DECISION

 

Fraternal Order of Moai, Inc v. Tim Glazner

Claim Number: FA1607001686147

PARTIES

Complainant is Fraternal Order of Moai, Inc (ďComplainantĒ), represented by Christine Benoit, Massachusetts, USA.† Respondent is Tim Glazner (ďRespondentĒ), Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <fraternalorderofmoai.com> and <fraternalorderofmoai.net> registered with GoDaddy.com, LLC.

 

PANEL

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.

 

Ho Hyun Nahm, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 28, 2016; the Forum received payment on July 28, 2016.

 

On Jul 29, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fraternalorderofmoai.com> and <fraternalorderofmoai.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.† 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 ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).

 

On August 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to postmaster@fraternalorderofmoai.com, postmaster@fraternalorderofmoai.net.† Also on August 1, 2016, 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 Respondentís registration as technical, administrative and billing contacts.

 

A timely Response was received and determined to be complete on August 17, 2016.

 

On August 23, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

i) Complainant, The Fraternal Order of Moai, is an organization created in January of 2005 to celebrate Polynesian pop, retro, and mid-century interests.† Complainant has common law rights in the FRATERNAL ORDER OF MOAI mark based on use of the mark since 2005 at Complainantís website, <fraternalorderofmoai.org>.† Respondentís domains <fraternalorderofmoai.com> and <fraternalorderofmoai.net> are identical and confusingly similar to the FRATERNAL ORDER OF MOAI mark.

ii) Respondent has not been authorized to use the FRATERNAL ORDER OF MOAI mark and Respondent is not commonly known by the disputed domain names.† Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domains as they are used to host malicious and inaccurate statements about Complainantís organization.

iii) Respondentís uses of the domains demonstrate bad faith as the domains have been used to redirect to Complainantís website, host content related to Complainant, and after contact from Complainant, to host disparaging and false information about Complainant.†

 

B. Respondent

i) Complainant does not have rights in the FRATERNAL ORDER OF MOAI mark as Complainant has no record of registration at the state or federal level.† Complainant also gives no indication of Complainantís designation of their name as a trademark.

ii) Respondent does not commercially benefit from hosting its websites on the disputed domain names.† Respondentís websites were created to parody and complain about the actions of Complainantís groups.†

iii) Respondent does not use the domains to generate revenue based on similarity between the domains and the FRATERNAL ORDER OF MOAI mark, nor does Respondent use the domains to attract membership in a competing organization.† Respondent has not demonstrated bad faith as the disputed domains are used for critique and parody.†

 

FINDINGS

Complainant has failed to establish that it had rights in the mark contained in the disputed domain names.

 

Respondent has rights to or legitimate interests in the disputed domain names.

  

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant claims to have common law rights in the FRATERNAL ORDER OF MOAI mark based on use of the mark since 2005.† Complainant contends that it has actively used the mark in its domain name <fraternalorderofmoai.org> since 2005 by submitting three screenshots of Whois Information showing the creation date of the Complainant's domain name <fraternalorderofmoai.org>, current website of Complainant dated July 29, 2016 and outcome of current Google search dated July 29, 2016.

 

Respondent claims that Complainant does not have rights in the FRATERNAL ORDER OF MOAI mark.†

 

Complainant does not claim to have a trademark registered with the United States Patent and Trademark Office, or any similarly situated trademark registry. However, past panels have found that Policy ∂ 4(a)(i) does not require registration if a complainant provides evidence that it has acquired common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ∂ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).

 

Complainant has not submitted any evidence of trademark registration with any state or federal agency. Panels have held that a complainant failed to establish common law rights based on failing to submit evidence sufficient to show that a complainant established distinctiveness or secondary meaning in a mark.† See CW & Associates Consulting and Recruiting Inc. v. Lynda Pitchford / ITSR, FA 1619758 (Forum June 29, 2015) (finding Complainant failed to establish common law rights, stating, ďComplainant has failed to provide evidence of any sales figures or advertising expenditures or any indication of the extent of use aside from what may be implied from the business name registration and placement of the name(s) on social media. There is no evidence to show that the public is aware of the claimed marks at all, much less a public association of the claimed ETS marks with the Complainant. Mere use of social media alone is not acceptable proof of secondary meaning, a/k/a/ acquired distinctiveness, in the mind of the general public.Ē).†

 

The Panel finds that the mere screenshots of Whois Information showing the creation date of the Complainant's domain name† <fraternalorderofmoai.org>, current website of Complainant dated July 29, 2016 and outcome of current Google search dated July 29, 2016 do not constitute adequate evidence of secondary meaning, and thus it concludes that Complainant has not demonstrated its rights in the FRATERNAL ORDER OF MOAI mark under Policy ∂ 4(a)(i).

 

Rights or Legitimate Interests

 

The Panel holds that 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 (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 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainantís burden by showing it was making a bona fide offering of goods or services at the disputed domain name).

 

Respondent contends that it does not commercially benefit from hosting its websites on the disputed domain names and only uses the domains to host websites to parody and complain about the actions of Complainantís groups.† Respondentís domain does not appear to host any advertisements. Panels have held that a respondent has rights and legitimate interests in a domain where the domain is used as a legitimate criticism website. See Loney John Hutchins v. dylan jacobsen / www.jaggedlittledyl.com, LLC, FA606568 (FORUM April 7, 2015) (finding respondent is exercising his right to free speech and gives him further justification to register and use the disputed domain name at issue. Since both parties in this case are domiciled in the United States Citizens, the panel must consider the First Amendment of the United States Constitution that states the following: ďCongress shall make no law respecting an establishment of religion, or prohibiting the free exercise thereof; or abridging the freedom of speech, or of the press; or the right of the people peaceably to assemble, and to petition the government for a redress of grievancesĒ.) See also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that the respondent has rights and legitimate interests to use the <wallmartcanadasucks.com> domain name as a forum for criticism of the complainant); Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (ď[T]he goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.Ē).† As the Panel finds that Respondent uses the domains in connection with a legitimate criticism website it holds that Respondent has rights or legitimate interests in the disputed domain names.†

 

Registration and Use in Bad Faith

 

The Panel finds it unnecessary to address this element as the Complainant has not proven the first two elements. See Creative Curb v. Edgetec Intíl Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainantís failure to prove one of the elements makes further inquiry into the remaining element unnecessary).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <fraternalorderofmoai.com> and <fraternalorderofmoai.net> domain names REMAIN WITH Respondent.

 

 

Ho Hyun Nahm, Esq., Panelist

Dated:† August 30, 2016

 

 

 

 

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