MS Coalition v. Julio Canario
Claim Number: FA1205001441806
Complainant is MS Coalition (“Complainant”), represented by Carolina A. Latour, Florida, USA. Respondent is Julio Canario (“Respondent”), Costa Rica.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <multiplesclerosiscoalition.org>, registered with Wild West Domains, LLC (R120-LROR).
The undersigned certifies that he has acted independently and impartially and to the best of his her knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2012; the National Arbitration Forum received payment on May 15, 2012.
On May 2, 2012, Wild West Domains, LLC (R120-LROR) confirmed by e-mail to the National Arbitration Forum that the <multiplesclerosiscoalition.org> domain name is registered with Wild West Domains, LLC (R120-LROR) and that Respondent is the current registrant of the name. Wild West Domains, LLC (R120-LROR) has verified that Respondent is bound by the Wild West Domains, LLC (R120-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@multiplesclerosiscoalition.org. Also on May 16, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <multiplesclerosiscoalition.org> domain name, the domain name at issue, is confusingly similar to Complainant’s MS COALITION mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(1) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the MS COALITION mark, which Complainant uses in connection with providing educational programs to people with multiple sclerosis. Complainant has registered the MS COALITION mark (Reg. No. 3,154,951 filed September 15, 2004; registered October 10, 2006). The registration of a mark with a trademark authority is evidence of rights in a mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). These rights satisfy Policy ¶ 4(a)(i) even if the registrations exist in a jurisdiction other than that which the respondent resides in. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Additionally, the rights derived from USPTO trademark registrations provide a registrant with rights in the mark dating back to the filing date of the mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). As such, Complainant has rights in the MS COALITION mark pursuant to Policy ¶ 4(a)(i).
“MS” is simply the well-known and widely-used abbreviation of “multiple sclerosis” and Respondent’s use of the unabbreviated form, rather than “MS,” does not negate a finding of confusing similarity. Respondent’s replacement of “MS” with “multiple sclerosis” does not differentiate the domain name at issue from the MS COALITION mark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). The Panel also finds that the deletion of spaces and the addition of the generic top-level domain (“gTLD”) “.org” is irrelevant to the purposes of a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, Respondent’s <multiplesclerosiscoalition.org> domain name is confusingly similar to the MS COALITION mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not licensed to use the MS COALITION mark and has no business relationship with Complainant. Additionally, the WHOIS record for the <multiplesclerosiscoalition.org> domain name that Complainant provides lists “Julio Canario” as the domain name registrant. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), found that the WHOIS record and the authorization (or lack thereof) to use the mark at issue are strong indicators of whether or not a respondent is commonly known by a disputed domain name. Therefore, Respondent is not commonly known by the <multiplesclerosiscoalition.org> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s lack of rights and legitimate interests is further demonstrated by Respondent’s use of the <multiplesclerosiscoalition.org> domain name. Respondent uses the <multiplesclerosiscoalition.org> domain name to display a link to an online pharmacy so that Internet users buy Viagra based on information Respondent displays regarding the allegedly beneficial effect taking Viagra has for multiple sclerosis patients. Respondent legitimizes this information by displaying it in on the website associated with <multiplesclerosiscoalition.org> domain name, which copies, in large part, Complainant’s website. Therefore, Respondent’s use of the <multiplesclerosiscoalition.org> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent intended for the <multiplesclerosiscoalition.org> domain name to create confusion as to the source of the disputed domain name so that Respondent could divert Internet users to the domain name at issue in order to take commercial advantage of their mistakes. The <multiplesclerosiscoalition.org> domain name resolves to a website that is largely copied from Complainant’s website but includes information from Respondent regarding the treatment benefits of Viagra for people with multiple sclerosis. The resolving website also includes a link to an online pharmacy, where Internet users can buy Viagra. Therefore, the Panel finds that Respondent intended for the <multiplesclerosiscoalition.org> domain name to divert Internet users, for commercial gain, away from their intended online destination and instead to the <multiplesclerosiscoalition.org> domain name. Respondent causes this diversion by establishing a likelihood of confusion regarding the source of the <multiplesclerosiscoalition.org> domain name. As a result, the Panel finds that Respondent therefore registered and is using the <multiplesclerosiscoalition.org> domain name in bad faith under Policy ¶ 4(b)(iv). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <multiplesclerosiscoalition.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 11, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page