The State Legislative Leaders Foundation
v. Sang Yoon a/k/a Alpha Programs, Inc.
Claim Number: FA0209000124863
PARTIES
Complainant
is The State Legislative Leaders
Foundation, Centerville, MA (“Complainant”) represented by Maya Alexandri, of Wilmer, Cutler & Pickering.
Respondent is Sang Yoon a/k/a Alpha Programs, Inc., Puyallup, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <sllf.org>,
registered with Go Daddy Software.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 10, 2002; the Forum received a hard copy of the
Complaint on September 17, 2002.
On
September 10, 2002, Go Daddy Software confirmed by e-mail to the Forum that the
domain name <sllf.org> is
registered with Go Daddy Software and that the Respondent is the current
registrant of the name. Go Daddy
Software has verified that Respondent is bound by the Go Daddy Software
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 20, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 10, 2002, 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@sllf.org by e-mail.
A
timely Response was received and determined to be complete on October 2, 2002.
On October 17, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<sllf.org> domain name is
confusingly similar to Complainant’s trademarks, STATE LEGISLATIVE LEADERS
FOUNDATION and SLLF. Respondent has no
rights or legitimate interests in the <sllf.org>
domain name. Respondent registered and
used the <sllf.org> domain
name in bad faith.
B.
Respondent
Respondent
says “I do not even wish to contest to retain ownership of the domain name
sllf.org.”
FINDINGS
Complainant,
the State Legislative Foundation (“SLLF”), is a non-profit organization with
its principal offices in Centerville, Massachusetts.
SLLF
is a unique organization, international in its scope, and dedicated exclusively
to serving state legislative and parliamentary leaders. It is the only such private,
non-profit organization in the United States or Europe. SLLF conducts independent research on
critical public policy issues and aspects of leadership, publishes newsletters
and a political reference text, The Handbook of State Legislative Leaders,
and hosts numerous conferences and programs.
In 1998, SLLF created SLLF/Europe for the purpose of bringing together
key parliamentary leaders from across Europe to examine public policy issues of
mutual interest. Additionally, the
United States Agency for International Development has awarded SLLF a major
grant to implement training and education programs for Indonesian parliamentary
leaders.
SLLF’s
constituents include all 355 state legislative leaders, and thousands of unique
visitors view Complainant’s web site, <sllf.org>, every
month. SLLF depends on its web site to
generate business and inform its members of news and developments.
Since
1972, Complainant has made substantial, continuous, and exclusive use of “STATE
LEGISLATIVE LEADERS FOUNDATION” and “SLLF” as the name of its organization, as
a result of which the name is known to the public as an indicator of source
that designates Complainant, its research and publications, and its other
products. Since 1997, Complainant has
extended its distinctive and well-known brand to the Internet, with its
respected <sllf.org> web site.
Complainant
inadvertently and unknowingly permitted its domain name registration for <sllf.org>
to expire on or about August 31, 2002.
Respondent registered <sllf.org> on August 31, 2002.
Complainant
contacted Respondent by email twice on September 2, 2002. In the first email, Respondent was requested
to return the domain name registration and update the nameserver information
for the domain name. Respondent refused
to return the domain name to Complainant's control at that time, saying that he
was experienced in registering domain names belonging to others and that he
“typically work[s] something out with previous owners.”
In
the second September 2, 2002 email, Complainant’s President, Steve Lakis,
informed Respondent that the domain name <sllf.org> was critical
to Complainant and that Complainant would suffer prejudice from having to
establish a new web site. Mr. Lakis
invited Respondent to suggest means of resolving the problem. Respondent replied with two options: (1) he would “[s]ell the domain name if the
price is acceptable,” or (2) “We retain the domain name and you have full use
of it. In return, we would have the
rights to advertise on bottom [sic] of your index page with a small text
link.” Respondent also stated that he
had updated the nameserver information for the <sllf.org>
registration to point back to Complainant's content, and that Complainant’s
content would once again be visible under the <sllf.org> name
within a day or two.
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’s
marks STATE LEGISLATIVE LEADERS FOUNDATION and SLLF have acquired
distinctiveness through extensive and exclusive use and the fame and reputation
of Complainant.
Respondent’s
domain name <sllf.org> is confusingly similar to Complainant’s
trademark STATE LEGISLATIVE LEADERS FOUNDATION because “sllf” is the
abbreviation for STATE LEGISLATIVE LEADERS FOUNDATION. See EFG Bank European Fin. Group
SA v. Jacob Found., No. D2000-0036 (WIPO Mar. 22, 2000) (<efgpb.com>
confusingly similar to “EFG Private Bank” because consumers familiar with
banking services are likely to “infer that ‘pb’ is the abbreviation for
‘private bank’”). Moreover,
Respondent’s domain name <sllf.org> is identical to Complainant’s
trademark SLLF. See Kis v. Anything.com,
Ltd., No. D2000-0770 (WIPO Nov. 20, 2000) (<kis.com> identical to
Complainant’s trademark KIS).
Accordingly,
the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent
has no legitimate interest in the domain name <sllf.org>. Respondent has never used the disputed
domain name as a service mark or trademark.
See The Rittenhouse Dev. Co. v. Domains For Sale, Inc.,
FA105211 (Nat. Arb. Forum Apr. 8, 2002) (no evidence that Respondent is known
as <therittenhousehotel.com>; therefore, Respondent has failed to satisfy
Policy ¶ 4(c)(ii)). Respondent is not
commonly known by the disputed domain name. The fame and recognition associated
with Complainant’s established marks creates a presumption that Respondent does
not have any rights or legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that Respondent does not have rights in a domain name when Respondent is not
known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Moreover, the fact that Complainant once
held registration of the disputed domain name permits an inference that
Respondent has no rights or legitimate interests in the name. See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that Complainant’s prior registration of the same domain name is a
factor in considering Respondent’s rights or legitimate interest in the domain
name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
SLLF
is the only organization in the United States or Europe dedicated
exclusively to serving the needs of state legislative and parliamentary
leaders. Respondent is therefore
unjustly enriched by more than a quarter of a century of goodwill that
Complainants have built up in the STATE LEGISLATIVE LEADERS FOUNDATION and SLLF
trademarks. Respondent registered and
uses the <sllf.org> domain name to benefit from Complainant’s
goodwill and to create confusion as to the source or sponsorship of his
website. Respondent’s actions
demonstrate bad faith registration and use within the meaning of Policy ¶
4(b)(iv). See Pillsbury Co. v.
Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding
registration of a domain name identical to Complainant’s mark to be in bad
faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and Complainant); see
also Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002)
(finding that, where the Respondent’s <fluor.biz> domain name was
identical to the Complainant’s FLUOR mark, Internet users would likely believe
an affiliation between the Respondent and Complainant).
Respondent’s registration and use of its
confusingly similar domain name, despite knowledge of Complainant’s preexisting
rights in its mark, represents bad faith registration and use under the
Policy. See Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration); see also
Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected
with Complainant and its products that the use of the domain names by
Respondent, who has no connection with Complainant, suggests opportunistic bad
faith).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby GRANTED.
Accordingly, it is Ordered that the
domain name <sllf.org> be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 25, 2002
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page