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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bradley D Mittman MD dba FRONTRUNNERSВ® v. Brendhan Hight, MDNH Inc

Case No. D2008-1946

1. The Parties

The Complainant is Bradley D Mittman MD dba FRONTRUNNERSВ®, Laguna Niguel, California, United States of America, pro se.

The Respondent is Brendhan Hight, MDNH Inc, Las Vegas, Nevada, United States of America, represented by John Berryhill, United States of America.

2. The Domain Name and Registrar

The disputed domain name <frontrunners.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2008. On December 19, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On December 26, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced January 8, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response January 28, 2009. The Response was filed with the Center January 28, 2009.

The Center appointed William R. Towns, Philip N. Argy and W. Scott Blackmer as panelists in this matter on March 2, 2009. 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

The Complainant is the owner of a United States registration for the mark FRONTRUNNERS for use in connection with educational conferences and services in the field of medicine, including tutorial sessions and correspondence courses. The Complainant applied to the United States Patent & Trademark Office (USPTO) to register the mark on July 24, 2005, and the mark was registered by the USPTO August 8, 2006. The Complainant asserts that the mark has been in use with the goods and services cited in the registration since as early as June 1996.

The Respondent is in the business of registering domain names for use with paid search advertising. The disputed domain name <frontrunners.com> was originally registered in 1999, and was acquired by the Respondent in February 2005 as part of a purchase of a large domain name portfolio from Ultimate Search. The disputed domain name resolves to a website at “www.frontrunners.com” (the “frontrunners.com website”) that features links organized under the headings “Related Searches”, “Favorite Categories”, and “Entertainment Categories”. The “Related Searches” section includes a search link based on the term “frontrunners”.

Internet users who click on the “frontrunners” search link on the Respondent’s website currently are directed to a secondary page with links to websites featuring content related primarily to contests, competitions, giveaways and sweepstakes. Screen shots of the Respondent’s website from January 13, 2008, submitted by the Complainant, reflect that the “sponsored links” for “frontrunners” at that time included “Amazon.com”, “BizRate.com”, “smarter.com” and “Become.com”, where, according to the Complainant, FRONTRUNNERS internal medicine review materials are available for purchase.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is identical to the Complainant’s registered mark. The Complainant, doing business as FRONTRUNNERS®, states that he is a leading preparer of review courses and study materials related to the American Board of Internal Medicine (ABIM) Certification and Recertification Exams. According to the Complainant, since the inception of this business in 1996, the Complainant and his FRONTRUNNERS review materials have become widely recognized in the field of internal medicine.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is not authorized to use the Complainant’s FRONTRUNNERS mark and is not commonly known by that disputed domain name. The Complainant maintains that the Respondent is using the disputed domain name to attract Internet traffic to a website featuring links to third party websites, including sponsored links for “frontrunners” that include commercial websites such as “Amazon.com”, where the Complainant’s course review publications are offered for sale, and from which the Respondent derives pay-per-click advertising revenues.

The Complainant claims that the Respondent owns over 100,000 other domain names, and that the Respondent registered and is using the disputed domain name in a bad faith attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant asserts that the Respondent is a serial cybersquatter involved in numerous proceedings under the Policy in which bad faith has been found under similar circumstances.

B. Respondent

The Respondent maintains that it is in the business of registering domain names incorporating common words, phrases and expressions for use with paid search advertising. According to the Respondent, the disputed domain name was first acquired by the Respondent in February 2005, as part of a large portfolio of domain names purchased from Ultimate Search. The Respondent submits that prior to notice of this dispute, the Respondent was using the disputed domain name to provide automated advertising links to goods and services relating to the primary meaning of the phrase “frontrunners”.

The Respondent argues that the term “frontrunners” is without question a common phrase, which is synonymous with “leaders”, “best sellers”, and associated with political elections, contests and athletic events. The Respondent relies upon a Google search of the term “frontrunners”, which returned more than 1.64 million results, as reflecting the broad and varied use of the term. According to the Respondent, the Complainant is nowhere to be found among the leading search results returned by the Google search. The Respondent further asserts from a search of the USPTO’s online database that at least 29 other entities lay claim to “front runners” as a trademark or service mark in connection with a variety of goods and services.

The Respondent takes umbrage at being accused by the Complainant of being a serial cybersquatter. The Respondent acknowledges that the nature of its business has led to a significant number of disputes under the Policy, but the Respondent asserts that it has uniformly and consistently prevailed in such disputes. According to the Respondent, its business model is well documented, and the use of ordinary words and phrases in connection with advertising search results repeatedly has been found to be a legitimate practice. The Respondent maintains that it uses the term “frontrunners” in its commonly understood meaning to generate paid search advertising, with no intent to exploit or profit from the Complainant’s mark.

The Respondent notes that it acquired the disputed domain name before the Complainant registered or had applied to register the FRONTRUNNERS mark, and further asserts that the Complainant has submitted no evidence to support its claim of prior use of the mark. The Respondent postulates that a search of the USPTO database at the time it acquired the disputed domain name in February 2005 would not have alerted the Respondent to the Complainant’s asserted rights in the mark, given that the Complainant did not apply to register the mark until July 2005, and that the registration did not issue until August 2006. The Respondent further argues that there is no evidence to support the Complainant’s claim to have been using the mark since June 1996, notwithstanding the first use date claimed in the trademark application.

The Respondent argues that nothing in the record justifies an inference that the Respondent registered the disputed domain name with the Complainant in mind or with any intent to trade on the Complainant’s limited claim of rights in the mark. According to the Respondent, the Complainant’s federal registration does not demonstrate possession of a chronologically relevant right against which bad faith intent could have been exercised by the Respondent relative to the registration or acquisition of the disputed domain name.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) The respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain name <frontrunners.com> is identical to the Complainant’s FRONTRUNNERS mark, in which the Complainant has demonstrated rights in for purposes of paragraph 4(a)(i) of the Policy. The critical inquiry under the first element of the Policy is whether the mark and domain name, when directly compared, are identical or confusingly similar. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson Sr., WIPO Case No. D2000-1525. In this case, such a comparison reflects that the disputed domain name and the Complainant’s mark are identical. The fact that the Complainant did not secure the registration of its mark until after the Respondent had registered the disputed domain name is not material for purposes of the first element of the Policy.

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

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden is shifted to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel notes that the disputed domain name is identical to the Complainant’s mark, and it is uncontroverted that the Complainant has not authorized the Respondent to use the FRONTRUNNERS mark. The Complainant contends that the Respondent registered the disputed domain name, which is identical to the Complainant’s mark, and is using the domain name to generate click through advertising revenues. Taking the evidence at its most favourable to the Complainant, which is a concession we make solely to allow his argument to be ventilated, the Complainant could achieve a prima facie showing under paragraph 4(a)(ii). See, e.g., Document Technologies, Inc., supra; Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent maintains that it registered the disputed domain name because of its appeal as a dictionary term or commonly used descriptive phrase, and not because of its value as a trademark, and asserts that it has the right to register and make a descriptive use of the disputed domain name. A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is identical or confusingly similar to the registered mark of a complainant, provided it has not been registered with the complainant’s trademark in mind. See, e.g., National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424; Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Thus, where a respondent registers a domain name consisting of a “dictionary” term because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities rather than its specific trademark value, the use of the domain name consistent with such good faith belief may demonstrate a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304. See also Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964 (domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark).

Because, as discussed below, the Panel concludes that the Complainant has failed to meet its burden of proof respecting bad faith registration and use under paragraph 4(a)(iii) of the Policy, a determination whether the Respondent has established rights or legitimate interests in the disputed domain name is not strictly necessary to the Panel’s decision in this case, but our inclination is that the Respondent has done so.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

The Panel, after careful consideration of the totality of the circumstances in the record, does not find the evidence sufficient to demonstrate that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s rights in the FRONTRUNNERS mark. The primary rule in relation to domain name registrations is “first come, first served”, to which the Policy provides a narrow exception. See Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658. While the Complainant has rights in FRONTRUNNERS to the extent of its use as a non-descriptive source indicator for the Complainant’s products and services, the mark nonetheless is comprised of a common “dictionary” term, which the record indicates to be subject to significant and widespread third-party use.

As noted above, a number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the respondent’s aim in registering the disputed domain was to profit from and exploit the complainant’s trademark. See, e.g., National Trust for Historic Preservation v. Barry Preston, supra. The Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, supra; National Trust for Historic Preservation v. Barry Preston, supra. The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant’s rights. See, e.g., The Landmark Group v. DigiMedia.com, L.P., NAF Claim No. 0285459.

The Panel notes that Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy, where a registrant is engaged in the wholesale registration of large numbers of domain names. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. However, Paragraph 2 of the Policy has generally not been read as routinely requiring registrants to conduct trademark searches, see, e.g., Starwood Hotels and Resorts Worldwide, Inc., Sheraton LLC and Sheraton International Inc. v. Jake Porter, WIPO Case No. D2007-1254, and a complainant generally must proffer some evidence, whether direct or circumstantial, indicating that the respondent had the complainant’s mark in mind when registering the disputed domain name. See The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661.

No such showing has been made by the Complainant in this case. The circumstances as reflected in the record do not indicate that the Respondent actually knew, reasonably should have known, or could even be deemed to have constructive notice of the Complainant’s rights in the FRONTRUNNERS mark at the time the Respondent acquired the disputed domain name. Clearly, a search of the USPTO trademark database at that time would not have alerted the Respondent to the Complainant’s rights in the mark.

Further, while the Respondent has been a party to a number of UDRP proceedings, this without more does not establish a clear pattern of abusive domain name registration practices which may under other circumstances support an inference of the Respondent’s bad faith in this case. And as noted above, the registration of a domain name in order to generate pay-per-click advertising revenue is not a per se violation of the Policy where the registrant is not seeking to take advantage of the complainant’s rights.

We observe that the Wayback Machine (“www.archive.org”) has cached six versions of the site to which the disputed domain resolved between October 18, 2000 and January 9, 2007. In none of those versions is there any apparent link to a product or services of the Complainant or any product or service competitive with that of the Complainant. That is corroborative of the Respondent’s contentions both in respect of the Respondent’s use as well as that of its predecessor.

In the final analysis, the ultimate burden of proof with respect to all three elements of paragraph 4(a) of the Policy remains with the Complainant. For the reasons set forth above, the Panel is unable to conclude from the totality of the circumstances as reflected in the record that the Respondent registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark. See CNR Music B.V. v. High Performance Networks, Inc., WIPO Case No. D2005-1116. Accordingly, the Panel concludes that the Complainant has failed to satisfy its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: March 16, 2009