Center for Science in the Public Interest v. Center for Consumer Freedom
Claim Number: FA0210000128796
PARTIES
Complainant is Center
for Science in the Public Interest, Washington, DC (“Complainant”) represented
by Elizabeth Kingsley, of Harmon, Curran, Spielberg & Eisenberg,
LLP. Respondent is Center for
Consumer Freedom, Washington, DC (“Respondent”) represented by Mark Ungerman,
of Fulbright & Jaworski L.L.P.
REGISTRAR AND DISPUTED
DOMAIN NAMES
The domain names at
issue are <cspinot.com> and <smartmouth.org>,
registered with Network Solutions, Inc.
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.
Honorable Paul A. Dorf
(Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (the “Forum”) electronically on October
31, 2002; the Forum received a hard copy of the Complaint on November 5, 2002.
On November 1, 2002, Network
Solutions, Inc. confirmed by e-mail to the Forum that the domain names <cspinot.com>
and <smartmouth.org> are registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, 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 November 7, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 27, 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@cspinot.com and postmaster@smartmouth.org by e-mail.
A timely Response was
received and determined to be complete on December 4, 2002.
Complainant filed a
timely Additional Submission on December 9, 2002.
On December 18, 2002,
pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as
Panelist.
RELIEF SOUGHT
Complainant requests
that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends
that the domain names at issue are confusingly similar to marks in which
Complainant has rights; that Respondent has no rights or legitimate interest in
the domain names at issue; and that the domain names at issue were registered
in bad faith.
B. Respondent
Respondent contends that
the domain names at issue are not identical or confusingly similar to the
trademarks or services marks in which Complainant has rights; that Respondent
has rights and legitimate interests in the domain names at issue; and that
Respondent did not register the domain names at issue in bad faith.
C. Additional
Submissions
Complainant’s Additional
Submission reinforces the contentions contained in its original Complaint.
FINDINGS
Complainant is a
non-profit education and advocacy organization focusing the safety and
nutritional quality of the food supply and promoting awareness of food,
nutrition, diet, alcohol, the environment and health issues. Complainant uses its registered marks to
promote health through educating the public about nutrition and alcohol; to
represent citizens’ interests before legislative, regulatory and judicial
bodies, and to work to ensure advances in science are used for the public
good. Complainant also publishes a
newsletter and other documents.
Complainant is the
registered owner of a trademark/service mark for CENTER FOR SCIENCE IN THE
PUBLIC INTEREST and CSPI. The first use
for each of the marks by Complainant dates back to 1971.
Complainant applied for
a trademark/service mark in October, 2002 for SMART-MOUTH.ORG.
Respondent is now known
as “The Center for Consumer Freedom” and was previously known as “The Guest
Choice Network.” Respondent is a
coalition of more than 30,000 restaurant and tavern operators working to
protect the public’s right to a full menu of dining and entertainment
choices.
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.
Identical and/or
Confusingly Similar
The first domain name at
issue <cspinot.com> incorporates Complainant’s CSPI mark along
with a generic word. The addition of
the word does not dilute the trademark/service mark and could cause confusion
among Internet users as the source and sponsorship of the website. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant combined with a
generic word or term).
The second domain name
at issue, <smartmouth.org>, is an exact duplicate of the
domain name currently in use by Complainant (<smart-mouth.org>) as part
of its campaign to promote nutrition and healthy eating among youngsters. An application to the U.S. Patent and
Trademark Office was submitted in October, 2002 for SMART-MOUTH.ORG. The deletion of the hyphen is not enough to
set the domain name at issue apart from Complainant’s mark. See Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark).
Respondent’s
registration of both of the domain names at issue, given the similarities
between Complainant’s trademark/service marks and its own websites, suggests
that Respondent may have registered the names to disrupt Complainant’s
business. See EthnicGrocer.com, Inc.
v. Unlimited Latin Flavors, Inc., FA 94385, (Nat. Arb. Forum July 7, 2000)
(finding that the minor degree of variation from Complainant’s marks suggests
that Respondent, Complainant’s competitor, registered the names primarily for
the purpose of disrupting Complainant’s business).
Rights or Legitimate
Interests
Respondent has no rights
or legitimate interests in the domain names at issue as it has not demonstrated
preparations to use the domain names in connection with a bona fide offering of
goods or services. Further, Respondent
has provided no evidence that it is commonly known by either of the domain
names at issue. See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat.
Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because
Respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use).
Registration and Use in
Bad Faith
As the positions of
Complainant and Respondent are generally opposed to each other, it appears that
Respondent’s primary purpose in registering the domain names at issue is to
divert internet users to Respondent’s website. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668
(Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered
and used an infringing domain name to attract users to a website sponsored by
Respondent).
Further, given the
subtle differences between the domain names at issue and Complainant’s
trademarks/service marks and websites, it appears that Respondent attempted to create
confusion among Internet users looking for Complainant’s websites. See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000)(finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website).
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 names <cspinot.com> and <smarthmouth.org>
be transferred from Respondent to Complainant.
Honorable Paul A. Dorf
(Ret.), Panelist
Dated: January 6, 2003
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page