Government Finance Officers Association
v. MustNeed.com c/o Reserved for Customers
Claim
Number: FA0507000515511
Complainant, Government Finance Officers Association (“Complainant”),
is represented by Bennett J. Berson of Quarles & Brady LLP,
P.O. Box 2113, Madison, WI 53701-2113.
Respondent is MustNeed.com c/o Reserved for Customers (“Respondent”), P.O. Box 3506, Taipei,
Taiwan, TW, 100-00.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <gfoa.com>, registered with Moniker
Online Services, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 18, 2005.
On
July 19, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <gfoa.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
July 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 11,
2005 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@gfoa.com by e-mail.
Having
received no Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 17, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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.”
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 <gfoa.com>
domain name is identical to Complainant’s GFOA mark.
2. Respondent does not have any rights or
legitimate interests in the <gfoa.com> domain name.
3. Respondent registered and used the <gfoa.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Government Finance Officers Association, is an association of state/provincial
and local finance officers in the United States and Canada. Complainant’s association has over 16,000
members and has been in existence since 1906.
Complainant spends significant sums of money advertising and promoting
its products in the United States and Canada.
Complainant
holds two registrations for its GFOA mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,891,915 issued October 5, 2004; Reg. No.
1,823,172 issued February 22, 1994).
Also, Complainant registered the <gfoa.org> domain name on
September 4, 1996 and is using it to operate a website.
Respondent
registered the <gfoa.com> domain name on May 24, 2002. Respondent uses the domain name for profit
by hosting links to various search engines and websites. Additionally, the website states, “For Sale—Contact
us,” indicating that Respondent is offering to sell the domain name
registration.
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. 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.”).
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’s
registrations for its GFOA mark with the USPTO are sufficient to establish
Complainant’s rights in the mark. See
Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the
mark.”); see also Vivendi Universal Games v. XBNetVentures
Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal
trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant
argues that the <gfoa.com> domain name is identical to its GFOA
mark. In fact, the disputed domain name
merely adds the generic top-level domain (gTLD) “.com” to Complainant’s mark.
The Panel holds that the addition of the gTLD “.com” is irrelevant for purposes
of determining whether the disputed domain name is identical to Complainant’s
mark. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
The Panel holds
that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
asserts that Respondent does not have rights or legitimate interests in the
<gfoa.com> domain name.
Complainant’s assertion establishes a prima facie case and shifts
the burden to Respondent. To meet its
burden, Respondent must provide the Panel with evidence that it does have
rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has
asserted that the respondent has no rights or legitimate interests with respect
to the domain name, it is incumbent on the respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”). The Panel will
analyze whether Respondent could meet its burden of establishing rights or
legitimate interests for purposes of Policy ¶ 4(a)(ii).
Complainant
argues that Respondent uses the disputed domain name to host links to various
search engines and websites for a profit.
Without a response from Respondent, the Panel accepts Complainant’s
descriptions as accurate. See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence). The
Panel holds that hosting links to various search engines and websites for a
profit is neither a bona fide offering of goods or services under Policy
¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Tercent Inc. v. Lee
Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the
respondent’s use of the disputed domain name to host a series of hyperlinks was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name); see also Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring links to
various third-party websites is neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user).
Furthermore,
Complainant avers that Respondent is not commonly known by the disputed domain
name. Because Respondent did not
respond, the Panel treats Complainant’s argument as true. See Vanguard Group, Inc. v. Collazo,
FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent
failed to submit a Response, “Complainant’s submission has gone unopposed and
its arguments undisputed. In the
absence of a Response, the Panel accepts as true all reasonable allegations . .
. unless clearly contradicted by the evidence.”). Moreover, Respondent’s WHOIS information suggests that Respondent
is known as “MustNeed.com.” Therefore,
the Panel concludes that Respondent is not commonly known by the disputed
domain name and does not have rights or legitimate interests under Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
the respondent does not have rights in a domain name when the respondent is not
known by the mark).
Consequently,
the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
The content of
Respondent’s website indicates that Respondent is offering to sell the <gfoa.com>
domain name registration. The Panel
holds that a Respondent’s offer to sell the disputed domain name registration
is evidence that the domain name was registered in bad faith under Poilcy ¶
4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see
also Am. Online, Inc. v.
Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16,
2000) (finding bad faith where the respondent offered domain names for sale).
Additionally,
Respondent is using the <gfoa.com> domain name for profit by
hosting links to various search engines and websites. The Panel holds that Respondent is capitalizing on Internet user
confusion and that such diversionary use is evidence of bad faith use and
registration under Policy ¶ 4(b)(iv). See
Bank of Am. 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 resulting search engine
website” in holding that the domain names were registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Thus, the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <gfoa.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
August 26, 2005
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