National Arbitration Forum




Museum of Science and Industry v. Sam Wilkinson

Claim Number: FA0806001211341



Complainant is Museum of Science and Industry (“Complainant”), represented by Michelle C Burke, of McDermott Will & Emery LLP, Illinois, USA.  Respondent is Sam Wilkinson (“Respondent”), Cook Islands.



The domain name at issue is <>, registered with Moniker Online Services, Inc.



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.


David P. Miranda, Esq., as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 23, 2008.


On June 24, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name.  Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. 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 July 1, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 21, 2008 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 by e-mail.


An electronic Response was received on July 19, 2008.  The Response was deemed deficient pursuant to ICANN Rule 5 because it was not received in hard copy by the response deadline.  The Response was considered by the Panel.


Complainant submitted an Additional Submission on July 23, 2008 which was timely and complied with Supplemental Rule 7. 


On July 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A. Complainant

Complainant Museum of Science and Industry (“Complainant”) seeks the transfer of domain name <> from Respondent Sam Wilkinson (“Respondent”).  Complainant contends that it is the owner of common law rights of the marks MUSEUM OF SCIENCE AND INDUSTRY, MSI, and MSI CHICAGO.  Complainant contends it has been operating its museum under the name Museum of Science and Industry since 1933, and that the Museum of Science and Industry is world reknowned and named one of the top 15 museums in the world by Life Magizine and <>.  Complainant contends that it has been using the mark MSI since 1978, and attaches as an Exhibit its website located at <> registered and used since August 28, 1995.  Complainant’s website receives more than 3.6 million visitors a year and contains more than 1,000 pages of original content about the museum.  Complainant contends that the domain name at issue is confusingly similar to Complainant’s marks and is likely to misleadingly divert web users trying to locate information about the museum.  Complainant contends that Respondent has no rights or legitimate interests in the domain name, is not using the domain name in connection with a bona fide offering of goods or services, and does not currently have an active website using the domain name.  Complainant further contends that the domain was registered in bad faith because Respondent is on notice of Complainant’s ownership of rights in Complainant’s mark in the fame of the marks, and has taken no steps to cancel or transfer the registration of the domain name to Complainant.


B. Respondent

Respondent contends that the domain name is not being used in bad faith, that he registered the domain name with the intention of creating an informational website entitled “Minority Serving Institutions of Chicago,” which is abbreaviated as “MSIChicago.”  Respondent contends that Complainant does not own a trademark for MSIChicago, and is not commonly known as MSIChicago.  Respondent further contends that Complainant is commonly known as the Museum of Science and Industry and the domain name does not contain the expression Museum of Science and Industry, or any of those individual words.


C. Additional Submissions

Complainant submits an additional submission contending that Respondent has failed to demonstrate any rights to, or legitimate interests in <>.  Further contending that Respondent’s website contains no content aside from an “under construction” notice and certain advertising links.  Complainant contends that Respondent’s contention that it is preparing a website for Minority Serving Institutions of Chicago is without any legitimate proof.  Complainant further contends that Respondent recieves click through fees for each consumer advertised in his website, which is not a bonafide offering of goods and services and Respondent’s failure to make active use of the domain name supports a finding of bad faith registration and use.


Complainant also contends that Respondent’s response was deficient, as it was not properly served.  Respondent submitted an electronic Response on July 19, 2008.  The Forum deemed the Response deficient pursuant to ICANN Rule 5 because the Response was not received in hard copy prior to the submission deadline, however, the Panel will consider Respondent’s submission.  See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).



Complainant has failed to establish that it has sufficient common law rights in the trademark MSI CHICAGO on which the Complaint is based.  It is unnecessary for the Panel to examine the second and third elements of the policy, and transfer is denied.



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.


Identical and/or Confusingly Similar


Complainant asserts it has established common law rights in its marks, including MSIChicago.  Respondent however, asserts that Complainant does not have sufficient rights under the UDRP to the mark MSIChicago.  The burden of proof is on Complainant to establish common law rights in support of its position, it contends that it has been using the domain <> since 1995, and offers as an exhibit a photograph of its website.


Complainant appears to have a well known and respected reputation in the industry for its name “Museum of Science and Industry.”  Its advertising and products are also promoted under the name “Museum of Science and Industry.”  However, at issue in this proceeding is the acronym MSIChicago.  Complainant must meet its burden of proof in showing that it has sufficient common law rights and secondary meaning and meets the UDRP standards for MSIChicago.


In order to achieve sufficient common law rights in a mark, a Complainant must set forth evidence that the mark achieved sufficient secondary meaning that predates the disputed domain name’s registration.  In order to achieve secondary meaning under the UDRP, the panel in Tomlinson Affiliate Serv. Inc. v. Tex. Int’l Prop. Assocs., FA 1138312 (Nat. Arb. Forum Mar. 11, 2008) cited the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” which states that “a complainant must show that the name has become a distinctive identifier associated with the complainant of its goods and services.  Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.’”


In State Fund Mut. Ins. Co. v. QTK Internet, the panel held that, while the complainant had been operating as “State Fund Mutual Companies” since April of 1984, the panel held that the complainant had not established rights in the acronym “SFM” until the complainant began using the SFM mark in commerce in August of 2006.  FA 1183176 (Nat. Arb. Forum July 25, 2008).  In its complaint, State Fund Mutual Companies alleged that it began using the SFM mark internally in 1996 and in various promotional materials in 1997.  However, the panel held that the complainant only used the SFM designation as a shorthand abbreviation to its operating name and the STATE FUND MUTUAL COMPANIES word mark.  The panel held that neither use was sufficient to establish common law rights in the SFM mark as it was not a means used to identify complainant’s goods or services in commerce.  Id.


In Middle East Media Research Inst.e v. Oakwood Servs. Inc., the complainant was held to have common law rights in the MEMRI mark as a result of its submission of “extensive evidence” that media commentators and outlets identified the complainant’s products by the MEMRI acronym and mark.  FA 1073966 (Nat. Arb. Forum Nov. 7, 2007).  In short, the panel looked to the independent usage of the MEMRI mark in commerce rather than the association between the complainant and the possibility of an acronym for its name.  Id.  Similarly, in Royal Credit Union v., the panel found common law rights in the RCU mark, as well as the spelled out ROYAL CREDIT UNION mark, by virtue of use in commerce as a means of identifying the complainant’s goods and services.  FA 1143489 (Nat. Arb. Forum Mar. 21, 2008).


A complainant establishes rights in an acronym under the UDRP by showing secondary meaning in the acronym just like any other common law trademark.  Secondary meaning is shown through extensive use in commerce and evidence that customers identify the complainant’s goods and services with the particular acronym in question.  Therefore, regardless of the nature of the underlying mark for which the acronym stands, the proper regarding rights in a mark is whether the complainant has presented sufficient evidence of secondary meaning in the acronym in question.


The only proof Complainant submits is the use of the domain name <> as a domain name.  The Panel finds Complainant has failed to submit sufficient proof to establish common law rights in the mark MSIChicago under the UDRP, and thus it is unable to establish all required elements of a UDRP claim.


In light of this finding, it is unnecessary to determine whether Respondent has rights or legitimate interests in respect of the domain name, or whether it has registered and is using the domain name in bad faith.  See I4 Solutions, Inc. v. Miani, FA 1153871 (Nat. Arb. Forum April 24, 2008) (finding unnecessary to examine Policy ¶¶ 4(a)(i) and (ii), as Complainant must succeed under all three portions in order to grant the requested relief; thus, a denial under Policy ¶ 4(a)(iii) leads the Panel to decline to analyze the other portions of the Policy); see also Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary).



Since Complainant failed to establish the first element required under the ICANN Policy, the Panel concludes that relief shall be DENIED.


Accordingly, it is Ordered that the <> domain name NOT BE TRANSFERRED from Respondent.




David P. Miranda, Esq., Panelist
Dated: August 12, 2008




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