Gallup, Inc.
v. Jerome Obinabo
Claim Number: FA0110000100756
PARTIES
The Complainant is Gallup, Inc., Lincoln, NE (“Complainant”) represented by Lisa B. Kiichler, of Gallup, Inc.. The Respondent is Jerome Obinabo, Dallas, TX (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <africagalluppoll.com>, <nigeriagalluppoll.com>, <igbogalluppoll.com>, <yorubagalluppoll.com>, registered with Network Solutions.
PANEL
The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Panelists in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.), the Honorable Irving Perluss (Ret.), and the Honorable Glen Ayers as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 19, 2001; the Forum received a hard copy of the Complaint on October 26, 2001.
On October 23, 2001 and November 6, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <africagalluppoll.com>, <nigeriagalluppoll.com>, <igbogalluppoll.com>, <yorubagalluppoll.com> are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 27, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@africagalluppoll.com, postmaster@nigeriagalluppoll.com, postmaster@igbogalluppoll.com, postmaster@yorubagalluppoll.com by e-mail.
A timely Response was received and determined to be complete on November 27, 2001.
Additional submissions received on December 3, 2001 and December 6, 2001.
On
December 18, 2001, pursuant to Complainant’s request to have the dispute
decided by a three-member Panel, the
Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.), the
Honorable Irving Perluss (Ret.), and the Honorable Glen Ayers as Panelists.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to the Complainant. Respondent claims that he has a lot of financial investment in the development and promotion of the web sites and he does not want to transfer the domain names. As a remedy, he requests compensatory damages of over one hundred thousand dollars in the event he loses the domain names. However, compensatory damages are not within the purview of an ICANN proceeding.
PARTIES’ CONTENTIONS
A. Complainant
The
Complainant contends that the domain names registered by Respondent are
identical or confusingly similar to the trademarks in which Complainant has
rights, that Respondent has no rights
or legitimate interest in respect of Respondent’s domain names, and that
Respondent’s domain names have been registered in bad faith. Given the
fact that Respondent has never been in the business of conducting scientific
polling and is not a licensee of Complainant, Respondent cannot use GALLUP or GALLUP POLL to
identify its business. There is no
legitimate reason for Respondent to own the domain names<africagalluppoll.com>,
<nigeriagalluppoll.com>, <igbogalluppoll.com>,
<yorubagalluppoll.com. Therefore,
Respondent has acted in bad faith.
B. Respondent
Respondent contends that Complainant’s GALLUP trademarks are not identical to the domain names <africagalluppoll.com>, <nigeriagalluppoll.com>, <igbogalluppoll.com>, <yorubagalluppoll.com>.
Respondent asserts that if Complainant had wanted to use the disputed domain names it should have registered them. Further, he contends that GALLUP is a generic name for polls.
Respondent asserts that three of the websites are operational; therefore, he is using the disputed domain names in connection with a bona fide offering of services.
Respondent states that he registered the
domain names in good faith and is not using them to redirect Internet traffic
to his websites.
Respondent contends that Complainant has registered or pending trademarks, but not service marks and cannot claim ownership of the disputed domain names.
C. Additional Submissions
In its additional submission, Complainant refutes Respondent’s contentions. Complainant also asserts that spending money on a domain name does not automatically give rise to rights or legitimate interests in a domain name, especially when the mark infringed upon is famous. Complainant asserts that its GALLUP mark is not generic, but is a famous mark recognized as a preeminent name in public polling research. Respondent, in its additional submission, denies receiving a letter from Complainant's attorney giving him notice of the GALLUP mark.
1. Complainant
is the largest, oldest and best-known opinion polling service in the United
States and the world. Established prior
to World War II, Complainant has used the trademarks GALLUP and GALLUP POLL as
trademarks for over sixty years. (These
marks and other GALLUP elemented marks shall be referred to herein collectively
as the “GALLUP Marks”). The name and mark
GALLUP is, in fact, one of the best-known trademarks in the country.
2. Complainant registered GALLUP, GALLUP POLL and other GALLUP trademarks, well before the November 27, 2000 domain registration of <africagalluppoll.com>, <nigeriagalluppoll.com>, and <igbogalluppoll.com>and the September 14, 2001 registration of <yorubagalluppoll.com> by Respondent.
3. Complainant is the owner of the following domain names: <gallup.net>; <gallup .com>; <gallupbrain.com>; <gallupconsulting.com>; <gallupgeorgehorace.com>; <gallupintl.com>; <gallupinternational.com>; <gallup-international.org>; <gallupjornal.com>; <gallupmgmtjournal.com>; <galluponline.com>; <galluppath.com>; <galluppoll.com>; <gallup-poll.com>; <gallup-poll.org>; <gallupq12.com>; <galluptuesdaybriefing.com>; <gallupworldbrain.com>.
4. Respondent
has never been in the business of conducting scientific polls. In fact, Respondent affirmatively states
that his web sites are non-scientific, interactive web sites designed to give
Africans, Nigerians, and members of the Igbo tribe a voice on issues relevant
to Africa and more specifically Nigeria.
Further, Respondent’s most recent registration is under construction and
not even in use.
5. Respondent
is not a licensee of Complainant, nor has Respondent ever been authorized by
Complainant to use Complainant’s GALLUP mark or any name including GALLUP,
including but not limited to, the disputed domain names.
6. The significance of GALLUP POLL is that it is a poll conducted by or in connection with Gallup, and not describing a particular type of poll. The public could believe that Respondent’s websites are linked to or supported by Complainant.
7. Since registering the disputed domain names, Respondent
a. has designed and implemented web sites for the domain names.
b. has registered DBA (Doing Business As) under the domain names.
c. has been conducting non-scientific polls.
d. has traveled within United States and overseas promoting the web sites.
8. Respondent claims to have spent over $400,000 since the purchase of the domain names for building and developing the websites.
9. Incredibly, Respondent states that he was unaware of Complainant until contacted by Complainant after having registered the contested domain names.
10. Respondents’ domain names are operational except for the most recent registration of <yorubagalluppoll.com>, which is under construction.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant has
rights to THE GALLUP POLL mark and related GALLUP marks by virtue of its
multiple trademark registrations with the United States Patent and Trademark
Office. The domain names of Respondent
name <africagalluppoll.com>, <nigeriagalluppoll.com>, <igbogalluppoll.com>, <yorubagalluppoll.com> are confusingly similar to Complainant’s
registered marks, GALLUP and GALLUP POLL, and to its domain names because Respondent incorporates the entirety
of Complainant's mark and merely adds the descriptive geographic terms
"africa" , "nigeria", "igbo", and
"yoruba." The addition of a
descriptive or generic term to another's trademark does not create a distinct
mark, nor does it defeat a claim of confusing similarity. See
Sunkist Growers, Inc. v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May
22, 2001) (finding that the domain names <sunkistgrowers.org>,
<sunkistgrowers.net> and <sunkistasia.com> are confusingly similar
to Complainant’s registered SUNKIST mark and identical to Complainant’s common
law SUNKIST GROWERS mark); see also CMGI,
Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name
<cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).
In
the United States, the rules for determining when and how service marks qualify
for protection are the same as the rules applicable to trademarks. A service mark is the name under which the
service is promoted and a trade name is the name of the business that does the
promoting.
Complainant
is not required to have registered the disputed domain names to protect its
mark.
GALLUP POLL is not a generic name although it is recognized world wide as being the preeminent name in public polling research. Instead, the primary significance of GALLUP POLL is that of a poll conducted by or in conjunction with Gallup, and not as describing a particular type of poll.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by any of the disputed domain names. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, Respondent is not a licensee or affiliated with Complainant and therefore cannot use the GALLUP mark in relation to its website activities. Respondent's sites are not scientific polls, but interactive sites about Nigeria and Africa. The use of the GALLUP mark in relation to such activities will create confusion. The use of a confusingly similar domain name to offer services is not a bona fide offering of goods or services pursuant to Policy ¶ 4 (c)(i). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Respondent had costs associated with the design and implementation of websites; however, merely spending money on a domain name does not give legitimacy to use, especially when the mark infringed upon is famous.
Respondent
registered and used the domain names in bad faith. Absence of legitimate use or rights is a basis for finding
registration and use in bad faith. See Flor-Jon Films, Inc. v. Ron Larson,
FA 94974 (Nat. Arb. Forum July 25, 2000).
The disputed domain names are confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the disputed domain names despite their being confusingly similar is evidence of bad faith pursuant to Policy ¶ 4(c)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant”).
Respondent states that he was unaware of Gallup until contacted by Complainant after Respondent had registered his domain names. Due to the world fame of the GALLUP name and its association with polling, Respondent was aware of Gallup and its business of polling. To paraphrase from the movie “Casablanca,” “Of all the words in the world, why did Respondent choose to use the word GALLUP in his domain names.” By using GALLUP POLL in Respondent’s domain names, Respondent trades on the fame of the GALLUP name to promote Respondent’s own web pages.
Because of the famous and distinctive nature of Complainant's GALLUP mark, Respondent is presumed to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing domain names. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith). Respondent, upon registering the domain names, knew or should have known of Complainant’s established marks. See Gallerina v. Mark Wilmhurst, D2000-0730 (WIPO Aug. 16, 2000) (finding bad faith where Respondent must have known that the domain name would probably create further confusion).
DECISION
Based
upon the above findings and conclusions, we find in favor of the Complainant. Therefore, the relief requested by the
Complainant pursuant to Paragraph 4.(i) of the Policy is Granted. The Respondent shall be required to transfer
to the Complainant the domain names <africagalluppoll.com>,
<nigeriagalluppoll.com>, <igbogalluppoll.com>,
<yorubagalluppoll.com>.
The Honorable Charles K. McCotter, Jr. (Ret.), CHAIR
January 2, 2002
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