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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hogrefe AG v. Ney Limonge
Case No. D2008-1206
1. The Parties
The Complainant is Hogrefe AG, Berne, Switzerland, represented by Schluep/Degen, Switzerland.
The Respondent is Ney Limonge, Rio de Janeiro, Brazil, representing himself.
2. The Domain Name and Registrar
The disputed domain name <rorschachonline.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the вАЬCenterвАЭ) on August 7, 2008. On August 8, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On August 8, 2008, Wild West Domains, Inc. 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 [together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the вАЬPolicyвАЭ), the Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬRulesвАЭ), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the вАЬSupplemental RulesвАЭ).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2008. The Response was filed with the Center on August 15, 2008.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on September 19, 2008. 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.
4. Factual Background
Complainant asserts ownership of registration of the term RORSCHACH as a trademark in a number of countries, including Argentina, Brazil, the European Community, Japan, Switzerland and the United States. Complainant seeks to substantiate ownership by furnishing a self-generated list of trademark registrations and numbers entitled вАЬTrademark Report вАШRORSCHACHвАЩвАЭ (Complaint, Annex 4). Such a self-generated report does not provide the Panel with evidence verifying that Complainant is in fact the listed registrant for the subject claimed registrations. In order to remedy this deficiency, the Panel has independently used the United States Patent and Trademark Office (USPTO) Trademark Applications and Registrations Retrieval (TARR) system to verify ownership and registration status of one of those claimed registrations. The Panel determines that Complainant owns registration of the term RORSCHACH on the Principal Register of the USPTO, registration number 2276256, dated September 7, 1999, in International Class 9, covering вАЬcomputer software for use in the field of psychology to administer psychological testing вАЭ (and further specified), claiming date of first use and first use in commerce of March 19, 1996. The Panel does not accept that ownership of other claimed registrations has been adequately established.
Complainant is a publishing house specializing in books and magazines relating to medicine, including psychology. Complainant asserts that it is вАЬowner of the copyright of the so called RORSCHACH Ink Blot Test, a psychological test with ink blots.вАЭ (Complaint) Complainant has not provided any evidence to substantiate this claim. Complainant has not indicated when the aforesaid alleged copyright arose or in what national jurisdiction(s).
The registrar has verified that Respondent is registrant of the disputed domain name, <rorschachonline.com>. According to the RegistrarвАЩs verification report, the record of registration of the disputed domain name was created on March 9, 2006.
Respondent is a clinical psychologist. He uses the disputed domain name to host a website that offers interactive online software designed to facilitate administration by professional psychologists of the Rorschach test. The current Wikipedia entry for вАЬRorschach inkblot testвАЭ referenced by Respondent introduces the subject matter as follows:
вАЬThe Rorschach inkblot test вА¶ is a method of psychological evaluation. Psychologists use this test to try to examine the personality characteristics and emotional functioning of their patients. The Rorschach is currently the second most commonly used test in forensic assessment, after the MMPI, and is the second most widely used test by members of the Society for Personality Assessment. It has been employed in diagnosing underlying thought disorder and differentiating psychotic from nonpsychotic thinking in cases where the patient is reluctant to openly admit to psychotic thinking.вАЭ вАЬwww.en.wikipedia.org/wiki/Rorschach_inkblot_testвАЭ, Panel visit of October 3, 2008)
The term вАЬRorschachвАЭ refers to the initial developer of the test, Hermann Rorschach (Response, and Wikipedia entry, id.).
By email and registered mail dated June 6, 2008, Complainant through its counsel sent a cease-and-desist and cancellation demand to Respondent regarding a different domain name, <zulligeronline.com>. There is reference in ComplainantвАЩs correspondence to the disputed domain name, but it is not the specific object of the correspondence. Return correspondence from Respondent, dated June 6, 2008, refers to the <zulligeronline.com> domain name.
The Registration Agreement in effect between Respondent and GoDaddy.com, Inc. 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. PartiesвАЩ Contentions
Complainant alleges it is owner of the вАЬcopyright of the so called RORSCHACH Ink Blot TestвАЭ. Complainant also asserts ownership of вАЬseveral trademarks вАШRORSCHACHвАЩ worldwideвАЭ.
Complainant argues that the disputed domain name вАЬbasically consists of the ComplainantвАЩs trademark вАШRORSCHACHвАЩвАЬ, with the addition of the common term вАЬonlineвАЭ, and вАЬ.comвАЭ. Complainant argues that the disputed domain name is confusingly similar to its trademark.
Complainant states that Respondent is not commonly known by the disputed domain name. It states that вАЬthe use of the term вАШRORSCHACHвАЩ clearly and intentionally leans on the famous RORSCHACH Ink Blot Test in which the Complainant has trademark rights and copyrightsвАЭ.
Complainant states that Respondent has no need to use its trademark as a domain name for вАЬhis goods or services offered legallyвАЭ.
Complainant states that Respondent tries for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainants states that вАЬAs a clinical psychologist the Complainant should be aware of the rights regarding the famous RORSCHACH Test.вАЭ Complainant argues that Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users to his website by creating a likelihood of confusion with ComplainantвАЩs mark as to source, sponsorship, affiliation or endorsement of RespondentвАЩs website.
Complainant states that вАЬthe latest since he received a cease-and-desist letter in English The Respondent was aware he infringes trademark rights. By citing Brazilian Patents law and US copyright law in his answer the Respondent made clear he is not serious about the trademark infringement.вАЭ
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to Complainant.
Respondent disputes that Complainant is owner of the вАЬRorschach TestвАЭ which was created in 1921 by Hermann Rorschach who died in 1923. Respondent asserts that according to Swiss copyright law the test has been in the public domain since 1973, and is also in the public domain in the United States.
Respondent asserts that his software is an online application available on the Internet that is different from вАЬComplainantвАЩs patented software вА¶ designed to be used on a single computer.вАЭ Respondent asserts that вАЬRorschachвАЭ is freely used by psychologists worldwide as a common term in the science of psychology and that a book search at вАЬwww.amazon.comвАЭ using the keyword вАЬRorschachвАЭ as part of the title yielded not less than 9,333 different books, the вАЬvast majority related to Rorschach Test belonging publishers and authors that does not hold the alleged copyright .вАЭ
Respondent argues that вАЬRorschach TestвАЭ is in the public domain among signatory countries of the Berne convention and that any person may legitimately use the name on the Internet without permission of Complainant. Respondent notes that there is a вАЬheavy metalвАЭ music group named вАЬRorschach TestвАЭ. Respondent also notes that there are other persons than Complainant offering computer software for administering the Rorschach test.
Respondent states вАЬUntil contact made by Complainant, the Respondent never knew of his existence. According to the patent laws of Brazil, scientific or technical terms are not recognized as trademarks. In this case, вАШRorschachвАЩ is a name used by the PsychologyвАЩs scienceвАЭ . Respondent notes that the letter sent by Complainant dated June 6, 2008 referred to a different domain name than the disputed domain name, and that his response to that letter related to the other domain name. Complainant in its letter indicated it was aware that Respondent is a psychologist.
Respondent indicates that he has not caused any damage to Complainant because Complainant does not offer a similar service. Respondent argues that his website is clearly identified and is completely different than those that may be operated by Complainant.
Respondent requests the Panel reject ComplainantвАЩs request for transfer of 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 received notice of the Complaint and commencement of the administrative proceeding from the Center and filed its Response in a timely manner. Respondent received adequate notice of these proceedings and had reasonable opportunity to respond.
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) respondentвАЩs 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) respondentвАЩs 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.
A. Identical or Confusingly Similar
Complainant has established ownership in the United States of a trademark registration at the USPTO for the term RORSCHACH covering computer software for use in the field of psychology to administer psychological testing (see Factual Background supra). On the basis of this registration, Complainant enjoys a presumption of rights in the mark in the United States.
Respondent challenges ComplainantвАЩs claim of exclusive rights with respect to the term RORSCHACH on grounds the term has fallen into the public domain in respect to copyright protection. Complainant has not submitted evidence adequate to establish copyright in the term RORSCHACH in the United States or any other jurisdiction. From that standpoint, the Panel may assume that RORSCHACH is in the public domain from the standpoint of copyright law. However, the fact that a term is not protected by copyright does not establish that the term is not protected as a trademark.
Respondent has also argued that scientific or technical terms are not subject to registration as trademarks under the law of Brazil, referring to Article 124, XVIII, of Industrial Property, Law, 14/05/1996, No. 9.279 (available from the WIPO CLEA database at вАЬwww.wipo.int/clea/en/text_pdf.jsp?lang=EN&id=515вАЭ , Panel visit of October 3, 2008). Article 124, XVIII provides (in English translation):
124. The following are not registrable as marks:
XVIII. Technical terms used in industry, science and art, that are related to the product or service to be distinguished;
RespondentвАЩs challenge is not directed to the USPTO registration of ComplainantвАЩs mark that was determined by the Panel to be valid. Brazilian rules on trademark registration do not determine the validity or enforceability of U.S. registered trademarks. However, the Panel reverts to this ground of RespondentвАЩs challenge when considering the issue of rights or legitimate interests in the disputed domain name.
Respondent has not specifically challenged the validity or enforceability of the USPTO trademark registration for the term RORSCHACH as used in connection with computer software for administering psychological testing. Respondent has not overcome the presumption of validity conferred by USPTO registration. The Panel finds that Complainant holds rights in the trademark RORSCHACH for purposes of the Policy.
Complainant argues that the disputed domain name, <rorschachonline.com>, is confusingly similar to its trademark. Respondent has indicated that it selected and added the term вАЬonlineвАЭ because RORSCHACH alone already was in use by Complainant, and; because adding вАЬonlineвАЭ is the first or second alternative option offered by registrars to those seeking to register terms already in use. Also, Respondent considers вАЬonlineвАЭ to be appropriately descriptive of his interactive Internet-based software program. The addition of the common descriptive term вАЬonlineвАЭ to ComplainantвАЩs mark does not distinguish it in the disputed domain name sufficiently to avoid a finding of confusing similarity. An Internet user searching for computer software offered under the RORSCHACH trademark would reasonably expect the trademark owner to use the term вАЬonlineвАЭ in connection with its product offering. The disputed domain name is confusingly similar to the trademark.
The Panel finds that Complainant holds rights in the trademark RORSCHACH and the disputed domain name <rorschachonline.com> is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
вАЬAny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.вАЭ (Policy, paragraph 4(c))
Respondent is a psychologist who has developed an interactive online computer program that is used in the administration of the Rorschach inkblot test. Respondent has indicated his belief at the time he registered the disputed domain name that the term RORSCHACH was in the public domain and freely available for use in connection with offering goods and services. The record of registration of the disputed domain name was created on March 9, 2006, presumably the date of RespondentвАЩs registration. It appears from correspondence between the parties that the disputed domain name was in use in connection with RespondentвАЩs program as of June 6, 2008 (the date of ComplainantвАЩs cease-and-desist demand letter specifically directed at another domain name).
Complainant has argued that Respondent should have been aware of its вАЬfamousвАЭ trademark rights because he is a clinical psychologist.
Respondent has provided evidence of a significant number of uses of the term вАЬRorschachвАЭ by parties other than Complainant. The current Wikipedia entry for the вАЬRorschach inkblot textвАЭ includes 18 footnote references the majority of which are to books using the term вАЬRorschachвАЭ in the title. The listed publishers of these books are not Complainant (though it is possible that one or more of the periodicals listed is published by Complainant). The Panel has verified that an Amazon.com book search using the keyword вАЬRorschachвАЭ yields 9,803 results (Panel visit of October 3, 2008). A survey of the first several pages of results indicates the preponderance of books use вАЬRorschachвАЭ in the title in connection a psychological assessment tool. While Complainant may be the publisher of some of these books, there are many different publishers identified in these search results.
Although there are a few Internet references using вАЬRorschachвАЭ that include a notice of trademark registration (i.e., вАЬ¬ЃвАЭ), the vast majority do not. The Merriam-Webster Online Medical Dictionary definitions for вАЬRorschach testвАЭ (вАЬa projective psychological test that uses a subjectвАЩs interpretation of 10 standard black or colored inkblot designs to assess personality traits and emotional tendencies - called also Rorschach, Rorschach inkblot testвАЭ) and вАЬRorschachвАЭ (вАЬof, relating to, used in connection with, or resulting from the Rorschach testвАЭ),1 do not indicate that the terms are the subject of trademark rights or claims. The Panel considers it established that the term вАЬRorschachвАЭ is widely used in the field of psychology to refer to a test initially developed by Hermann Rorschach. The term is not predominately used as a trademark identifier associated with goods or services of Complainant.
Based on the foregoing, in this PanelвАЩs view, although Respondent is a clinical psychologist, RespondentвАЩs assertion that he was unaware of the current ownerвАЩs (i.e. ComplainantвАЩs) rights in the term RORSCHACH prior to notice of a dispute is a reasonable one. RespondentвАЩs use of the term in connection with offering of an interactive Internet-based computer program appears to have been undertaken in good faith and not to take advantage of ComplainantвАЩs rights in its mark.
The Panel is aware that Complainant has alleged ownership of registration of the trademark RORSCHACH in Brazil. Complainant did not consider it appropriate or necessary to furnish the Panel with a copy of a certificate of registration or other evidence of a valid Brazilian trademark subsisting in its name. There is no evidence of the class of goods or services as to which the unsubstantiated Brazilian registration might confer protection. The Panel is unable to draw any inferences based on this alleged trademark registration.
The Panel determines that Respondent has established a legitimate interest in the disputed domain name because it registered and used that domain name in connection with a good faith offering of services prior to notice of a dispute within the meaning of paragraph 4(c)(i) of the Policy. Because Respondent has established a legitimate interest in the disputed domain name, Complainant does not succeed. The Panel need not address the issue of bad faith registration and use.
The foregoing determination does not address issues of potential trademark infringement by Respondent through use of the disputed domain name.
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: October 3, 2008
1 Available at вАЬwww.medical.merriam-webster.com/cgi-bin/medicalвАЭ, Panel visit of October 3, 2008.