Muckleshoot Indian Tribe v. GeorgiaTribeofEasternCherokee
Claim Number: FA1210001466034
Complainant is Muckleshoot Indian Tribe (“Complainant”), represented by Scott G. Warner of Garvey Schubert Barer, Washington, USA. Respondent is GeorgiaTribeofEasternCherokee (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <muckleshootindians.com>, registered with GoDaddy.com, LLC.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 5, 2012.
On October 9, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <muckleshootindians.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@muckleshootindians.com. Also on October 9, 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 November 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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:
1. Respondent’s <muckleshootindians.com> domain name is confusingly similar to Complainant’s MUCKLESHOOT mark.
2. Respondent does not have any rights or legitimate interests in the <muckleshootindians.com> domain name.
3. Respondent registered or used the <muckleshootindians.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
1. Complainant is the Muckleshoot Indian Tribe, which is a federally recognized tribe descendant of the Coast Salish people of Puget Sound. The term “Muckleshoot” is derived from the native name of the prairie on which the Muckleshoot Reservation was established in 1857.
2. Complainant currently uses the MUCKLESHOOT mark in relation to its expanded governmental functions, including a housing authority and a tribal college.
3. Complainant registered several marks with the United States Patent and Trademark Office (“USPTO”) incorporating the MUCKLESHOOT name, including the MUCKLESHOOT INDIAN TRIBE mark (Reg. No. 3,259,336 registered July 3, 2007). See Annex I.
4. Respondent, the Georgia Tribe of Eastern Cherokee, obtained the <muckleshootindians.com> domain name as a donation from its original registrant.
5. The resolving website leads to the homepage for the Eastern Cherokee tribe. Complainant contacted Respondent to request a transfer of the domain name, and its offer to pay filing and registration fees was rejected. Respondent eventually solicited an offer from Complainant for an amount unrelated to the cost of registration and maintenance, but rather related to building its “Museum and Ceremonial Center.” Complainant rejected that offer, and a month later, Respondent asked Complainant for a “transfer fee” of $15,000.
6. The <muckleshootindians.com> domain name is identical to Complainant’s MUCKLESHOOT INDIANS mark.
7. Respondent lacks rights or legitimate interests in the domain name, because Respondent does not have authorization to use the MUCKLESHOOT INDIANS mark and is not known by the disputed domain name.
8. Respondent does not use the <muckleshootindians.com> domain name for any noncommercial or fair use.
9. Respondent registered and uses the <muckleshootindians.com> domain name in bad faith by intending sell the domain name for consideration in excess of the cost associated with obtaining the domain name.
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
(3) 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 claims to own rights in its MUCKLESHOOT INDIAN TRIBE mark through its USPTO registration (Reg. No. 3,259,336 registered July 3, 2007). The Panel finds that Complainant’s USPTO registration sufficiently demonstrates its rights in the MUCKLESHOOT INDIAN TRIBE mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Complainant contends that the <muckleshootindians.com> domain name is identical to its MUCKLESHOOT INDIAN TRIBE mark because the domain name merely removes the term “tribe” from the mark. The Panel observes that the disputed domain name also removes the space between the words of the mark and includes the letter “s” at the end of the word “indian,” and includes the generic top-level domain (“gTLD”) “.com.” The Panel determines that the <muckleshootindians.com> domain name is confusingly similar to Complainant’s MUCKLESHOOT INDIANS mark due to the an eliminated space, eliminated term “tribe,” the addition of an extra letter, and a gTLD. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007) (finding that the addition of the letter “s” to a registered trademark in a contested domain name is not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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.”).
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.”).
Complainant argues that Respondent has no authorization to use its MUCKLESHOOT mark in any way and that Respondent is not known by the <muckleshootindians.com> domain name. The Panel notes that the WHOIS information identifies the registrant of the domain name as “GeorgiaTribeofEasternCherokee,” and determines that the registrant information does not demonstrate that Respondent is commonly known by the
<muckleshootindians.com> domain name, and as a result Respondent cannot claim rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent fails to use the <muckleshootindians.com> domain name for a legitimate business or a noncommercial or fair use. Complainant claims that Respondent’s only purpose in obtaining the domain name is to redirect users to its own Eastern Cherokee website. The Panel notes that Complainant provides evidence of Respondent’s webpage, to which Complainant claims the disputed domain name redirects. The Panel observes that the resolving webpage is an “Official Site” of Respondent’s Georgia Tribe of Eastern Cherokee, and includes historical information, a mission statement, shopping, and opportunities to donate; the Panel also observes that Complainant provides evidence showing a screenshot of its own casino webpage, featuring information on entertainment, dining, and shopping. See Exhibits C and D. In Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003), the panel stated that the respondent did not use the domain name within the bounds of the Policy because the respondent took advantage of the complainant’s mark by misdirecting Internet users to a competing commercial website. The Panel concludes that Respondent’s Eastern Cherokee website is a competing commercial website, and concludes that Respondent fails to use the <muckleshootindians.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant argues that Respondent registered or acquired the <muckleshootindians.com> domain name for the purpose of selling the registration. Complainant contends that because Respondent has no legitimate interest in the disputed domain name, its only intention in registering it was to make a monetary gain at Complainant’s expense in exchange for transferring the domain name. Complainant describes in its “Facts” section the negotiations and offers between itself and Respondent, wherein Respondent ultimately offered the domain name to be transferred in exchange for a sum of $15,000 in order to build its cultural center. Complainant argues that its request for monetary compensation in excess of out-of-pocket registration costs demonstrates Respondent’s bad faith. The panel in World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000), concluded that the respondent’s registration and use of the domain name was in bad faith due to the respondent’s offer to sell the domain name for more than any out-of-pocket costs. The Panel similarly finds that Respondent’s attempt to secure $15,000 from Complainant in order to transfer the <muckleshootindians.com> domain name to Complainant demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(i).
Complainant asserts that Respondent failed to use the <muckleshootindians.com> domain name and failed to demonstrate plans to use the domain name. The Panel finds that because the <muckleshootindians.com> domain name resolves to a website found at a different domain name, specifically Respondent’s <georgiatribeofeasterncherokee.com> domain name, Respondent fails to make an active use of the <muckleshootindians.com> domain name and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <muckleshootindians.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: November 21, 2012
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