The Complainant is Hazelden Betty Ford Foundation, United States of America (“United States”), represented by Fredrikson & Byron, PA, United States.
The Respondent is My Way Betty Ford Klinik GmbH & Co. KG, Germany, represented by Rechtsanwälte Bettinger Scheffelt Müller Partnerschaft mbB, Germany.
The disputed domain name <mywaybettyford.com> is registered with Mesh Digital Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2019. On September 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2019, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. On September 30, 2019, the Center received a request for extension from the Respondent. Pursuant to paragraph 5(b) of the Rules, the Response due date was extended to October 5, 2019. The Response was filed with the Center on October 5, 2019.
The Center appointed Adam Taylor, Lorelei Ritchie, and Thomas M. Legler as panelists in this matter on October 23, 2019. 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.
The Complainant and the Respondent submitted unsolicited supplemental filings on October 25, 2019, and October 31, 2019, respectively.
The Complainant has provided alcohol and drug addiction treatment in the United States for some 70 years.
Some 40 years ago, the Elizabeth B Ford Charitable Trust (“the Betty Ford Trust”) granted to the Complainant the exclusive right to use various trade marks reflecting the name “Betty Ford” (“the Betty Ford Marks”) including United States Trade Mark No. 2888,436 for “BETTY FORD CENTER”, filed on April 4, 2003, registered on September 28, 2004, in class 41. This trade mark claims a first use date of October 4, 1982. The Betty Ford Trust has also authorised the Complainant to file this UDRP proceeding.
On May 29, 2005, a German company called My Way GmbH & Co. KG (“the German Licensor”) licensed the Respondent to operate an addiction clinic in Germany under the name “My Way Betty Ford Klinik” based on a concept of that name which had been developed by the German Licensor (“the German Licence”).
In 2006, the Respondent set up an addiction treatment center in Germany called “My Way Betty Ford Klinik”. The Respondent promoted its clinic via websites at <mywaybettyford.de> and <my-way-bettyford.de>. Both of these domain names were owned by the German Licensor.
On October 10, 2006, the German Licensor applied for a German registered trade mark for “MY WAY BETTY FORD KLINIK”, which was subsequently registered on February 5, 2007, in classes 41, 43, and 44 (“the German Trade Mark”).
On December 17, 2008, by means of an addendum to the German Licence, the German Licensor licensed the Respondent to use the German Trade Mark.
In 2012, the Respondent and the German Licensor fell out and became embroiled in a series of lawsuits. The German Licensor warned the Respondent that it would no longer permit it to use the domain names <mywaybettyford.de> and <my-way-bettyford.de>, including for email.
The Respondent registered the disputed domain name on May 25, 2012.
In October 2012, the German Licensor gave notice to terminate the German Licence.
On November 28, 2012, the Respondent approached the Complainant, saying that it would be “interested to use not only the trademark and name of Betty Ford but also the Betty Ford concept” and that it was “generally interested in cooperation with [the Complainant].”
On February 1, 2013, the Respondent and the German Licensor entered into a separation agreement whereby the German Licence would be terminated on June 30, 2015, and the Respondent would cease to use the name “My Way Betty Ford” as a company name, trade mark, and domain name within 30 days thereafter.
In March 2013, the Respondent visited the Complainant in California. There followed some correspondence between the parties, in the course of which the Respondent told the Complainant that it had terminated the German Licence as of June 30, 2015, partly because the German Licensor had granted the German Licence and registered the German Trade Mark without the Complainant’s consent and that the Respondent had to prepare a new brand unrelated to “Betty Ford” by then. The correspondence culminated in a letter from the Complainant dated April 8, 2014, rejecting the Respondent’s request for a licence and stating that it was relying on the Respondent’s representation that the Respondent would change its name as of July 1, 2015.
On September 1, 2014, the Respondent acquired the shares in the German Licensor for a purchase price of EUR 1.1 million. At that time the German Licensor owned the German Trade Mark as well as International Trade Mark No. 925332 for MY WAY FORD BETTY FORD KLINIK designating the European Union (amongst others), registered February 28, 2007, in classes 41, 43, and 44 (“the International Mark”).
As of August 5, 2019, there was a website at the disputed domain name promoting the Respondent’s clinic. Amongst other things, the website referred to its “40 years of experience with proven Betty Ford therapy” and stated that its therapy concepts are based on those of the Complainant.
A summary of the Complainant’s contentions is as follows.
Through almost 40 years of continuous use and substantial investment in the Betty Ford Marks, people worldwide associate them with the Complainant. The Complainant’s addiction treatment services have received a great deal of media attention, including in Germany.
The disputed domain name is identical or, at the least, confusingly similar to the Betty Ford Marks.
The disputed domain name incorporates the dominant element of the Betty Ford Marks and is highly likely to cause confusion.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has never authorised the Respondent to register or use the disputed domain name or to provide any goods or services for the Complainant, which is unconnected with the Respondent. The unauthorised registration of the Complainant’s trade mark in the disputed domain name undermines any claim of bona fide use under the Policy.
The Respondent, and other infringers such as the German Licensor, chose the disputed domain name precisely because of the Complainant’s reputation. The Complainant’s trade mark consists of a unique phrase which the Respondent has no legitimate reason to use.
The disputed domain name was registered and is being used in bad faith.
The Respondent registered the disputed domain name to create a likelihood of confusion in accordance with paragraph 4(b)(iv) of the Policy.
Based on the parties’ discussions, it is clear that the Respondent knew that it was not authorised to use the Betty Ford Marks or to claim to be affiliated with the Complainant in any way.
Despite this, the Respondent has actually expanded its use of the name. Its website employs terminology which implies that it is affiliated with the Complainant and it also uses a colour scheme strikingly similar to that used on the Complainant’s website.
Since October 2018, the Complainant has received at least three communications from people who thought that the Respondent and the Complainant were the same or somehow affiliated.
The Respondent clearly registered the disputed domain name in bad faith, intentionally to profit from its unauthorised use of the Betty Ford Marks.
Moreover, bad faith may be inferred where, as here, the Complainant has a significant reputation in a mark which has strong similarities to the disputed domain name. Previous UDRP panels have found that the Complainant is internationally recognised as a preeminent rehabilitation center and that its name is highly distinctive of its business.
A summary of the Respondent’s contentions is as follows.
The disputed domain name is not confusingly similar to the Complainant’s trade mark. Confusing similarity under the first element involves a side-by-side comparison, not assessment of actual confusion. The addition of “myway” and omission of “Center” is sufficient to distinguish the disputed domain name from the Complainant’s trade mark. The name “Betty Ford” has only a low distinguishing capacity as it is a common name and there is no evidence of acquired distinctiveness. The words “My Way” do have a distinguishing capacity.
The Respondent possesses rights and legitimate interests in the disputed domain name by virtue of the German Trade Mark and the International Trade Mark, in respect of which it was an authorised licensee at the time of registration of the disputed domain name and which the Respondent now owns. It is not for the Panel to challenge the validity of such trade marks, that co-exist with the Complainant’s rights in the United States.
Furthermore, the Respondent has acquired exclusive rights in its company name through continuous use as a company name under German law.
If the Complainant takes the view that the Respondent’s use of its name in Germany infringes its United States trade mark rights, it will have to address this in court. UDRP panels have declined to make findings where the scope of the dispute falls outside the narrowly-defined parameters of the UDRP.
Furthermore, the Respondent has used the disputed domain name in connection with a bona fide, legitimate business activity, namely operation of its addiction clinic under the name “My Way Betty Ford” for over 13 years.
The fact that the Respondent was aware of the Complainant’s brand in the United States does not mean that the Respondent’s own offering in Germany is not bona fide.
The Respondent never undertook to cease using its trade mark and company name and to rebrand under a different name.
For reasons stated above, the Respondent has not registered and used the disputed domain name in bad faith.
None of the provisions of paragraph 4(b)(i)–(iv) of the Policy are applicable in this case.
The Respondent registered the disputed domain name because it corresponded with its trade mark and company name that it had used for more than six years and in the context of the German Licensor’s threat to disconnect its existing domain names.
At no time during the discussions, did the Complainant express the view that the Respondent’s name infringed the Complainant’s registered trade mark or request that the Respondent to stop using its name.
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Both parties have made unsolicited supplemental filings.
Section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that UDRP panels have repeatedly affirmed that the party submitting an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response, e.g., owing to some “exceptional” circumstance.
In this case, the Panel has decided to accept those parts of the Complainant’s supplemental filing which address the issues of jurisdiction and language as these could not reasonably have been anticipated in the Complaint. The Panel declines to admit the rest of the filing as it largely consists of standard rebuttal.
The Panel declines to admit the Respondent’s supplemental filing as this either responds to the disallowed parts of the Complainant’s supplemental filing or constitutes standard rebuttal.
The Panel would add, however, that admission of any of the disallowed material in either supplemental filing would not have altered the outcome of this case.
As a preliminary matter, the Respondent contends that the UDRP was not contractually incorporated into its contract with Internet24.de GmbH, through whom the Respondent registered the disputed domain name. The Respondent adds that it never accepted any subsequent contract incorporating the UDRP, either with the company that acquired Internet24.de GmbH or with any registrar for the disputed domain name.
The Complainant responds that the Respondent is bound by the UDRP because it renewed, or at least did not object to renewal of, the disputed domain name via companies whose registration agreements did require submission to the UDRP.
The Panel has decided, however, that it is not necessary for it to reach a conclusion on jurisdiction in view of its decision under section 6D below. For the time being therefore, the Panel will proceed on the assumption that the disputed domain name is subject to the UDRP.
The Complaint has been submitted in English.
Paragraph 11 (a) of the Rules provides that, unless otherwise agreed by the parties, or specified otherwise in the registration agreement for the disputed domain name, the language of the administrative proceeding shall be the language of the registration agreement. This is subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
The Respondent has submitted the Response in English but contends that German should be the language of the proceeding, principally because the original registration agreement was in German and the Respondent never subsequently agreed to any registration agreement in English.
The Complainant says that the Panel should exercise its discretion and conduct the proceedings in English on the grounds that (1) the disputed domain name consists of English words; (2) the Respondent’s website, pre-action correspondence and Response all indicate that the Respondent has a strong command of English; (3) the Complainant does not speak or read German; (4) the Respondent renewed the domain name with the current and previous registrar whose registration agreements are in English; and (5) the Complainant would be prejudiced in terms of cost and delay if the proceeding were in German whereas the Respondent has not put forward any credible argument that it would be harmed if the proceeding were conducted in English.
Bearing in mind the factors in section 4.5.1 of WIPO Overview 3.0, and for the reasons given by the Complainant, the Panel has decided to accept the Complainant’s contention that English should be the language of the proceeding. In the Panel’s view it would cause unnecessary delay and cost to require the Complainant to translate the Complaint into German. Whereas it is plain that the Respondent is comfortable communicating in English – at least through its representative.
However, the Panel has also decided not to require the Respondent to translate its multiple German exhibits into English. First, the Complainant has not requested this. Second, the Panel is satisfied that translating the documents will not cause the Panel to alter its conclusion expressed in section 6D below.
The Panel has decided to deny the case, not on the merits, but on the narrow grounds that it is a complex business dispute that exceeds the relatively limited “cybersquatting” scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction – see section 14.4.6 of WIPO Overview 3.0.
The level of detail set out in the factual summary in section 4 above itself gives an indication that facts are far from straightforward.
For example, the dispute between the parties extends beyond the disputed domain name itself to the Respondent’s use of the name “My Way Betty Ford Klinik” for its clinic in Germany which began some six years before the Respondent registered the disputed domain name. To assess bad faith therefore, the Panel would need to take into account – in the context of the German Licence - the Respondent’s state of mind when it first set up its clinic back in 2006.
It is likely that the Panel would also need to consider the dispute between the Respondent and the German Licensor which led up to the registration of the disputed domain name in 2012, as well as subsequent developments including termination of the German Licence and the circumstances whereby the Respondent ultimately acquired the German Licensor and its trade marks.
Also potentially relevant are the Respondent’s detailed licence-related communications / negotiations with the Complainant in 2012 – 2014.
In the Panel’s view, the UDRP is not an appropriate process to adjudicate on a complicated business dispute like this. For example, the Panel does not have the benefit of witness testimony, disclosure of documents or the other tools that are typically available to assist a court.
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Presiding Panelist
Lorelei Ritchie
Panelist
Thomas M. Legler
Panelist
Date: November 5, 2019