National Organization of Social Security Claimants’ Representatives v. Eminent Domain Licensing Enterprises
Claim Number: FA0710001087609
Complainant is National Organization of Social Security
Claimants' Representatives (“Complainant”), represented by David M. Abrahams, of Law Offices of Webster, Chamberlain & Bean,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nosscr.com>, registered with Dstr Acquisition Vii, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2007.
On October 2, 2007, Dstr Acquisition Vii, LLC confirmed by e-mail to the National Arbitration Forum that the <nosscr.com> domain name is registered with Dstr Acquisition Vii, LLC and that the Respondent is the current registrant of the name. Dstr Acquisition Vii, LLC has verified that Respondent is bound by the Dstr Acquisition Vii, 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 October 12, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 1, 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 November 1, 2007.
A timely Additional Submission was received from Complainant on November 6, 2007.
On November 8, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant alleges that it is a non‑profit organization of over
3,300 attorneys and paralegals dedicated to the high-quality representation of
Social Security and Supplemental Security Income claimants as well as promoting
the interests of a system of full and fair adjudication for claimants and
beneficial change in the disability determination and adjudication
process. Complainant conducts business throughout the
According to the Complainant, the disputed domain name wholly incorporates Complainant’s NOSSCR mark and Respondent does not alter the mark in any way to distinguish the mark from Complainant’s mark. The domain name is identical and confusingly similar to Complainant’s registered marks.
And, says the Complainant, the Respondent is using the <nosscr.com> domain name in connection with a web site that provides information in the field of Social Security Disability and referrals to those practitioners in the field of Social Security Disability.
Further, says the Complainant, the Respondent does not have any legitimate right in and to the trademarks “NOSSCR” or “NOSSCR.COM.” Respondent has not registered these marks in the United States Patent and Trademark Office, nor has it made any attempt, to Complainant’s belief and knowledge, to register these marks in any other regulatory body responsible for the registration of intellectual property or business and trade names.
According to the Complainant, the Respondent is showing bad faith in the registration of the disputed domain name because it was registered to “intentionally attempt to attract, for commercial gain, Internet users to [Respondent’s] web site and other on-line locations, by creating a likelihood of confusion with the Complainant’s mark[s] as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Uniform Policy ¶ 4.b(iv). Upon typing the disputed domain name, the user is directed to the Respondent’s web site entitled “NOSSCR.COM” which provides information in the field of Social Security and disability benefits, promotes for sale, at a profit, goods and services in the field of Social Security and disability benefits, and provides referrals to practitioners in the field of Social Security and disability benefits. The wholesale incorporation of Complainant’s NOSSCR mark into the disputed domain name and the use of a virtually identical service mark on the associated NOSSCR.COM web site creates a likelihood of confusion as to the source of the goods and services promoted on the Respondent’s web site. Respondent’s use of the disputed domain name perpetuates the false assumption that Respondent is a member of, or somehow affiliated with Complainant, when this is clearly not the case.
The Respondent agrees that the Complainant seems to be a very honorable organization with thousands of lawyers doing very important work. However, NOSSCR is simply an acronym. It can stand for a lot of things like “Not Only Smart Students Can Read”. It’s like ABC. It can stand for the American Broadcasting Corporation or it can stand for ABC Appliance. Many different companies can use the acronym ABC --- so long as they are not in the same business. Similarly, the NOSSCR acronym can be used by many different businesses such as television broadcasting or appliance sales. The only thing it can’t be used for --- thanks to the Complainant’s trademarks --- is for goods and services pertaining to an organization of lawyers that do social security work.
Respondent goes on to state that the web site referred to by the Complainant was simply a “landing page” created when it registered the disputed domain name and that it “played no role in designing this parking page --- or in directing traffic to it.” Further, Respondent did not make any money --- and did not intend to make any money --- by the redirection of the disputed domain name to the aforementioned “landing pages.”
The Respondent states that it registered the disputed domain name more than two years ago, after the previous registrant (the Complainant) chose not to pay the annual registration fee.
Respondent states that it did not “intentionally attempt to attract” users; that it did nothing “for commercial gain”; that traffic was not directed to “Respondent’s website” (primarily because Respondent doesn’t even have a website); and that there it did not “create a likelihood of confusion”: no one in their right mind could possibly confuse the amateurish “landing pages” with the Complainant’s venerable website.
According to the Respondent, as soon as it found out about this Complaint, it immediately took action to ensure that the disputed domain name was no longer directed to the “landing pages” mentioned by the Complainant.
The Respondent concludes by alleging that the Complainant is engaging in reverse domain name hijacking.
C. Additional Submissions
The Complainant states that, while it is true that Respondent has been listed twice as the registrant for the disputed domain name at different times since 2003, what it neglects to tell this Panel is that it (and/or its agents) has been playing a “shell game” with Complainant with regards to the domain name. What it also neglects to mention is that the disputed domain name was the subject of a similar controversy some years ago involving the Respondent and individuals acting on its behalf.
The Complainant alleges that, at the beginning of April 2003, it received an inquiry about a web site called <1800disabled.com>. This web site copied and made unauthorized use of Complainant’s copyrighted content. The registrant of this web site was identified as the Respondent. A further investigation by the Complainant uncovered that the Respondent was listed in the April 4, 2003 WHOIS record as the owner of the disputed domain name. The Complainant further discovered that a certain individual owned/controlled the web site with the infringing material (and to which the <1800disabled.com> and disputed domain names were forwarded to). In response to actions by the Complainant, the infringing material was removed from the web site. Further, the Complainant demanded by letter of April 7, 2003 that the disputed domain name be transferred to itself.
The disputed domain name was indeed transferred, but only after a series of confusing events involving various individuals, some of whom are apparently associated with the Respondent. On June 2, 2003, the Complainant received confirmation that the disputed domain name was finally transferred to itself.
According to the Complainant, it inadvertently permitted the registration of the disputed domain name to lapse, due to an administrative miscommunication. When the Complainant discovered this unfortunate oversight in the beginning of June 2005, it found that the very same individual referred to above, who was involved in holding the domain name in bad faith not two years prior, had registered the disputed domain name in his own name.
The Complainant states that the disputed domain name was transferred to the Respondent sometime around July 4, 2005. In the beginning of December 2005, it drafted and sent the Respondent a letter, which came back undeliverable. As the domain name was not being used at the time as had been done in the past, the Complainant decided to monitor the Respondent’s actions for the time being.
In June 2007, the Complainant was informed that the disputed domain name was being sold on the domain name auction web site, Afternic.com.
At the end of August 2007, some of the Complainant’s members contacted the Complainant about the NOSSCR.COM web site, described in the Complaint. In particular, these members were listed on that web site and did not want to be associated with the NOSSCR.COM web site or the activities of a cybersquatter. These members tried to “opt out” of having their listings displayed on that web site, but were unsuccessful. Knowing that Respondent was going to continue its “shell game” if Complainant did not take action and that the commercial interests of the Complainant’s members were being damaged, the Complainant had no choice but to initiate the instant proceeding.
The Complainant notes that the Respondent argues that this panel should reject the Complaint because the disputed domain name is “parked” on a “landing page” that Respondent took no role in creating. Furthermore, Respondent argues that his actions are not done for commercial gain and in an effort to attract visitors who should be directed to Complainant’s web site.
Yet, says the Complainant, this “landing page” had the indicia of a web site used to divert Internet traffic away from the Complainant. Before the Respondent took action to ensure that the disputed domain name was not being directed to the NOSSCR.COM web site, the site had various links for information on the field of Social Security law and lawyer referrals. Furthermore, the web site had a copyright notice, which is indicative of a claim of ownership by a party other than the domain name registrar.
According to the Complainant, the Respondent has made no showing that it has a legitimate interest in the disputed domain name. Respondent’s name is “Eminent Domain Licensing Enterprises,” not NOSSCR. Respondent has made no proffer of evidence that it was going to use the disputed domain name in connection with a bona fide offering of goods or services. Finally, Respondent has been holding and “parking” the disputed domain name since 2003. Assuming arguendo that this Panel does not find the “parking” page attached to the Complaint as evidence of bad faith, the Respondent’s actions since 2003 coupled with its parking of the domain name without a bona fide offering of goods and services should be considered grounds for this Panel to rule in favor of transfer.
The Complainant notes that the Respondent states that “NOSSCR is simply an acronym. It can stand for a lot of things like “Not Only Smart Students Can Read.”
But according to the Complainant, a search of the AcronymFinder database, an online database containing over 575,000 acronyms revealed only one meaning – “National Organization of Social Security Claimant’s Representatives.” Bolstering the fact that NOSSCR is a singular indicator of source is the fact that the NOSSCR.COM web page contains information and links dedicated to the representation of social security claimants. If the registrar were responsible for the creation of such a “parking page,” it is curious how goods and services advertised on that page are related to information and referrals for social security claimants if NOSSCR were not a source indicator. It would stand to reason that if NOSSCR had other meanings, these meanings would have also been represented on the NOSSCR.COM web page.
The Complainant has reason to believe that at the very least, there is a connection between the individuals referred to above and the Respondent and that they are acting in concert to prevent the Complainant from rightful ownership of the disputed domain name. The Complainant reiterates that the Respondent’s actions dating back to 2003 constitute bad faith use and registration of a domain name in contravention of ICANN’s rules, policies and regulations as well as traditional notions of fair play. Accordingly, the Complainant petitions this Panel to end this “shell game” once and for all and rule in favor of the transfer of the disputed domain name to the Complainant.
The Complainant owns the registered trademark NOSSCR and uses it to promote its services in the field of representation of Social Security and Supplemental Security Income claimants.
The Respondent has not given any convincing explanation, much less provided evidence, to explain why it registered the contested domain name.
The Respondent used the disputed domain name to point to web pages containing information that directly competes with the Complainant’s business.
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 Respondent does not deny the Complainant’s trademark rights in the NOSSCR mark, nor does it deny that the disputed domain name is identical to that mark.
The Panel finds that the Complainant has proven this element of the Policy.
The Respondent does not give any explanation to justify its choice of the disputed domain name, nor does it explain what it intends to do with that name.
The Complainant has presented evidence to the effect that the disputed domain name resolved to a search engine website offering links to websites providing information and commercial services related to the Social Security field. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), in particular because the Respondent is not engaged in that line of business and has not given any explanation for why such use is legitimate. See Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Complainant has presented evidence to the effect that the Respondent, and/or individuals associated with it, have, in the past, registered the disputed domain name specifically with the intent of intentionally attempting to attract, for commercial gain, Internet users to its web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its. This of course constitutes bad faith registration and use in the sense of Policy ¶ 4(b)(iv).
The Respondent does not specifically rebut the Complainant’s evidence: the Respondent merely denies the allegation. Further, the Respondent did not voluntarily disclose to the Panel the long history of the registration of the disputed domain name, history which tends to support the Complainant’s allegations.
Taking into account the Respondent’s lack of forthrightness, and the preponderance of the evidence, the Panel finds that the Complainant has satisfied its burden of proof for this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The Respondent’s request for a finding of reverse domain name hijacking is DENIED.
Accordingly, it is Ordered that the <nosscr.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 22, 2007
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