complainant also issues an annual newsletter.
The Complaint does not provide any details about the number of copies of the annual newsletter distributed by the Complainant. The Complaint also does not provide any details about the number of visits to, or “hits” on, the Complainant's website. Nor does the Complaint provide any details about the number of press releases or .pdf reports which have been downloaded from the Complainant's website or have otherwise been distributed by the Complainant.
The Panel also notes that some owners of the disputed domain name, <dogsbite.com>, before the Respondent acquired it used it for websites referencing materials or services relating to dog bites. Also, a Janis Bradley published a book in 2005 entitled “Dogs bite: but Balloons and Slippers are More Dangerous”. The cover has “Dogs Bite” prominently displayed above the rest of the title.
The purported mark DOGS BITE is decidedly lacking in inherent distinctiveness, as it is used by the Complainant to advise anyone who will pay heed that dogs bite (and hence are dangerous). The mark is, at best, merely descriptive of the services offered by the Complainant. Given the clear lack of inherent distinctiveness, it falls to the Complainant to prove that its purported mark has acquired distinctiveness. It is possible that at a full trial hearing with all the benefits of discovery and cross-examination, the Complainant might be able to establish itself as the owner of a common law right. On the record before it in this proceeding, however, the Panel is unable to conclude that the Complainant has met its burden in this case.
Accordingly, the Complainant has failed to prove rights in a trade or service mark and the Complaint must fail. There is no point in considering the other elements of this Complaint.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie | |
Adam Samuel | Robert A. Badgley |
Dated: Date: July 27, 2010