WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ProCPR, LLC v. Name Administration Inc. (BVI)
Case No. D2007-0823
1. The Parties
The Complainant is ProCPR, LLC, of Grand Rapids, Michigan, United States of America, represented by Price, Heneveld, Cooper, DeWitt & Litton, LLP, Grand Rapids, Michigan, United States of America.
The Respondent is Name Administration Inc. (BVI), of Grand Cayman, Cayman Islands, United Kingdom of Great Britain and Northern Ireland, represented by John Berryhill, Media, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <procpr.com> (the “Domain Name”) is registered with Domain Name Sales Corp.
3. Procedural History
The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2007. On June 6, 2007, the Center transmitted by email to Domain Name Sales Corp. a request for registrar verification in connection with the Domain Name. On June 7, 2007, Domain Name Sales Corp. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details.
On June 13, 2007, the Complainant filed an Amended Complaint. The Center verified that the Amended 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 Amended Complaint, and the proceeding commenced June 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was Sunday, July 8, 2007. A Response was received by the Center on Tuesday, July 10, 2007.
On July 12, 2007, the Complainant’s representative filed a further document, in which he submitted that the Response had been filed after the period of 20 days allowed by the Rules for filing a response, and should be rejected. The Complainant’s representative further submitted that the Respondent had made no request for an extension of time, nor put forward any reasonable explanation for the late filing (such as might have amounted to an “exceptional case” under Paragraph 5(d) of the Rules, or “exceptional circumstances” under Paragraph 5(e) of the Rules).
Later the same day (July 12, 2007), the Respondent’s representative filed a reply to the further submission of the Complainant’s representative. The Respondent’s representative asserted that “it has been a customary practice of the Center to accept submissions filed on the day succeeding a Sunday”, and referred to Oil Changer, Inc. v Name Administration, Inc., WIPO Case No. D2005-0530 as an example of a case where the Panel had “accepted without comment” a response which had been filed on the next succeeding business day after a Sunday filing deadline. The Respondent’s representative referred to his own practice of “regularly” submitting documents on the first Monday after a Sunday “last filing day”, saying that, before this case, that practice had never been challenged.
The Respondent’s representative further submitted that the Center has adopted a customary practice with regard to time zones, under which a document filed by email one minute before midnight on the last day for filing (with time reckoned in the location of the person filing the document), will be regarded by the Center as a timely filing, notwithstanding that the date of receipt by the Center in Geneva will be the day after the stipulated last filing date. In support of this alleged “unwritten rule”, the Respondent’s representative referred to Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445, and submitted that there would be no point in sending the document on a Sunday when the Center was not open for business on that day.
The Respondent’s representative also pointed to the fact that the Response was submitted before any Panel had been appointed, and submitted that accepting the Response would cause no detriment to the Complainant.
Additionally, the Respondent’s representative pointed out that the Center had accepted the Respondent’s payment for a three-member panel, so that the Center “has already decided this question as an administrative matter”. He concluded by submitting that he had been acting in good faith on the basis of his experience and his perception of the Center’s customary practice, and that in those circumstances it would be unduly prejudicial to the Respondent to refuse to consider the Response.
By written request dated July 18, 2007, the Complainant sought leave (in the event of the Response being admitted by the Panel), to file a Reply to the “unanticipated arguments and statements of fact” raised in the Response.
The Center appointed Warwick A. Smith, Sandra J. Franklin, and David E. Sorkin as panelists in this matter, on July 30, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted a 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 following facts appear from the Amended Complaint.
The Complainant was registered as a limited liability company in the State of Michigan, United States of America, on August 4, 2003. It provides cardio-pulmonary resuscitation and re-training certification services.
The Complainant does not claim to own any registered trademark or service mark rights in the expression “ProCPR”. The Complaint is based on alleged common law rights in that expression derived from the Complainant’s use of “ProCPR” in its business. In support, the Amended Complaint asserts that the Complainant has been using a PROCPR mark in connection with the promotion of its website at “www.procpr.org”, on printed materials, and on merchandise. The Complainant says that its services offered with the PROCPR trademark are primarily offered using the Internet.
The Amended Complaint says that the Complainant has been providing its “ProCPR” services since at least April 8, 2003. In support of that claim, the Complainant has produced as Exhibit “B” to the Amended Complaint, a “ProCPR Successful Completion Card”, which appears to have been issued to one Christina Colucci.
The reverse side of this card contains, in fine print, the following statement:
“Healthcare Provider Professional CPR covers primary treatments following national consensus guidelines (ECC) Emergency Cardiac Care Subcommittee 2005. American Heart Association® Guidelines for Cardiopulmonary Resuscitation and Emergency Cardiac Care, JAMA® 2005; 293:388 …. ProCPR, LLC maintains the highest standards requiring participants to utilize honest, moral, and professional judgment … in order to re-certify via ProCPR.”
On the front of this “ProCPR Successful Completion Card”, beneath a statement to the effect that Ms. Colucci has completed the CPR Recertification Course, appears the following:
“Date Issued: 04/08/2003 Renewal: 04/07/2004”
Nowhere does the Amended Complaint explain how someone could have received a certificate in 2003 for successful completion of a course which, in that same certificate, was said to follow national consensus guidelines which were apparently not issued until 2005.
Apart from the “ProCPR Successful Completion Card”, the Complainant has not produced any documents (e.g. invoices, letterhead, examples of advertising or media coverage, or similar material) showing how the Complainant has been using the expression “ProCPR” in the course of its business. Nor is there any evidence of the size of the Complainant’s business, the extent to which the expression “ProCPR” has been used in trade, or how much money the Complainant has spent advertising or promoting services it has offered by reference to any PROCPR mark.
The “ProCPR Successful Completion Card” itself does have what appears to be a “PRO CPR” logo mark in the top left hand corner, but a different, stylized use of the expression “ProCPR” appears immediately to the right of the apparent logo mark, and there is nothing (apart from the card, on which both stylized versions appear) to suggest either has been used consistently by the Complainant to distinguish its services from the services of others providing CPR training and certification (or re-certification).
The Respondent and the Domain Name
The Whois information provided by the Complainant shows that the Domain Name was registered or acquired on October 11, 2003.
The Complainant has annexed to the Amended Complaint certain extracts from the website to which the Domain Name resolves (“the Respondent’s website”). One of the web pages produced by the Complainant, headed “Health Links”, appears to have been printed on or after March 29, 2007. This web page contains a statement that the page was retrieved from a website at “www.webhealth.com”. The Panel has itself visited the Respondent’s website, and confirmed that the Domain Name does resolve to the website at “www.webhealth.com”. The Respondent’s website features the expression “webhealth” in the top left-hand corner, with a prominent logo consisting of four medical-style green crosses of differing sizes.
The web page from the Respondent’s website which the Complainant produced, contains numerous health-related links which are grouped under various headings such as “Heart Disease”, “Weight Loss”, “Eating Disorders”, and so on. There are “Related Links” under some 15 separate headings, and these appear to be health or emergency-related (e.g. ambulances, fire department, health and safety, medical jobs, safety equipment, etc).
The Respondent’s website offers a search facility, and the Complainant produced the results of its search on the expression “CPR”. The Complainant’s search produced three “hits”, one of which was a link to the Complainant’s own website at “www.procpr.org”. There were sponsored links to two other (apparently unrelated) websites offering CPR courses or training. (One of those search results indicated that the provider’s CPR training and certification available through its website was “2005 guideline compliant”.)
Beneath those sponsored search results, the Complainant’s search result form indicated that there was no page titled “CPR” on the Respondent’s website itself, nor any page text matches for “CPR”.
When the Panel visited the Respondent’s website, there were still no page title matches or page text matches for the expression “CPR” within the Respondent’s website. The sponsored results obtained by the Complainant appeared to have been deleted.
Finally, the Complainant has produced a graph covering the period from December 18, 2006 to June 12, 2007. The graph contains a statement “This source medium combination sent 2,037 visits.” It is not at all clear from the graph itself what it purports to show, but the Complainant asserts in the body of the Amended Complaint that this “tracking graph” shows that over 2,300 visits (to the Complainant’s website at “www.procpr.org”), were recorded for traffic originating at the Respondent’s website.
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
1.1 The Complainant has common law trademark rights in PROCPR arising from its use of that mark in commerce.
1.2 The Respondent’s use of the Domain Name is confusingly similar to the Complainant’s PROCPR trademark, for the following reasons:
1.2.1 The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s PROCPR mark as to the source, sponsorship, affiliation and endorsement of the Respondent’s website and the services on the Respondent’s website.
1.2.2 The Respondent’s use of the Domain Name is similar if not identical to the Complainant’s PROCPR trademark in appearance, sound, connotation, and commercial impression.
1.2.3 The Respondent is using the Domain Name for advertising and directing consumers to other healthcare-related Internet links, including CPR recertification services offered by the Complainant and others. The healthcare-related services listed on the Respondent’s website are so related to those of the Complainant as to cause confusion as to the source of the services used in connection with the Complainant’s PROCPR trademark.
1.2.4 The Respondent’s use of the Domain Name involves use of a channel of trade (the Internet) that is confusingly similar to that used by the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, for the following reasons:
2.1 The Respondent has not been commonly known by the Domain Name. The Respondent is in fact known under the trade name “WebHealth”, not “PROCPR”.
2.2 The Respondent makes no legitimate non-commercial use of the Domain Name.
2.3 The services offered by the Respondent in connection with the Domain Name are confusingly similar to the services offered by the Complainant in connection with its PROCPR mark. The services offered by the Respondent through the Respondent’s website consist solely of links to healthcare-related Internet sites. The Respondent generates revenue from the sponsored links.
2.4 Since the Respondent does not use the ProCPR name to identify its source of goods and/or services, it has no right or legitimate interest in that mark or in the Domain Name.
2.5 The Respondent is using the Domain Name in a manner damaging to the Complainant, and so as to divert Internet traffic from the Complainant.
3. The Domain Name was registered and is being used in bad faith:
3.1 The Respondent has been using the Domain Name as a means to cause confusion by advertising services confusingly similar to those offered by the Complainant through the Complainant’s website at “www.procpr.org”. The services offered by the Respondent through the Respondent’s website include services offered by competitors of the Complainant.
3.2 An increasing number of visitors have been redirected from the Complainant’s website to the Respondent’s website. That redirection of visitor traffic to and away from the Complainant, conclusively illustrates the Respondent’s improper use of the Complainant’s PROCPR mark and the Domain Name.
The Respondent’s contentions relating to the due date for filing its Response are summarized under the Procedural History section of this decision. In view of the Panel’s decision that the Complainant has failed to establish any rights in a PROCPR trademark or service mark, the Panel has not found it necessary to consider the Response.
6. Discussion and Findings
A. Procedural Issues
(i) Alleged Late Filing of Response
The Notification of Complaint and Commencement of Administrative Proceeding notified the Respondent that the last day for submitting a Response was July 8, 2007. That day was in fact a Sunday. The Respondent transmitted the Response on Monday, July 9, 2007, apparently from Pennsylvania in the United States of America. The Response was received by the Center on Tuesday, July 10, 2007 (Geneva time), being the second business day in Geneva after the stipulated last filing date.
In those circumstances, the Complainant has submitted that the Response is out of time, and should be rejected by the Panel.
In the event, it is unnecessary for the Panel to rule on the issue. That is because, for the reasons set out in sections 6C and 6D of this decision, the Panel is satisfied that the Complaint must be denied, regardless of whether the Response is admitted.
However, the Panel thinks it appropriate to say that it does not wish to be taken as “accepting without comment” the Respondent’s proposition that a response transmitted to the Center on the next succeeding business day following a filing deadline which falls on a Saturday, Sunday or public holiday in the country where a respondent is located, should necessarily be accepted as having been filed in time. Indeed, there seem to the Panel to be a number of arguments to the contrary.
First, there is no provision in the Policy or the Rules, or in the Supplemental Rules, that the stipulated last date for filing is automatically extended to the next business day if the last filing date happens to be a Saturday, Sunday, or public holiday in the country where the respondent resides or carries on business.
In this Panel’s view, it would have been a simple enough matter to include extension provisions in the Rules to accommodate “business days” or “working days” if such had been the intention of the framers of the Rules.
Secondly, the Policy and the Rules are ICANN documents, which are presumably intended to have uniform application regardless of where in the world the Provider or the parties may be located. Every day of the year is likely to be a public holiday in at least some country where a respondent may be located, and Saturday and Sunday may well be ordinary working days in some countries. Without attempting any detailed review or analysis, it seems to the Panel to be at least arguable that the framers of the Policy and the Rules have preferred to avoid the complexity or administration difficulties which would arise under any system which provided that the last date for filing a response would or might be extended by a day, depending on the domicile of the respondent in an individual case, and the status of that date in the particular respondent’s country of domicile.
If contrary arguments were accepted, the fact that the last day for a response fell on a Sunday or public holiday in the respondent’s country of domicile might be a factor to be taken into account in deciding whether exceptional circumstances existed, so that the response should be received. Other factors to be taken into account might include such matters as the length of delay after the last date for filing, any other reasons for the lateness, any prejudice to the Complainant, and (perhaps) whether any injustice would result if an otherwise meritorious response were excluded because it was filed, say, one day late. We mention those as examples of factors that might be relevant in a particular case, but of course each case is different, and it is not possible (nor, we think, necessary or desirable) to attempt to prescribe in advance what combinations of circumstances might or might not qualify as sufficiently “exceptional” to justify receipt of a late-filed response.
In the end, the arguments alluded to above are arguments to be resolved by another Panel on another day. We do not need to resolve them in this case, and we expressly refrain from so doing.
(ii) Complainant’s Request dated July 18, 2007, for Leave to File a Reply Brief
This request was made “in the event the selected Panelists consider the untimely Response submitted by the Respondent”.
In the event, the Panel finds that it is able to decide the Complaint without reference to the Response, and has elected to do so. In those circumstances, procedural fairness does not require that the Complainant be permitted to file a Reply. The Complainant’s conditional request for leave to do so is accordingly refused.
B. General Principles under the Policy
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
C. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant must prove that it has rights in some relevant trademark or service mark, and that the domain name is identical or confusingly similar to that trademark or service mark. In this case, the Complainant relies on alleged common law rights in the mark PROCPR, derived from the Complainant’s alleged use of that mark in the course of its business as a provider of CPR training, certification, and re-certification services.
In accordance with paragraph 4(a) of the Policy, the Complainant carries the onus of proving that it has such rights.
Proof of a Common Law Mark – Legal Considerations
(i) The Panel readily accepts that an individual or entity may in certain circumstances be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. To establish such a common law trademark, the Complainant must show that the claimed mark has achieved sufficient secondary meaning, or association with the Complainant. In Universal City Studios, Inc. v David Burns and Adam-12 Dot Com; WIPO Case No. D2001-0784, the three-member Panel said:
“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.”
The Panel in the Universal City Studios, Inc case held that, in assessing secondary meaning, a Panel should consider a variety of factors, including, but not limited to, the following:
(a) The Complainant’s advertising expenditures;
(b) Evidence of consumers linking the claimed mark to the claimed source (the Complainant);
(c) Evidence of any unsolicited media coverage of the product/claimed mark;
(d) Sales success;
(e) The length and exclusivity of the use of the mark.
(ii) The approach of the Panel in Universal City Studios, Inc was followed in a recent decision, Maritime-Ontario Freight Lines Limited v. Magic Domain (WIPO Case No. D2007-0202), where the Panel said:
“The Panel feels it should, nevertheless, reiterate its concern that where Complainants rely on establishing common law trademark rights, the onus is fair and square on the Complainant to provide adequate evidence to support such a finding. The factors identified in [the Universal City Studios, Inc case] provide a good guideline in that respect to Complainants and their legal advisers.”
(iii) Even if no response is filed in a proceeding under the Policy, the complainant must still furnish adequate proof of the rights on which it relies. Use of a mark sufficient to establish a secondary meaning of the kind described in the Universal City Studios, Inc. case is, to borrow the words of the panel in Brooke Bollea, a.k.a. Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383, “an objective matter entirely within the knowledge of and documentation available to a complainant.” The Panel in Brooke Bollea noted: “In this proceeding such proof from 2002 – if it exists – could have been found and submitted by Complainant without the need to obtain anything from Respondent … In these circumstances no favorable inference is justified from a naked allegation of a legal conclusion, even in the absence of a denial from Respondent.”
(iv) Where the claimed common law mark is a dictionary word, or descriptive expression, which is not inherently distinctive, the task of the Complainant in establishing the necessary proof of secondary meaning is that much harder. As the panel put it in the very recent three-member Panel decision in Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent), WIPO Case No. D2007-0515:
“Being a dictionary word, and not inherently distinctive, there is an onus on the complainant to present the Panel with compelling evidence of secondary meaning and distinctiveness through extensive use.”
Application of Legal Principles to the Facts of this Case
On the evidence produced by the Complainant, the Panel is not satisfied that the Complainant has proved that it has rights in any PROCPR mark. The Panel has come to that view, without reference to the Response, for the following reasons:
(i) The expression “CPR” is a well-understood English-language abbreviation for the life saving technique known as cardio-pulmonary resuscitation. Used on its own in the context of a business providing cardio pulmonary resuscitation training and certification, there is nothing remotely distinctive about “CPR”. The expression “Pro” is also a common English-language abbreviation, used to refer to someone who is a “professional” in some field of endeavor. Again, that appears to be precisely the sense in which the Complainant has been using “Pro” when it has used the expression “ProCPR”. The Complainant’s ProCPR Successful Completion Card makes it clear that the Complainant’s services are directed to healthcare provider professionals – the fine print on the reverse side of the card refers to “Healthcare Provider Professional CPR”, and also notes that the Complainant’s high standards require, amongst other things, “professional judgment” from participants in its courses.
On the face of it, then, the Complainant’s use of the expression “ProCPR” appears to be essentially descriptive of the training and certification services that the Complainant provides. Following the recent decision in Orbis Holdings Limited, “compelling” evidence of “extensive” use will therefore be required to prove the common law rights which the Complainant asserts.
(ii) The Complainant’s “ProCPR Successful Completion Card” does contain two stylized versions of “ProCPR”, which might or might not be figurative, or device marks. But it appears from the body of the Amended Complaint that the Complainant is asserting rights in ProCPR as a word mark – in the Amended Complaint, the Complainant says that “as seen in attached Exhibit C, Respondent’s website uses Complainant’s trademark …”. The Panel did not note the use of any figurative, or device PROCPR mark in Exhibit C to the Amended Complaint: there is just the use of the letters “procpr”, apparently as part of the click-on link to the website at “www.procpr.org”.
(iii) Looking at the “secondary meaning” factors identified in the Universal City Studios, Inc. case, there is no evidence at all of any of the following:
1. The Complainant’s advertising expenditures.
2. Any unsolicited media coverage of the Complainant’s services.
3. The extent of the Complainant’s sales made under a PROCPR mark.
(iv) In the Panel’s view, the Complainant’s evidence relating to its length of use of the expression “ProCPR” in the course of its business, is unreliable and inadequate. First, although the Complainant says that its business is conducted primarily through the Internet, the Panel has not been told when the Complainant established its website at “www.procpr.org”. Secondly, the “ProCPR Successful Completion Card” provides no reliable evidence as to when the Complainant may have commenced using the expression “ProCPR” in the course of its business. Although the certificate was apparently intended to provide evidence that the Complainant has been using a PROCPR trade mark since at least April 8, 2003, it seems clear from the standard form wording on the certificate itself that the document would not have come into existence until 2005 or later. The Complainant has not provided any explanation for the insertion of 2003 and 2004 dates on a form of certificate which, on its face, would not have been in existence in those years.
(v) The last of the five indicators of secondary meaning referred to by the panel in Universal City Studios, Inc. was evidence of “consumer linking of the mark to the source”. In this case, there is some evidence of Internet traffic being directed from the Respondent’s website to the Complainant’s website at “www.procpr.org”, but for at least some period there was on the Respondent’s website a sponsored link to the Complainant’s website. (Exhibit C to the Amended Complaint shows that, when the Complainant conducted its search on the Respondent’s website on the expression “CPR”, there were three sponsored links to sites providing CPR classes or training, one of which was a link to the Complainant’s website.) In the Panel’s view, the fact that numerous website visitors to the Respondent’s website may have clicked on the sponsored link “www.procpr.org”, does not in itself provide any useful evidence that those website visitors necessarily regarded the essentially descriptive expression “ProCPR” as distinctive of the particular services offered by the Complainant.
For all of the foregoing reasons, the Panel is of the view that the Complainant has failed to establish rights in any PROCPR trademark or service mark, and the Complaint must therefore fail.
D. Registered and used in Bad Faith
Having regard to the Panel’s finding under paragraph 4(a)(i) of the Policy, it is not strictly necessary for the Panel to make any findings under either paragraph 4(a)(ii) or paragraph 4(a)(iii) of the Policy. However for completeness, the Panel records that, in its view, the Amended Complaint did not contain sufficient evidence that the Domain Name was registered by the Respondent in bad faith. The Respondent’s place of business appears to be in the Cayman Islands, and the Complainant does not claim to be the proprietor of a registered PROCPR mark there, or indeed anywhere. There is no evidence of when the Complainant established its website at “www.procpr.org”, and no reliable evidence of when it first used the expression “ProCPR” in trade. The expression “ProCPR” appears, from such evidence as has been provided in the Amended Complaint, to be essentially descriptive of the Complainant’s services.
Having regard to the foregoing, there is nothing to establish that, back in October 2003 when the Domain Name was registered, the Respondent was or should have been aware of any use the Complainant may by then have made of the expression “ProCPR”. In the absence of evidence that the Respondent was probably aware of the Complainant as the owner of a PROCPR mark in October 2003 when the Domain Name was registered, there is no basis for a finding that the Respondent acted with any bad faith animus directed towards the Complainant when it registered the Domain Name.
For all the foregoing reasons, the Complaint is denied.
Warwick A Smith
Sandra J. Franklin
David E. Sorkin
Dated: August 13, 2007