Mothers Against Drunk Driving v. phix
Claim Number: FA0307000174052
PARTIES
Complainant
is Mothers Against Drunk Driving,
Irving, TX (“Complainant”) represented by Herbert
J. Hammond and Heather C. Brunelli,
of Thompson & Knight LLP. Respondent is phix, Beverly Hills, CA (“Respondent”) represented by R. Russell Lucas, Jr. of Goehring, Rutter
& Boehm.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <madd.net>,
registered with Network Solutions, Inc.
PANEL
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.
David
S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 28, 2003; the Forum received a hard copy of the
Complaint on August 1, 2003.
On
August 1, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <madd.net> is
registered with Network Solutions, Inc. and that the Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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
August 6, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 26,
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.net by e-mail.
A
timely Response was received and determined to be complete on August 26, 2003.
A
timely Additional Submission was received from Complainant on September 2, 2003
and determined to be complete.
A
timely Response to Additional Submission was received from Respondent on
September 4, 2003 and determined to be complete.
On September 11,
2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that its registered MADD mark had becom famous long before Respondent
registered the domain name at issue on October 17, 1998, and that Respondent’s
domain name is simply Complainant’s entire famous trademark MADD and the common
URL suffix “.net” such that the mere combination of a famous trademark and
“.net” creates a likelihood of confusion.
Complainant further contends that individuals seeking the website for
Complainant are likely to seek it at <madd.net> since the domain
incorporates the MADD trademark and the a common URL suffix “.net” and would
assume that the website located at <madd.net> would be associated with,
sponsored by or affiliated with Complainant.
B.
Respondent
Respondent
contends that the mark “MADD” and Complainant’s use of it is not sufficiently
famous or exclusive that Respondent’s use of the domain name <madd.net>
infringes upon any valid trademark rights, and that the terms “Madd” and “madd”
have become somewhat generic and have entered into wide colloquial use for
purposes unrelated to Mothers Against Drunk Driving’s mission. Respondent also contends that use of the
domain name for personal communications and web server hosting, and not to
conduct any business activities competitive to or confusingly similar to
Complainant’s is a fair use that demonstrate rights to and legitimate interests
in the registered domain name. Still further, that Complainant has the burden
of proof and has not established the existence of any of the four factors set
forth in Paragraph 4(b) of the Uniform Domain Dispute Resolution Policy as
circumstances which constitute evidence of registration and use of a domain
name in bad faith.
C.
Additional Submission of Complainant
In
addition to reinforcing its initial contentions, it is contended by Complainant
that current use of the domain name to send e-mail, and use of the MADD.net
domain name for e-mail messages and to write computer programs and participate
in IRC could all create confusion.
Furthermore, Complainant asserts that Respondent used inaccurate and
purposefully misleading information, i.e., false contacts in California and an
incorrect owner of the domain name, when registering and subsequently renewing
the domain name.
D.
Additional Submission of Respondent
In
addition to reinforcing its initial contentions, Respondent has asserted that
the bad faith requirement must be viewed in the context that of the aim of the
Policy to address clearly abusive acts of cybersquatting, not any issue of
unfair competition or misuse of a domain name.
FINDINGS
Under
Rule 1 of the Policy, the Respondent is defined as "the holder of a
domain-name registration against which a complaint is initiated." Phix-It is the holder of the domain-name
registration, while Michael Dille, a 3rd party to Phix-it, is merely acting in
this case on behalf of Phix-It, which put a shortened version of its name on
the registration for the disputed domain name.
Since Michael Dille did not register the domain name, Michael Dille is
not actually the Respondent and the bad faith analysis does not apply to him. Instead, the bad faith analysis would apply
to Phix-It, the registrant of the disputed domain name. Furthermore, since the minority of Michael
Dille at the time of registration was not raised by either party as affecting
an aspect of this proceeding, and since there is nothing in the ICANN rules
that would preclude a minor from acting in his/her own behalf for the purpose
of registering and/or owning a domain name, it has not been taken into
consideration.
Registrant
Phix-It has no rights to or legitimate interest in the registered domain name.
That Phix-it’s registration of and the subsequent use of the MADD.net domain
name was in bad faith.
The
acronym MADD for the Complainant, Mothers Against Drunk Driving, is a famous
trademark that has not become generic, nor has it fallen into common usage.
That someone receiving e-mail from a
party whose e-mail address shows a name @ the MADD.net domain or seeing
a newsgroup posting from a party whose
e-mail address shows a name @ the MADD.net domain would likely assume that the
writing or posting party was affiliated with Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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 provided evidence to
establish statutory rights in the MADD mark through registration of the mark
with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
1,250,706 registered on September 6, 1983).
Thus, the Panel finds that Complainant’s registration of the MADD mark
with the USPTO establishes Complainant’s rights in the mark for purposes of
Policy 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861
(Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks
hold a presumption that they are inherently distinctive and have acquired
secondary meaning”).
Complainant also asserts that it has
established common law rights in the MADD mark through continuous use in
commerce since 1980. Therefore, the
Panel concludes that Complainant has established rights in the MADD mark
through secondary meaning. See Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long
and substantial use of the said name [<keppelbank.com>] in connection
with its banking business, it has acquired rights under the common law); see
also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding
that Complainant has common law rights in the mark FISHTECH which it has used
since 1982).
Complainant contends that the
<madd.net> domain name is identical to Complainant’s MADD mark because
Respondent’s simply adds the generic top-level domain (gTLD), “.net” to
Complainant’s entire mark. The Panel
concludes that simply combining Complainant’s famous mark and the gLTD “.net”
is not sufficient to distinguish the disputed domain name from Complainant’s
mark under Policy 4(a)(i). See 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); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO
Nov. 6, 2000) (finding that the domain name <nike.net> is identical to
Complainant’s famous NIKE mark).
Respondent Phix-it has provided no
evidence to indicate that it is commonly known by the <madd.net> domain
name or the MADD mark, the Panel finds that there is no relationship between
Michael Dille which would enable any usage by him to inure to the benefit of
Respondent; and while the willingness of Respondent to transfer the domain to
Michael Dille has been noted, but such is not deemed to affect the
circumstances of registration and use at issue here. Furthermore, Complainant has never granted Respondent permission
to use its MADD mark for any purpose and Respondnent is not affiliated with Complainant
in any way. Thus, the Panel finds that
Respondent does not have rights to or legitimate interests in the disputed
domain name pursuant to Policy
4(c)(ii). See 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); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec.
21, 2000) (finding no rights or legitimate interests where one “would be hard
pressed to find a person who may show a right or legitimate interest” in a
domain name containing Complainant's distinct and famous NIKE trademark).
In addition, Complainant argues that
Respondent does not have rights to or legitimate interests in the
<madd.net> domain name because the website associated with the disputed
domain name is inactive, and use by Michael Dille does not constitute use by
Respondent. Therefore, the Panel finds that
Respondent is not using the <madd.net> domain name in connection with any
bona fide offering of goods or services pursuant to Policy 4(c)(i) or for any legitimate noncommercial
or fair use pursuant to Policy 4(c)(iii). See Melbourne IT Ltd. v. Stafford,
D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in
the domain name where there is no proof that Respondent made preparations to
use the domain name or one like it in connection with a bona fide offering of
goods and services before notice of the domain name dispute, the domain name
did not resolve to a website, and Respondent is not commonly known by the
domain name); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat.
Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the
site demonstrates a lack of legitimate interest in the domain name).
Complainant argues that Respondent should
have been aware that Complainant had rights in the MADD mark when it registered
the <madd.net> domain name, as evidenced by Complainant’s registration of
the MADD mark with the USPTO, its long and continuous use of the mark in
commerce and the notoriety of Complainant’s mark. Thus, the Panel finds that Respondent acted in bad faith when it
registered the disputed domain name with knowledge of Complainant’s rights in
the MADD mark. See Victoria’s Cyber
Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349
(S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark
or service mark] is constructive notice of a claim of ownership so as to
eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072);
see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June
14, 2000) (finding that the fame of the YAHOO! mark negated any plausible
explanation for Respondent’s registration of the <yahooventures.com>
domain name).
Complainant asserts that due to the fame
of the MADD mark, consumers will be confused by the use and registration of the
<madd.net> domain name by Respondent.
The panel agrees that the mark is famous and that any possible usage by
others of record is insufficient to indicate that the MADD mark has become
generic, or that has it fallen into common usage. Furthermore, the fact that
Respondent does not use the mark to disparage the MADD mark or to compete with
Complainant makes no difference. Since
the MADD mark is famous and distinctive, use of the mark in a domain name is
inherently confusing to consumers, and the panel finds that someone receiving
e-mail from a party whose e-mail
address shows a name @ the MADD.net domain or seeing a newsgroup posting from
a party whose e‑mail address
shows a name @ the MADD.net domain would likely assume that the writing or
posting party was affiliated with Complainant. Thus, the Panel finds the
Respondent’s use of the <madd.net> domain name for personal
communications and web server hosting could easily lead to confusion. See Goto.com, Inc., v. Walt Disney Co., 200
F.3d 1199, 1206 (9th Cir., 2000) (“With respect to Internet services, even
services that are not identical are capable of confusing the public”); see also
Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum
June 3, 2003) (stating that “[s]ince the disputed domain names contain entire
versions of Complainant’s marks and are used for something completely unrelated
to their descriptive quality, a consumer searching for Complainant would become
confused as to Complainant’s affiliation” with the results in holding that the
domain names were registered and used in bad faith pursuant to Policy 4(b)(iv)).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <madd.net> domain name be TRANSFERRED from Respondent to
Complainant.
David S. Safran, Panelist
Dated: September 25, 2003
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