WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Link-Up Holdings Pty Ltd v. Oneandone Private Registration, 1&1 Internet Inc. / James Trujillo, Kolbe Corp.

Case No. D2016-1780

1. The Parties

Complainant is Link-Up Holdings Pty Ltd of Lilli Pilli, New South Wales, Australia, represented by Dentons US LLP, United States of America (“United States” or “U.S.”).

Respondent is Oneandone Private Registration, 1&1 Internet Inc. of Chesterbrook, Pennsylvania, United States / James Trujillo, Kolbe Corp. of Phoenix, Arizona, United States, represented by Weiss Brown, United States.

2. The Domain Names and Registrar

The disputed domain names <instinctivedrives.net> and <instinctivedrives.org> are registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2016. On September 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 2, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 15, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2016. On October 6, 2016, submitted a request for the automatic four calendar day extension for response under paragraph 5(b) of the Rules. The Center notified the Parties that the new due date for Response was October 9, 2016, but Respondent did not submit any response. Accordingly, the Center notified the Parties of the commencement of the panel appointment process on October 10, 2016.

The Center appointed Christopher J. Pibus, Andrew Bridges and Georges Nahitchevansky as panelists in this matter on October 31, 2016. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is an Australian-based company that provides services in the field of business consulting, specifically in the areas of motivational and efficiency analysis for the workplace. Complainant promotes its services through the use of the trademarks INSTINCTIVE DRIVES and I.D. System, which identify its analytical systems.

Complainant owns a registration for the INSTINCTIVE DRIVES mark in Australia (Reg. No. 1123905) which was registered from July 12, 2006 and entered on the register on August 11, 2008 for goods and services under Class 35. Additional applications are pending in various other international jurisdictions. Complainant registered the domain name <instinctivedrives.com> in 2009, and has used this domain name to promote Complainant’s business on the Internet.

Respondent James Trujillo is a member of the management team of Kolbe Corp., an Arizona-based business for which Kathryn Kolbe serves as Chairman. Complainant discloses a long history of conflicts with Kolbe Corp. and its principals, dating back to the 1980s. Complainant’s founder Paul Burgess formerly had a business relationship with Ms. Kolbe, which came to an end in 1991, and which eventually led to protracted litigation. A confidential settlement was reached in 2000, which provided (according to Complainant) for the continued use of materials that include the term “Instinctive Drives” by Complainant. Respondent registered the disputed domain names on March 7, 2014.

Respondent has not filed any form of response to this Complaint, so the facts recited above are entirely based on the Complaint itself.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

Complainant contends that the disputed domain names are confusingly similar to Complainant’s trademark INSTINCTIVE DRIVES registered in Australia as referenced in paragraph 4 of this Decision. Complainant submits that the disputed domain names reproduce Complainant’s trademark INSTINCTIVE DRIVES in its entirety, and differ only in the addition of the URL designations “.org” and “.net”. Complainant submits that the addition of the URL designations does not serve to distinguish the disputed domain names from Complainant’s trademark.

Rights and Legitimate Interests

Complainant submits that Respondent does not have any rights or legitimate interests in the <instinctivedrives.org> and <instinctivedrives.net> domain names. Respondent has never been authorized or licensed by Complainant, and has not used the disputed domain name in connection with a bona fide offering of goods and services. The disputed domain names, at the time the Complaint was filed, reverted to websites which are said to disparage Complainant’s founder, Paul Burgess, and interfere with the commercial business of Complainant. Respondent’s websites are alleged to divert consumers, who are seeking Complainant, to its competitor Kolbe’s websites. Further, Complainant submits that Respondent is not commonly known by the name Instinctive Drives. Complainant contends that Respondent was clearly aware of Complainant’s INSTINCTIVE DRIVES trademark, because of their past business relationship.

Bad Faith

Complainant submits that Respondent has registered and is using the disputed domain names <instinctivedrives.org> and <instinctivedrives.net> in bad faith, because (i) Respondent was clearly aware of Complainant’s registered trademark rights in INSTINCTIVE DRIVES, when Respondent registered the confusingly similar domain names in 2014; (ii) Respondent is using the disputed domain names in association with websites which provide links to Respondent’s own competitive website for purposes of monetary gain; and (iii) Respondent is using the disputed domains in association with websites which disparage and accuse Complainant’s founder of intellectual dishonesty and tarnishes the reputation of Complainant’s INSTINCTIVE DRIVES trademark. Accordingly, Complainant submits that Respondent has registered and is using the disputed domain names in bad faith.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, Complainant must establish each of the following elements:

(i) The disputed domain names are identical or confusingly similar to the trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interest in respect of the disputed domain names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established ownership rights in the trademark INSTINCTIVE DRIVES through evidence that it has registered the mark in Australia and has filed to protect the mark elsewhere. Respondent has chosen to use exactly the same mark to create the disputed domain names.

Accordingly, the Panel finds that Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Complainant’s principal argument is that Respondent was fully aware of Complainant’s trademark rights when it registered the disputed domain names in 2014, and that Respondent’s intention was to redirect customers to competitive websites criticizing Complainant and promoting Respondent’s own services. Complainant submits that Respondent’s activities do not constitute a bona fide offering of products or services, that Respondent has not been authorized to use, and is not commonly known by the name “instinctive drives”; and that there has been no legitimate noncommercial or fair use of the domain name. Accordingly, Respondent does not meet the criteria set out in paragraph 4(c)(i)-(iii) of the Policy.

Complainant’s critical evidence in support of these submissions is in the form of webpages appearing on Respondent’s websites associated with the disputed domain names. Complainant correctly characterizes these websites as criticizing the conduct of Complainant’s founder Burgess and the origins of his business, but argues that the content of the websites does not meet the fair use exception. The Panel Majority has carefully examined the webpages which have been provided as evidence, and notes that there are significant commercial aspects to the pages. In particular, it is notable that Respondent’s websites actively promote the competitive Kolbe business, using language such as:

http:/instinctivedrives.org

“Learn more about your own Modus Operendi (or Methods of Operation) and how to leverage your instinctive strengths to increase your productivity and success here (http://www.kolbe.com/)”.

http:/instinctivedrives.net/about

“Learn more about the authentic work regarding instinctive drives and conation (http://conation.org/) yourself”.

The use of these sorts of directions, which are ultimately promotional in nature in favour of Respondent’s business, lead the Panel Majority to conclude that Respondent cannot rightly be accorded the protection of the fair use exception, on the basis of the limited evidentiary record that is available in this proceeding.

On this point, the Panel Majority notes that Respondent has chosen not to file any form of response to this Complaint, although it is apparent that the parties have been engaged in a series of contested matters in both the U.S. and Australia over a period of many years. The Panel Majority is therefore aware that there is likely a much more complete factual record available in other forums, which might well have been relevant to this Decision. However, Respondent must live with the consequences of its choice not to file any response or raise any explanation or countervailing facts. Complainant has established a prima facie case that Respondent has no rights or legitimate interest in the domain names. Following the principle outlined in WIPO Overview 2.0, at paragraph 4.6, the Panel Majority accepts Complainant’s arguments that Respondent has failed to establish its rights or legitimate interests under paragraph 4(c)(i)-(iii).

Accordingly, the Panel Majority finds that Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

With respect to bad faith, the Panel Majority has considered the submissions and evidence provided by Complainant, in the absence of any response, and concludes that Complainant has established the requisite proof under paragraph 4(a)(iii) of the Policy.

The same evidence recited above in paragraph 6(B) is also relevant. There were obvious alternative domain names which would have alerted users to the critical orientation of Respondent’s websites. Respondent chose instead to use the exact same mark adopted by Complainant as its principal identifier and domain name <instinctivedrives.com> for purposes of promoting its own competing services. In these circumstances, the presence of explicit directions to users leading them to Respondent’s competitive websites is sufficient to establish bad faith, in the absence of any evidence to the contrary.

As a final note, the Panel Majority wishes to make it clear that the scope of this decision is constrained by the materials before it and the fact that Respondent has chosen not to file a response. In another forum, where a full evidentiary record is available, different arguments could lead to a different outcome.

Accordingly, the Panel Majority finds that Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel Majority orders that the disputed domain names, <instinctivedrives.net> and <instinctivedrives.org> be transferred to Complainant.

Christopher J. Pibus
Presiding Panelist

Georges Nahitchevansky
Panelist

Andrew Bridges
Panelist (Dissenting)
Date: December 16, 2016


DISSENTING OPINION

Even on a default basis, this outcome is an extremely close call. Because the Complaint and related public material raise substantial questions that outweigh the force of the Complaint’s allegations and evidence, I believe Complainant has not carried its burden of establishing a prima facie case, and I respectfully dissent.

Identical or Confusingly Similar: I agree fully with the Panel discussion.

Rights or Legitimate Interests: Complainant relies upon an Australian trademark registration. I understand that proof of use is not required to obtain a trademark registration in Australia, so the registration may have occurred without any official examination of specimens of use that might shed light on the distinctiveness of the mark in the context of the services.

Complainant relies also upon other trademark applications that occurred after Respondent registered the domain names at issue, so they should have no bearing on priority, although early uses could be relevant.

Complainant has referred to a pending U.S. application, which I believe is important because Respondent is in the United States. Notably on that application the US Patent and Trademark Office (“USPTO”) has refused registration of INSTINCTIVE DRIVES on the grounds it is merely descriptive. In response to the office action, Complainant did not argue that the mark is inherently distinctive. Instead Complainant furnished a simple statement that it had made substantially exclusive use of the mark in the United States for over five years. On August 25, 2016, the USPTO continued its refusal, rejecting the use statement for failure to provide sufficient evidence including dates of use. It is common USPTO practice not to refuse applications on the ground that a mark is generic until after an applicant provides evidence of acquired distinctiveness, so such a genericness refusal remains possible and the descriptiveness refusal may not be the most powerful argument the USPTO examiner has available. See USPTO Trademark Manual of Examining Procedure § 1209.02(a).

Complainant describes its business and trademark usage as follows:

Link-up International Pty. Ltd. (“Complainant”) is an Australian-based company providing management consulting services for global businesses and individuals to leverage individual talents to accelerate and improve collaboration, business results, innovation and engagement. Complainant uses its proprietary system, the I.D. System, which utilizes a classification system entitled Instinctive Drives, to identify individual motivators and analyze what individuals and teams need to connect and collaborate to make positive change in efficiency and work output. The I.D. System and Instinctive Drives classification methods were created in 1991 and published by Complainant’s founder, Paul Burgess, in 1992. Since its creation, more than 100,000 people globally have used I.D. System (trademark symbols omitted).

Web searches are relevant to, and appropriate for, assessing the inherent distinctiveness of claimed marks.

A web search on the words “INSTINCTIVE DRIVES” reveals, among other things, a reference to a book authored by Paul Burgess with the title “Natural Born Success: Discover the Instinctive Drives That Make You Tick!.”

A search of Google Scholar reveals an abundance of instances of the phrase “instinctive drives,” including a reference to a 1922 work by W.F. Ogburn, “Social Change with Respect to Culture and Nature”, that includes the statement “So also a part of the nature of man consists of methods of reacting to stimuli, reflex activities, instinctive drives, habits, and various ways of behaving.”

It thus appears that “instinctive drives” may well be generic with respect to the objects of Complainant’s services.

Registered and Used in Bad Faith

The Complaint and its annexes reveal a long-standing business dispute between the parties. Complainant describes the dispute in this way:

Complainant and Kolbe have a long history as colleagues, business partners, and litigation adversaries dating back to the late 1980s. After Complainant separated from Kolbe and launched a competing business employing the I.D. System and Instinctive Drives classification system in 1991, Kolbe filed a lawsuit against Complainant and Burgess in 1992 for copyright violations related to Instinctive Drives. The lawsuit concluded under a confidential settlement agreement executed in 2000, which provided for Complainant’s continued use of materials that include the term “Instinctive Drives”. Therefore, it is undisputed that Kolbe and her proxy registrant Respondents possessed knowledge of Complainant’s use of the Instinctive Drives trademark since at least 1992 and at the time of registering the disputed domain names in 2014 (trademark symbols omitted).

Complainant has not provided the confidential settlement to the Panel. Yet the discussion of the dispute suggests that both Complainant and Respondent have competed in a fashion that may make the psychological conceptof “instinctive drives” relevant to both.

The title of the Paul Burgess book suggests on its face that there may be either generic uses or descriptive fair uses of the terms “instinctive drives” by Complainant’s competitors.

In the context of this case, it is not clear that Respondent or others should have an obligation to refrain from using language, or from registering a domain name, that naturally describes an object or key aspect of its services. Language in Respondent’s web sites that the Panel Majority quotes employs the terms “instinctive drives” and “instinctive strengths” in a generic fashion to promote Respondent’s services.

Bad blood between parties may suggest a bad motive in actions of a party, but criticism of one party because of a history of litigation between them may be fair. We cannot judge. The Complaint states that the settlement agreement “provided for Complainant’s continued use of materials that include the term ‘Instinctive Drives’.” The fact that a settlement agreement provided forComplainant’s continued use suggests that Respondent had power to contract for and grant such a provision; and there is no statement that the settlement accorded Complainant exclusive rights to use the term.

Respondent failed to respond to the Complaint. That is not evidence of bad faith. There are legitimate reasons for a party to fail to respond; for example, a Respondent may intend simply to save money by not investing in a UDRP proceeding if it considers a court proceeding inevitable regardless of the UDRP outcome.

For these reasons, I would rule that Complainant has not made out a sufficient case for a decision against Respondent and I would deny relief.

Andrew Bridges
Panelist (Dissenting)
Date: December 16, 2016