Toastmasters International v. Bealo Group
S.A.
Claim
Number: FA0307000167968
Complainant is Toastmasters International, Mission
Viejo, CA, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry. Respondent is Bealo Group S.A., Geneve, China (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <toastmastersd57.org>, registered with Online
NIC.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 9, 2003; the Forum received a hard copy of the Complaint
on July 10, 2003.
On
July 9, 2003, Online NIC confirmed by e-mail to the Forum that the domain name <toastmastersd57.org>
is registered with Online NIC and that Respondent is the current registrant of
the name. Online NIC has verified that Respondent is bound by the Online NIC 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
July 15, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 4, 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@toastmastersd57.org by e-mail.
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
August 13, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toastmastersd57.org>
domain name is confusingly similar to Complainant’s TOASTMASTERS mark.
2. Respondent does not have any rights or
legitimate interests in the <toastmastersd57.org> domain name.
3. Respondent registered and used the <toastmastersd57.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Toastmasters International, is a non-profit organization dedicated to helping
others to speak effectively in public settings. Incorporated in California in
1932, Complainant currently has clubs in over 70 countries worldwide and holds
many registrations for the TOASTMASTERS mark worldwide (e.g. U.S. Reg.
No. 555,137, registered with the U.S. Patent and Trademark Office on February
19, 1952; Taiwanese Reg. No. 358,187; Japanese Reg. No. 2,462,775).
Respondent,
Bealo Group S.A., registered the <toastmastersd57.org> domain name
on June 24, 2001, and is not licensed or authorized to use Complainant’s
TOASTMASTER mark for any purpose. Upon arriving at the disputed domain name,
Internet users are subjected to an advertisement for pills designed to increase
the size of the male member, with a hyperlink to the
<natural-penis-enlargement-now.com> domain name prominently displayed.
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 TOASTMASTERS mark though continuous use of the mark in
commerce as well as through registration of the mark with the appropriate
governmental authorities worldwide.
Respondent’s <toastmastersd57.org>
domain name is confusingly similar
to Complainant’s TOASTMASTERS mark. The addition of the alphanumeric string
“d57” does not distort the fact that the dominant feature of the disputed
domain name is Complainant’s TOASTMASTERS mark, and does not prevent a finding
of confusing similarity with the mark. See Magnum Piering,
Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing
similarity under the Policy is decided upon the inclusion of a trademark in the
domain name rather than upon the likelihood of confusion test under U.S.
trademark law); see also Am.
Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000)
(finding that Respondent’s domain name <go2AOL.com> was confusingly
similar to Complainant’s AOL mark).
Accordingly, the
Panel finds that the <toastmastersd57.org> domain name is confusingly similar to Complainant’s TOASTMASTERS mark
under Policy ¶ 4(a)(i).
Respondent uses
the <toastmastersd57.org> domain
name to advertise a penile enlargement supplement, a product that
bears no relation to the TOASTMASTERS mark. Such opportunistic use of
Complainant’s mark in a domain name cannot be considered a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i). Similarly, the commercial
nature of Respondent’s use denies it the protections of Policy ¶ 4(c)(iii).
Thus, the Panel finds that neither of these safe harbor provisions apply to
Respondent. See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA
100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate
interests in the disputed domain name where Respondent was using Complainant’s
mark to redirect Internet users to a website offering credit card services
unrelated to those services legitimately offered under Complainant’s mark); see
also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17,
2003) (finding that Respondent’s diversionary use of Complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Respondent
received no license or authorization by Complainant to use the TOASTMASTERS
mark in a domain name, and there is no other evidence before the Panel
indicating that Respondenet was ever “commonly known by” the disputed domain
name. Hence, the Panel finds Policy ¶ 4(c)(ii) inapplicable to Respondent. 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 Respondent does not have rights or legitimate interests in the
<toastmastersd57.org> domain
name under Policy ¶ 4(a)(ii).
Respondent registered and used the <toastmastersd57.org> domain name in
bad faith. By appropriating Complainant’s mark in the disputed domain name,
Respondent created an initial likelihood of confusion with that mark, fostering
the assumption that the content at the disptued domain name is somehow
sponsored or endorsed by Complainant. By creating this likelihood of confusion
in the minds of Internet users with the intent to attract them to commercial
advertisements, presumably for commercial gain, Respondent’s activities
evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See
MathForum.com, LLC v. Huang,
D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked <drmath.com>, which contains Complainant’s Dr.
Math mark, to a website run by Respondent, creating confusion for Internet
users regarding the endorsement, sponsorship, or affiliation of the website); see
also Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the
domain name in question to websites displaying banner advertisements and
pornographic material).
The Panel thus
finds that Respondent registered and used the <toastmastersd57.org> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <toastmastersd57.org> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
August 25, 2003
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