The Middle East Media
Research Institute, Inc. v. Oakwood Services Inc.
Claim Number: FA0709001073966
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@memri.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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
mark. See
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.”
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.
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.
DECISION
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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