WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet
Case No. D2007-0875
1. The Parties
Complainant is Foundation Source Philanthropic Services, Inc., 55 Walls Drive, Fairfield, Connecticut, United States of America, represented by Hinckley, Allen & Snyder, LLP, United States of America.
Respondent is Arlene B Gibson/Foundations That Make a Difference/Domain Discreet, Bend, Oregon, United States of America, represented by FW Farleigh Witt, United States of America.
2. The Domain Name and Registrar
The disputed domain name <foundationsource.org> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2007. On June 15, 2007, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On June 15, Register.com transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 19, 2007, providing the underlying registrant and contact information disclosed by the Registrar, and requesting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 27, 2007. The Center verified that the Complaint together with the amendment to the 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”).
The Amendment to Complaint transmitted by Complainant on June 27, 2007, in addition to addressing new information concerning the identity of Respondent, included information concerning changes to Respondent’s website that immediately followed Complainant’s initial transmittal of the Complaint to the Center and to Respondent’s domain name privacy service.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2007.
By email of July 30, 2007, Respondent advised the Center that she had received its notification of July 6, 2007 regarding commencement of the proceedings, and believed that she had 30 days from that date to file her response. She requested an extension of the date for filing a response. By email of August 1, 2007, the Center advised Respondent that the Rules specify a 20-day period for filing a response (Rules, paragraph 5(a)). Based on the Rules, Respondent had been notified of her default. However, the Center also noted that Respondent might proceed to file a response and that, consistent with past practice, the Center would bring it to the attention of the Panel. No further submission was received from Respondent at this stage.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 7, 2007. 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.
Following its initial review of the case file, in which the Panel noted Complainant’s reliance on its registration of FOUNDATION SOURCE on the Supplemental Register of the United States Patent and Trademark Office (USPTO), as well on common law rights, the Panel issued its Administrative Order No. 1, which stated as follows:
“Complainant has asserted rights in the service mark FOUNDATION SOURCE and has furnished evidence of registration of that term on the Supplemental Register of the United States Patent and Trademark Office (USPTO). Complainant has not indicated the reason for registration of the asserted service mark on the Supplemental Register rather than on the Principal Register. Registration of a term on the Supplemental Register implies that an applicant was unable to demonstrate secondary meaning in the term (see Thomas McCarthy, McCarthy on Trademarks, 4th ed. May 2007, §19:37). A term registered on the Supplemental Register may be generic (id., at §19:36).
Complainant is requested to provide information regarding the circumstances under which it registered the term “foundation source” on the Supplemental Register of the USPTO. It should address whether the term “foundation source” standing alone is generic or commonly descriptive of the services provided by Complainant.
Complainant has a period of 5 calendar days (up and until August 26, 2007) from the date of this Administrative Order in which to respond to this request. The Panel will give due consideration to a request from Respondent to reply to a supplemental submission from Complainant. The parties will be advised of a revised date for the Panel’s decision in due course.”
There commenced a series of communications from Complainant and Respondent to the Center and Panel regarding negotiations toward a settlement of their dispute. The parties mutually requested suspensions of this proceeding to allow those negotiations to reach a conclusion, and the Panel authorized such suspensions.
Following one unsuccessful period of negotiations, the Panel instructed Complainant to respond to Administrative Order No. 1, and Complainant transmitted its Response to Order No. 1 on October 1, 2007. Respondent provided a Response to Complainant’s supplemental response on October 6, 2007.
On November 19 and 20, 2007, Complainant and Respondent each advised the Center and Panel that negotiations had failed to reach a satisfactory conclusion, and requested the Panel to render a determination. The Panel has accepted the renewed charge of the parties, and its determination follows.
4. Factual Background
Complainant has registered the word service mark FOUNDATION SOURCE on the Supplemental Register of the USPTO, registration number 2,679,235, dated January 21, 2003 (filing date October 9, 2001), in International Class (IC) 35, covering business management and consulting, business administration in the field of charitable foundations and computer database management, claiming date of first use and first use in commerce of September 11, 2001 (Complaint, Annex G). Complainant has registered FOUNDATION SOURCE CLIENT SERVICES on the Supplemental Register (id.). Complainant has registered FOUNDATION SOURCE REQUESTS on the Principal Register (reg. no. 3,010, 216), disclaiming exclusive right to use FOUNDATION and REQUESTS apart from the mark as shown, and has registered FOUNDATION SOURCE BACK-OFFICE on the Principal Register (reg. no. 3,010,141), disclaiming exclusive right to use “BACK-OFFICE” apart from the mark as shown.
By its Administrative Order No. 1, the Panel requested Complainant to provide information concerning the circumstances which led it to register FOUNDATION SOURCE on the Supplemental Register as distinguished from the Principal Register. Leaving aside the legal arguments that accompanied Complainant’s reply, on October 1, 2007, Complainant stated, “At the time Complainant filed its application for the mark FOUNDATION SOURCE it did not submit arguments of acquired distinctiveness because its application was filed only one month after Complainant began using the trademark. Typically marks acquire distinctiveness over a longer period of use. Nonetheless, Complainant had acquired distinctiveness as of the date of the registration and use of the disputed domain name.” (Response to Order No. 1)
On October 1, 2007, Complainant further indicated that it had applied for registration of FOUNDATION SOURCE on the Principal Register of the USPTO (Ser. No. 77/183,492). Complainant stated “The Trademark Office has not objected to this registration on the grounds that it is merely descriptive nor has the Trademark Office requested a declaration of acquired distinctiveness.” (Response to Order No. 1)
In Respondent’s Response to Complainant, Respondent noted that the USPTO had required a disclaimer of the term FOUNDATION in Complainant’s pending application for registration of FOUNDATION SOURCE on the Principal Register. On December 3, 2007, the Panel conducted a search of the USPTO TARR database with respect to Complainant’s application for registration of FOUNDATION SOURCE on the Principal Register. That application was filed on May 17, 2007. On September 18, 2007, the USPTO transmitted an Office Action to Complainant, refusing the application as presented, and requesting Complainant to disclaim exclusive right to use the term FOUNDATION apart from the mark as shown “because it merely describes a feature or function of applicant’s services”. On November 16, 2007, Complainant responded to the Office Action by asserting that the term FOUNDATION had acquired distinctiveness “through the Applicant’s substantially exclusive and continuous use of said term in commerce for at least five years immediately preceding the date of this Statement”, and submitting a declaration by Complainant’s Chief Operating Officer. On November 28, 2007, the USPTO transmitted a further Office Action to Complainant. The examiner rejected Complainant’s assertion of acquired distinctiveness for the FOUNDATION term, continuing to refuse registration of FOUNDATION SOURCE without disclaimer of FOUNDATION. The examiner noted that acquired distinctiveness of a term may not be based on ownership of a registration on the Supplemental Register.
Complainant registered the domain name <foundationsource.com> on August 27, 2001, and has operated a website at this address since at least as early as November 2001.
Complainant has submitted substantial evidence of present use of the term FOUNDATION SOURCE in commerce in the United States. This includes printouts from Complainant’s website which is prominently headed with that term. Complainant has provided brochures that describe the operation of its business using FOUNDATION SOURCE as the principal identifying symbol. Complainant asserts, without contradiction from Respondent, that Complainant provides charitable foundations with a variety of back-office services, including those related to administrative support, consulting, tax, regulatory and financial reporting, grant making and other services. Many of these services are “web-based”. Complainant indicates that at the end of fiscal year 2006, it had over $2 billion in foundation assets under administration, and that it supports over 500 private foundations. Complainant indicates that it has used the term FOUNDATION SOURCE as its identifying mark since at least as early as September 2001. Complainant further indicates that its “www.foundationsource.com” website today receives over 160,000 hits per month. Complainant is not itself a foundation or charitable organization. It is a private company.
According to the Registrar’s Verification Report, Respondent is the registrant of the disputed domain name <foundationsource.org>. According to that report the record of registration for the disputed domain name was created on November 22, 2005.
As of June 8, 2007, the disputed domain name directed Internet users to a web portal headed with <Foundationsource.org>, and providing search capability with “Top Searches” identified as “Charitable Giving”, “Christian Non-profit”, “Employment Opportunities”, “Training Software” and “Charity Donation”. “Recommended Listings” include “Bill Gates Scholarships”, “Fund Raiser” and “Childrens [sic] Charities”. Clicking through on links provided by the web portal and/or by resulting search results directs Internet users to direct competitors of Complainant, including firms which support grant-writing and foundation startup services. (Complaint, Annex I)
Complainant indicates that it had contacted Respondent prior to filing its initial Complaint in this proceeding and that Respondent had not been amenable to ceasing her activities. After Complainant’s initial contact, registration data for the disputed domain name was changed by Respondent to refer to a domain name privacy service, Domain Discreet.
Complainant indicates that the content of Respondent’s website changed the day following its initial filing of the Complaint in this proceeding. As of July 6, 2007, Respondent’s home webpage is headed “Foundations That Make A Difference”, and includes a description of a resource for individuals and organizations “that want to make a difference in the world”. It states, “FTMD offers a variety of support resources and information to benefit your non-profit organization’s or individual needs.” The website describes the qualifications of Respondent, “With over 15 years of legal, nonprofit programming, development and executive leadership experience”.
The Registration Agreement in effect between Respondent and Register.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts rights in the service mark FOUNDATION SOURCE and various FOUNDATION SOURCE-formative marks. Complainant bases its rights in FOUNDATION SOURCE on long use in commerce, including on the Internet. Complainant evidences its use of FOUNDATION SOURCE by registration of that term on the Supplemental Register of the USPTO. Complainant asserts that FOUNDATION SOURCE is inherently distinctive. Complainant also argues that it initially chose to register FOUNDATION SOURCE on the Supplemental Register because it had not used the term in commerce for a significant period of time when it submitted its application. Complainant further argues that the FOUNDATION SOURCE acquired distinctiveness prior to the date when Respondent registered the disputed domain name.
Complainant asserts rights in various FOUNDATION SOURCE-formative marks, including FOUNDATION SOURCE REQUESTS and FOUNDATION SOURCE BACK-OFFICE, based on use in commerce and as evidenced by registration on the Principal Register of the USPTO. Complainant asserts rights in these FOUNDATION SOURCE-formative marks prior to the date when Respondent registered the disputed domain name.
Complainant argues that the disputed domain name is identical or confusingly similar to its FOUNDATION SOURCE family of marks. Complainant argues that the disputed domain name is identical or confusingly similar to the common law FOUNDATION SOURCE mark, and is confusingly similar to the registered FOUNDATION SOURCE-formative marks.
Complaint contends that Respondent lacks rights or legitimate interest in the disputed domain name. It asserts that the disputed domain name does not comprise the legal name of Respondent nor has it otherwise been used to identify Respondent. It argues that Respondent did not make use of the disputed domain name for a bona fide offering of services prior to notice of a dispute, and has not made legitimate non-commercial or fair use of the disputed domain name. Complainant refers to previous administrative panel decisions that have rejected the type of “link farm” established by Respondent as establishing rights or legitimate interests in a domain name. Complainant further argues that Respondent’s change to her website subsequent to the initiation of this proceeding is not evidence of rights or legitimate interests. Complainant states that it has not authorized Respondent to use its service mark. Complainant further notes that Respondent’s changes to new webpage content do not establish rights or legitimate interests because Respondent now portrays herself as a direct competitor of Complainant.
Complainant asserts that Respondent registered and has used the disputed domain name in bad faith. Complainant argues that Respondent’s “link farm” website creates confusion among Internet users regarding Complainant as source, sponsor, affiliate or endorser of Respondent’s website. In addition, Complainant argues that Respondent presumably receives a commission for Internet user click-through of the links.
Complainant further argues that because Respondent has directly incorporated its service mark in the disputed domain name, “it can be inferred that Respondent had actual knowledge of Complainant’s rights in its FOUNDATION SOURCE name and mark when it registered its <foundationsource.org> domain name”.
Complainant refers to various previous administrative panel decisions in support of its positions.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that she had a prior right to register and use the domain name as of the date of registration because Complainant has not shown that the FOUNDATION SOURCE “term acquired distinctiveness or a secondary meaning as of the date of registration”. Respondent argues that cases cited by the USPTO focus on periods of 18 and 16 years for acquiring distinctiveness, and that the USPTO recognizes a default term of at least five years to acquire distinctiveness. Respondent argues that Complainant had not used the FOUNDATION SOURCE term for a sufficiently long period when Respondent registered the disputed domain name.
Respondent argues that FOUNDATION, SOURCE and FOUNDATION SOURCE are all descriptive terms, and that Complainant has been required to disclaim exclusive use of FOUNDATION in its registrations of FOUNDATION SOURCE-formative terms on the Principal Register. Respondent observes that it is “common practice in United States federal service mark matters to use registration on the Supplemental Register for marks that are incapable of registration on the Principal Register. In the present case, we submit that Complainant used this form of registration because its mark is incapable of registration on the Principal Register due to its descriptiveness.”
Respondent argues that even if FOUNDATION SOURCE has today acquired distinctiveness, “there is no evidence that this occurred before Respondent registered the domain name. Distinctiveness arising after the domain name registration, if acquired at all, is simply not relevant to the matter.”
Respondent requests the Panel to reject Complainant’s request to direct the Registrar to transfer the disputed domain name.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
Respondent indicated that she received notice of the initiation of this proceeding from the Center on the date of transmittal, although she appeared to have been under a misimpression regarding the due date for filing a Response. The Center indicated that it remained open to her to file a responsive pleading, and that the practice of the Center would be to forward that pleading to the Panel. Respondent did not avail herself of that opportunity. Respondent had opportunity to file a further submission, and she did so. Respondent’s decision to limit the scope of argumentation in her pleading was within her control. The Panel is satisfied that the parties had adequate notice of this proceeding and an opportunity to present their respective positions.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Identical or Confusingly Similar; Registered and Used in Bad Faith
Complainant asserts rights in the word service mark FOUNDATION SOURCE, and in several FOUNDATION SOURCE-formative marks.
With respect to the two FOUNDATION SOURCE-formative marks (i.e., FOUNDATION SOURCE REQUESTS and FOUNDATION SOURCE BACK-OFFICE) registered on the Principal Register of the USPTO, Complainant enjoys a presumption of validity. Respondent has not contested the validity of these FOUNDATION SOURCE-formative marks. However, Respondent does not accept that these marks are confusingly similar to the disputed domain name.
The validity of the FOUNDATION SOURCE-formative marks is not material to the Panel’s determination in this proceeding. Complainant is seeking a finding that the disputed domain name <foundationsource.org> is identical or confusingly similar to its family of service marks. However, the disputed domain name is identical for purposes of the Policy to a combination term, FOUNDATION SOURCE, which Respondent argues is commonly descriptive and incapable of secondary meaning or, alternatively, is descriptive (and capable of secondary meaning), but which did not acquire secondary meaning until after Respondent registered the disputed domain name. If the term FOUNDATION SOURCE is commonly descriptive, Complainant cannot assert exclusive rights to it by establishing rights in a different combination term (e.g., FOUNDATION SOURCE BACK-OFFICE), and thereafter assert rights in a short form of the different term. If that were possible, the fundamental trademark law principle that common descriptive terms should be reserved for public use could be readily defeated by the simple expedient of registering distinctive combination terms and claiming common descriptive terms through the back door. In order to prevail in this proceeding, Complainant must establish rights in FOUNDATION SOURCE that predate Respondent’s registration of the disputed domain.
Complainant registered FOUNDATION SOURCE on the Supplemental Register of the USPTO in January 2003. As the Panel noted in its Administrative Order No. 1, registration on the Supplemental Register implies that the applicant could not demonstrate that the claimed term was distinctive (see Thomas McCarthy, McCarthy on Trademarks, 4th ed. May 2007, §19:37). Registration on the Supplemental Register establishes no presumption as to the validity of a mark. While the USPTO does not register marks on the Supplemental Register which it considers to be generic, the fact of registration on the Supplemental Register does not establish a presumption that marks are not generic. As McCarthy observes: “the fact that a term is registered on the Supplemental Register does not entitle it to any statutory presumption that the term is a trademark and not a generic name: ‘In fact, it is not prima facie evidence of anything except that the registration issued’“ (id., at §19:37, footnote omitted).
As recently as one week ago, an Examining Attorney at the USPTO reaffirmed her determination that the term FOUNDATION is highly descriptive of Complainant’s services, requiring that Complainant disclaim exclusive use of that term as a condition to registration of FOUNDATION SOURCE. The examiner further stated that five years of use by Complainant was insufficient to show acquired distinctiveness for FOUNDATION. Additional evidence is needed. In its initial application for registration of FOUNDATION SOURCE on the Principal Register, Complainant had submitted web pages similar to those that it submitted in this proceeding as evidence of rights in the mark. It has also submitted a declaration by its Chief Operating Officer regarding use of the term FOUNDATION as part of FOUNDATION SOURCE, and stating his belief that the term had acquired secondary meaning. The examiner has continued to refuse registration of the combination term FOUNDATION SOURCE unless Complainant accepts to disclaim exclusive rights to use the term FOUNDATION other than in the mark as shown.
What the USPTO Examining Attorney has not determined is that the combination term “FOUNDATION SOURCE” is incapable of acquiring secondary meaning, or that Complainant has failed to adequately demonstrate secondary meaning. In fact, it appears that the USPTO is prepared to register the combination term on the Principal Register if Complainant will accept to disclaim exclusive rights to FOUNDATION standing alone.
It appears, despite Complainant’s argument to the contrary, that the term FOUNDATION SOURCE is descriptive of a provider of information to or about “foundations”. “Foundation” is defined as “an organization or institution established by endowment with provision for future maintenance”.1 “Source” is defined, inter alia, as “one that supplies information”.2
The Panel considers that FOUNDATION standing alone is generic or commonly descriptive, and is not capable of acquiring secondary meaning. FOUNDATION is generic for a form of legal entity, and no single person or enterprise may acquire exclusive rights to use that term standing alone in connection with the type of enterprise it identifies.
However, although the matter is not beyond doubt, the Panel is not persuaded that FOUNDATION SOURCE in combination is commonly descriptive or generic, and therefore incapable of acquiring secondary meaning. It is a combination of terms that does not so specifically describe a particular thing or service that granting exclusive rights to a single enterprise would create a material impediment to commerce or public discourse. Moreover, because the terms are descriptive, if service mark rights are granted a third-party might still use the combination in a descriptive way without infringing those trademark rights.
Complainant has presented substantial evidence of use of the term FOUNDATION SOURCE in commerce in the United States and asserts that this use began as early as September 2001. Complainant has asserted, without contradiction from Respondent, that its commercial website identified by that combination term today is frequently visited by Internet users. Complainant has further asserted, without contradiction from Respondent, that it presently provides services to a large number of foundations, and as of the end of fiscal year 2006 it was managing a significant amount of foundation assets. It seems apparent that today a substantial part of the public identifies Complainant by the term FOUNDATION SOURCE. Based on these facts and conclusions, the Panel determines that, as of today’s date, Complainant has rights in the service mark FOUNDATION SOURCE for purposes of the Policy.
What is not clear to the Panel is more or less precisely when Complainant established those rights. Complainant argues generally that it established rights in the FOUNDATION SOURCE mark prior to November 22, 2005, the date on which Respondent appears to have registered the disputed domain name (per the Registrar’s Verification). But Respondent’s registration took place approximately 2 years ago. Complainant has made reference to data concerning its assets under management at the close of fiscal year 2006. That is at least one year subsequent to registration of the disputed domain name. What Complainant has not provided is concrete evidence regarding public association of the FOUNDATION SOURCE service mark with Complainant as of November 22, 2005. Without such evidence, the Panel is put in the position of attempting to guess at when Complainant may have acquired secondary meaning in its service mark such that Respondent would be trespassing on its rights by registering and using the disputed domain name.
This is particularly important in the present context because Complainant had clearly not registered FOUNDATION SOURCE on the Principal Register, nor had it submitted an application, as of November 22, 2005. Complainant enjoys no presumption of validity or ownership of the FOUNDATION SOURCE mark as of that date. Complainant bears the burden of proof, and Respondent has challenged Complainant precisely on this point.
Proof regarding the timeline of acquiring rights is of determinative interest in this proceeding because Complainant, by filing an application for registration of FOUNDATION SOURCE on the Supplemental Register in October 2001 essentially conceded that it lacked rights based on acquired or inherent distinctiveness in FOUNDATION SOURCE at that date. Registration on the Supplemental Register issued on January 21, 2003, and Complainant still had not filed an application for registration on the Principal Register. Complainant essentially argues that FOUNDATION SOURCE acquired distinctiveness sometime between January 2003 and November 2005, but without indicating what event triggered, or the application of what criteria would evidence, the transition from descriptive to distinctive.
If Complainant established rights in the FOUNDATION SOURCE service mark subsequent to November 22, 2005, then Respondent was within her rights to register and commence using the disputed domain name on that date. It is the consistent view of administrative panels interpreting the Policy, including this sole panelist, that a respondent’s registration of a domain name prior to a complainant’s acquisition of trademark rights does not constitute bad faith because the respondent cannot be attempting to take unfair advantage of rights which do not exist (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, available at “https://www.wipo.int/amc/en/domains/search/overview/index.html#31”, and decisions cited at paragraphs 1.4 & 3.1.)
Because Complainant has not carried its burden of proof in establishing with some reasonable certainty the date at which it acquired common law rights in the FOUNDATION SOURCE service mark, the Panel determines that it has failed to establish that Respondent registered and used the disputed domain name in bad faith within the meaning of Paragraph 4(b) of the Policy.
The Panel rejects Complainant’s request that it direct the Registrar to transfer the disputed domain name to Complainant.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: December 4, 2007
1 Merriam-Webster Online Dictionary, at http://www.m-w.com/dictionary/foundation, definition 3b.
2 Id., at http://www.m-w.com/dictionary/source, definition 1b(3).