The Middle East Media Research Institute, Inc. v. Oakwood Services Inc.
Claim Number: FA0709001073966
Complainant is The Middle East Media Research
Institute, Inc. (“Complainant”),
represented by Jeffrey H. Kaufman, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <memri.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers, Jr. served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 5, 2007.
On September 21, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <memri.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 September 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 18, 2007 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 18, 2007.
Two additional submissions were received. Neither was timely. Complainant’s additional submission was received on October 24, 2007, and was styled “Complainant’s Additional Submission;” Respondent filed its “Sur-Reply” on November 1, 2007. Because neither was timely, neither has been considered.
On October 24, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers, Jr. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, The Middle East Media Research Institute, Inc., asserts that the domain name <memri.com>, registered by Respondent, is identical to or confusingly similar to an acronym, MEMRI, in which Complainant asserts that it holds a common law trademark.
Complainant does not dispute that MEMRI is not registered, but maintains that it has registered <memri.org>. The website for <memri.org> has been active since at least December 1998. As further evidence of the existence of a common law trademark, Complainant has established that a number of news organizations refer to “MEMRI” as the source of the reports and other information produced by the Complainant. Reporters and news outlets frequently refer to Complainant as MEMRI.
Complainant goes on to state that Respondent has no rights to legitimate interests in the “MEMRI” name because it is not licensed by the Complainant; because Respondent does not use or make demonstrable use of the domain name in connection within the offering of goods or services; and, because Respondent has merely registered the domain name itself.
Complainant also asserts that the name was registered and used and is being used in bad faith because Respondent has intentionally attempted to attract Internet users for commercial gain by some likelihood of confusion.
Respondent begins by asserting that the Complainant has no registered trademark. The Respondent goes on to state that, while there is a registered trade name, such trade names are not entitled to protection.
As to the existence of a common law mark, Respondent asserts that there is insufficient evidence to “demonstrate that the public identifies the complainant’s mark exclusively or primarily with the Complainant’s products.” Put simply, Respondent asserts that Complainant has not shown sufficient evidence of the existence of a common law mark.
As to rights and legitimate interests, Respondent contends that it has registered the domain name for future development. Respondent argues that this was chosen for a number of reasons, all of which are legitimate. It alleges that “MEMRI” is either a phonetic spelling of the word “memory” and is an acronym for the medical term “magnese-enhanced magnetic resonance imaging.”
Respondent accuses Complainant of an attempt to hijack the name.
As to whether or not there has been any use in bad faith, Respondent denies any use in bad faith. Respondent also points out that there is absolutely no evidence of any intent to confuse customers, and denies that it has ever intentionally intended to use the registered domain name to confuse creditors or attract trade from Complainant.
Respondent denies that it had any actual knowledge of Complainant’s common law mark. Respondent also points out that a search would have shown a number of other uses of “MEMRI.” Respondent goes on to again complain of reverse name hijacking.
C. Additional Submissions
As stated out above, neither of the additional submissions filed by Complainant and Respondent were timely and have not been considered.
Complainant appears to have established that
it does hold a common law trademark in the term or name “MEMRI.” A common law trademark does exist if the
party claiming the common law trademark can demonstrate that a word or phrase
has achieved a secondary meaning. The
name MEMRI appears to identify goods or services provided by Complainant. The use of the term has been common in the
media to identify the “goods” produced by Complainant. The media, i.e., the “consumers,” associate
the “mark” with the goods and services provided by Complainant. Complainant’s evidence of the use of MEMRI to
identify its goods and services is extensive.
Exhibit “A” provides extensive evidence that commentators and media
outlets refer to its products by the acronym or term “MEMRI.” The mark may be very weak since outside of
the boundaries of the Beltway and the media “MEMRI” may not be associated with
Complainant’s services, but that does not mean there is not a common law
Obviously the common law mark and the domain name are confusingly similar or identical.
Further, the evidence as to “rights in the name” is sufficient. Complainant has shown that it has rights in the name, and Respondent’s rebuttal is weak. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) holding that Respondent must rebut a prima facie case. Respondent, for example, did not attempt to show any preparation for use. See David J. Joseph Co. v. Barry, D2000-1418 (WIPO Jan. 2, 2001).
Finally, as to bad faith, the Panelist can find none. Complainant’s evidence of bad faith is very weak. Complainant asserts that Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement of Respondent’s website. The other evidence asserted by Complainant is that the “registration and use of the domain name in bad faith is evident at Respondent’s selection of ‘memory’ for the second level domain . . . .” Complainant has really offered no evidence of “bad faith.” See Drs. Foster & Smith, Inc. v. Lalli, 95284 (Nat. Arb. Forum Aug. 21, 2000).
Respondent strongly rebuts the bad faith argument. Respondent points out that there are other users of the acronym or name MEMRI and have been in the past. (Although Respondent’s allegation that there is “substantial third party use” is an exaggeration.) Further, Respondent asserts that it had no actual knowledge and, without actual knowledge, mere registration does not impute bad faith. Further, there is no active web page. Respondent returns to the theme that it had no knowledge and that, without knowledge, it cannot be said to have intentionally acted in bad faith.
Logic forces the Panelist to side with Respondent. The common law mark only identifies Complainant to customers in the media who need information on Middle Eastern media. While Complainant’s acronym could be known to those consumers, the Panelist finds it unlikely that the acronym MEMRI would be known to be a mark to any other group.
Respondent goes on to point out that is has not attempted to sell the domain name which, of course, would be further evidence of bad faith.
Reverse Domain Name Hijacking
The Panelist declines to read the “reverse domain name hijacking” issue. Reading that issue is not necessary given the finding on “bad faith.”
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.
The Panelist finds that Complainant does hold a common law trademark in the name or term “MEMRI,” and that the common law mark and domain name are identical.
The Panelist finds that the Respondent has no legitimate rights or interests in the name.
The Panelist cannot find that there has been any registration or use in bad faith. Respondent’s submissions that it had and generally probably could not have had actual knowledge of the existence of the “MEMRI” mark defeats a finding of bad faith. The MEMRI mark certainly appears to be a very weak mark, even as common law marks go, because the term identifies the goods and services offered by Complainant only to those members of the media who deal with Middle Eastern issues. While this does not detract from the finding of the existence of a common law mark, it makes it impossible to find bad faith.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panelist concludes that relief shall be DENIED.
R. GLEN AYERS, JR., Panelist
DATED: November 7, 2007
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