Claim Number: FA0806001211341
PARTIES
Complainant is Museum of Science and Industry (“Complainant”), represented by Michelle
C Burke, of McDermott Will & Emery LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <msichicago.com>, registered with Moniker
Online Services, Inc.
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.
David P. Miranda, Esq., as Panelist.
PROCEDURAL HISTORY
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 <msichicago.com> 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 postmaster@msichicago.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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
C. Additional Submissions
Complainant submits an additional submission contending
that Respondent has failed to demonstrate any rights to, or legitimate
interests in <msichicago.com>.
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”).
FINDINGS
Complainant has failed to establish that it
has sufficient common law rights in the trademark MSI
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 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 <msichicago.org> 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 “
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.
In
Middle
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 <msichicago.org> 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).
DECISION
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 <msichicago.com> domain name NOT BE TRANSFERRED from
Respondent.
David P. Miranda, Esq., Panelist
Dated: August 12, 2008
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