Mothers Against Drunk Driving v. Hyun-Jun
Shin
Claim
Number: FA0304000154098
Complainant is
Mothers Against Drunk Driving, Irving, TX, USA (“Complainant”) represented
by Heather C. Brunelli, of Thompson & Knight LLP. Respondent
is Hyun-Jun Shin, Gyeongbuk, KOREA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <madd.com>, registered with Hangang
Systems, Inc. d/b/a Doregi.Com.
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. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 4, 2003; the Forum received a hard copy of the
Complaint on April 7, 2003.
On
April 5, 2003, Hangang Systems, Inc. d/b/a Doregi.Com confirmed by e-mail to
the Forum that the domain name <madd.com> is registered with
Doregi.Com and that Respondent is the current registrant of the name. Doregi.Com
has verified that Respondent is bound by the Doregi.Com 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
April 14, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 5, 2003 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@madd.com by e-mail. Both English and Korean copies
of the Commencement Notification and Complainant were included.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
Mat 15, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's
Supplemental Rules and any rules and principles of law that the Panel deems
applicable, without the benefit of any Response from Respondent.
Since
the Respondent failed to respond to the translated Commencement Notification
and Complaint, the Panel determines, in accordance with Rule 11, that the
remaining Administrative Proceeding may be conducted in English.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <madd.com>
domain name is identical to Complainant’s MADD mark.
2. Respondent does not have any rights or
legitimate interests in the <madd.com> domain name.
3. Respondent registered and used the <madd.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Mothers Against Drunk Driving, is a non-profit organization devoted to the
mission to stop drunk driving, and other related issues. Complainant, which
operates under the acronym “MADD,” was founded in 1980 and has grown into one
of the largest crime victims organizations in the world. Complainant has used
the MADD mark since its inception in 1980.
Complainant
holds U.S. Patent and Trademark Office Reg. No. 1,250,706 for the MADD mark,
which was registered on September 6, 1983. Complainant holds a variety of other
registrations and applications for trademarks and service marks that
incorporate its MADD mark, including, inter alia: Reg. No. 2,187,625 for
MADD DISH; Reg. No. 2,354,324 for MADD MUNCHIES; and Reg. No. 1,998,125 for
MADD VICTIM SERVICES. Complainant has also registered or filed applications for
its MADD mark in multiple countries throughout the world, including Australia,
Canada and Japan.
Complainant has
operated from the <madd.org> domain name since April 22, 1996, and has
maintained a website at that domain name for approximately seven years.
Complainant has
invested substantial effort, including significant expenditures, to develop
goodwill in the MADD mark and to cause the relevant consuming public to
recognize the MADD mark as distinctly designating its services. Complainant’s
advertising and promotion of its MADD mark for the past twenty years has made
the mark famous.
Respondent,
Hyun-Jun Shin, registered <madd.com> on December 18, 2002.
Complainant’s investigation of Respondent’s use of the disputed domain name
indicates that shortly after Respondent registered <madd.com>, the
website located at the domain name advertised that the domain name registration
was for sale. Respondent suggested, in correspondence with an agent of
Complainant, that a “reasonable price” for the subject registration was
$20,000.
Subsequent to
Complainant’s inquiry relating to sale of the subject domain name, on March 18,
2003, the <madd.com> domain name redirected visitors to a
pornographic website located at <karasxxx.com>.
On March 20,
2003, the website connected to the domain name again contained only a notice
that the domain name registration was for sale.
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."
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.
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.
Complainant has
established rights in the MADD mark through registration with various
international trademark authorities and continuous use of the mark since at
least 1980.
Respondent’s <madd.com>
domain name is identical to Complainant’s MADD mark. Respondent’s domain
name incorporates Complainant’s mark in its entirety, and only deviates by the
addition of the top-level domain “.com.” Because top-level domains are a
required element in domain names, their presence is inconsequential in
discerning “identicality” under Policy ¶ 4(a)(i). Internet users seeking
Complainant’s website are likely to key <madd.com> into the
browser because the domain name incorporates the MADD trademark and the most
common URL suffix “.com.” See
Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir.
2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to
buy things or gather information on the Internet, they need an easy way to find
particular companies or brand names. The most common method of locating an
unknown domain name is simply to type in the company name or logo with the
suffix .com"); see also Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s
submission to the Panel asserts that Respondent does not have any rights or
legitimate interests in the <madd.com> domain name. Because
Respondent failed to submit a Response, Complainant’s assertions are unopposed
and the Panel is permitted to accept all reasonable inferences contained in the
Complaint as true unless clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Additionally,
because Complainant has provided proof of valid, subsisting rights in a mark
that is identical to the domain name in question and alleged that Respondent
lacks rights or legitimate interests in <madd.com>, the burden
shifts to Respondent. By not responding, Respondent has failed to assert any
circumstances that could substantiate its rights or interests in the subject
domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (finding that once Complainant asserts that Respondent has no rights
or legitimate interests in respect of the domain name, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Uncontested
circumstances indicate that Respondent’s domain name registration has
continually been advertised for sale. Respondent’s apparent willingness to
dispose of its rights in the <madd.com> domain name suggests that
it lacks rights or legitimate interests in the domain name. Further, in
conjunction with its attempts to sell its rights in the domain name, Respondent
has used <madd.com> to divert unsuspecting Internet users to a
pornographic website located at <karasxxx.com>. Such diversionary use of
the domain name works to tarnish and dilute Complainant’s MADD mark. Therefore,
Respondent fails to establish rights in the domain name under Policy ¶¶ 4(c)(i)
or (iii). See Hewlett-Packard Co.
v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where Respondent registered
the domain name with the intention of selling its rights); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
There is no
evidence before the Panel that suggests Respondent is commonly known by the
“madd” identifier, or that Respondent is affiliated with a legitimate business
that uses the <madd.com> domain name as its identity. Moreover,
Respondent is not licensed or authorized by Complainant to make use of the MADD
mark in connection with any purpose or use. Respondent’s use of the domain name
to link to a pornographic website with no use of “madd” in its content suggests Respondent does not have a
legitimate relationship with the “madd” second-level domain. Because of the
above circumstances, the Panel concludes that Respondent fails to establish
rights in <madd.com> under Policy ¶ 4(c)(ii). See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the <madd.com> domain name in bad faith
pursuant to Policy ¶ 4(b)(i). Specifically, uncontested evidence indicates that
Respondent’s domain name, at various times, resolved to a website indicating
that the domain name registration was for sale. Further, Respondent was seeking
to sell its rights for $25,000, a figure in excess of typical out-of-pocket
costs related to the domain name. Respondent has failed to submit any evidence
justifying this presumed exorbitant figure. Circumstances indicate that
Respondent registered the domain name primarily for the purpose of selling,
renting or otherwise transferring its rights to Complainant. Complainant’s
initiation of the discussion about the purchase of the domain name registration
is not relevant in determining bad faith, especially since in this instance,
Respondent’s website advertised the sale prior to Complainant’s inquiry. See
Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat.
Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name]
bad faith is some accompanying evidence that the domain name was registered
because of its value that is in some way dependent on the trademark of another,
and then an offer to sell it to the trademark owner or a competitor of the
trademark owner"); see also Marrow
v. iceT.com, D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should
not “put much weight on the fact that it was the Complainant who contacted the
Respondent to see if it was interested in selling the domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <madd.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
May 27, 2003
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