The North American Menopause Society v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1305001497882
Complainant is The North American Menopause Society (“Complainant”), represented by Gregory J. Krabacher of Bricker & Eckler LLP, Ohio, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nams.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR).
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013.
On May 4, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) confirmed by e-mail to the National Arbitration Forum that the <nams.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com (R27-LROR) has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com (R27-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 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@nams.org. Also on May 8, 2013, 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 5, 2013, 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:
1. Respondent’s <nams.org> domain name, the domain name at issue, is confusingly similar to Complainant’s NAMS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The North American Menopause Society, is North America’s leading nonprofit organization dedicated to promoting the health and quality of life of all women during midlife and beyond through an understanding of menopause and healthy aging. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the NAMS mark (Reg. No. 4,185,906, filed December 13, 2011, registered August 7, 2012). The disputed domain name <nams.org> is identical to Complainant’s NAMS mark in its entirety when the “.org” suffix is eliminated. Respondent has no connection or affiliation with Complainant, and has not received any license or consents, express or implied, to use the NAMS mark. Respondent organized its webpage to display sponsored links to Internet websites offering competing and related services by third parties, who, like Respondent, are unaffiliated with Complainant. Respondent is soliciting offers to purchase the domain name. The home page on this website features links that direct to pages containing pay-per-click advertising links. Respondent registered the <nams.org> domain name on April 22, 1996.
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 is North America’s leading nonprofit organization dedicated to promoting the health and quality of life of all women during midlife and beyond through an understanding of menopause and healthy aging. Complainant is the owner of a trademark registration with the USPTO for the NAMS mark (Reg. No. 4,185,906, filed December 13, 2011, registered August 7, 2012). While Respondent appears to reside and operate in Saint Vincent and the Grenadines, the Panel holds that Policy ¶ 4(a)(i) and UDRP precedent does not require that Complainant register its mark in the country that Respondent operates in, so long as Complainant establishes rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that, through its USPTO registration, Complainant has established rights in the NAMS mark dating back to December 13, 2011. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Complainant was founded in 1989 and has used the NAMS logo consistently since its creation in 1996. Complainant uses the NAMS logo on materials and publications related to annual scientific meetings and courses featuring acknowledged experts in the field, clinical practice materials, and for consumer information. Complainant uses its NAMS logo on its website, <www.menopause.org>, which is acknowledged as the world’s leading website on menopause. Complainant contends that from 1989 to the present, it has invested more than a million dollars to brand and promote itself under the name NAMS. Complainant promotes itself under the NAMS mark in paid advertisements placed in professional and consumer publications, on Complainant’s own publications, and on Complainant’s website, email communications to the thousands of members, lapel pins and other branded items, publications, and signage and materials in connection with programs, meetings, and conferences organized by Complainant. Therefore, the Panel may find that although Respondent registered the disputed domain name on April 22, 1996, Complainant has established common law rights in the NAMS mark through its use of the mark since 1996 under Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Thus, the Panel concludes that Complainant has established rights in the NAMS mark through its accrual of common law rights under Policy ¶ 4(a)(i). The Complaint alleges: “Complainant’s logo, which emphases the “NAMS” mark as shown below, has been used consistently since its creation in 1996 on the many publications and materials produced and distributed by Complainant”.
The disputed domain name <nams.org> is identical to Complainant’s NAMS mark in its entirety when the “.org” suffix is eliminated. Respondent’s addition of a generic top-level domain (“gTLD”) such as “.org” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). Accordingly, the Panel concludes that Respondent’s <nams.org> domain name is identical to Complainant’s NAMS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Again, the Complainant alleges: “Complainant’s logo, which emphases the “NAMS” mark as shown below, has been used consistently since its creation in 1996 on the many publications and materials produced and distributed by Complainant”. Further, Complainant does not dispute that Respondent registered the <nams.org> domain name on April 22, 1996. There is no proof or even an allegation by Complainant that its claimed common law rights in the NAMS mark existed at or before the time the disputed domain name was registered. While Complainant has established its own rights in the NAMS mark, it has not proven those rights trump those of Respondent which are indisputably of record.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has not been established.
Registration and Use in Bad Faith
Complainant has not submitted any evidence to support a finding that Respondent registered and is using the disputed domain names in bad faith. Only assertions of bad faith are presented to this Panel. Mere assertions of bad faith are insufficient for a Complainant to establish bad faith. The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has not been established
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: June 9, 2013
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