National Arbitration Forum

DECISION

National Rifle Association of America v. Future Media Architects, Inc.

Claim Number: FA0608000781430

PARTIES

Complainant is National Rifle Association of America (“Complainant”), represented by Jeffrey H. Greger, of Mason Mason & Albright, 2306 South Eads Street, Arlington, VA 22202. Respondent is Future Media Architects, Inc. (“Respondent”), represented by Justin M. Kayal, of Kenyon & Kenyon LLP, One Broadway, New York, NY 10004-1007.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nra.net>, registered with Moniker Online Services, 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.

Steven L. Schwartz as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2006.

On August 18, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <nra.net> domain name is registered with Moniker Online Services, Inc. and that the 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 August 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 14, 2006 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@nra.net by e-mail.

A timely Response was received and determined to be complete on September 14, 2006.

On September 21, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Steven L. Schwartz as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant states that it is the owner of twenty-six (26) United States federal trademark, service mark and member mark registrations for the mark NRA and formative versions of the mark NRA including the US Registration No. 1,885,345 for the typed mark “NRA” covering association services in the field of firearms, and education services in the fields or firearm instruction, wild-life conservation, and publication services. This registration alleges first use of the NRA mark at least as early as 1871.

2. The NRA mark is used under common law in connection with association services including those viewable at the Complainant's web site at www.NRA.ORG which lists services in the fields of firearms and hunting, including clubs and associations, competitive shooting and services, education and training, law enforcement and hunting services, safety programs, museum services, youth and woman's programs, business opportunities, and political and legislative services related to the Second Amendment to the U.S. Constitution.

3. The National Rifle Association includes a current membership of approximately three (3) million members, most of whom reside in the United States while others reside in Europe, Africa, Asia, Australia, New Zealand, Canada, South and Central America, the British Virgin Islands and the Grand Cayman Islands.

4. The NRA is recognized by the United Nations as an official Non-Governmental Organization (NGO) for participation in certain United Nations activities and lectures.

5. Since at least as early as 1997, the NRA has been a founding member of the World Forum on The Future of Sport Shooting Activities (WFSA) which members are found in Spain, Europe, Malta, Great Britain, Canada, New Zealand, Denmark, The European Union, Italy, Finland, Germany, Norway, South Africa, and Australia.

6. The NRA has participated in international conferences concerning the issues of gun ownership, shooting sports and participated with foreign governmental authorities providing assistance and services all related to field of firearms.

7. The NRA has a current operations budget exceeding $200,000,000 per year which includes investments in the NRA's activities which always include use of the NRA brand thereby building the good will associated with NRA brand which has become famous over the years for the services associated with the NRA brand.

8. The NRA is world known for services including but not limited to core services related to the field of firearms, gun safety and shooting sports, and supporting the Second Amendment rights under the United States Constitution and promoting political freedoms throughout the world.

9. The fame of the NRA brand has been broadened, commercialized and licensed under strict control and authority for ancillary products and services expressly endorsed or approved by the NRA. The NRA mark has been licensed or is currently licensed for use on or in connection with guns, knives, firearms, publications and books both technical, historical, and entertaining; a large variety of clothing, kitchenware, auto accessories, belts/buckles, ties and accessories, collectibles, decals/pins/patches, drinkware, duffels/wallets, gun cases/cabinets, hats, hunting clothing, jewelry/watches, kid's stuff, knives, shooting accessories; insurance services and products, videos and video games.

10. The NRA is non-profit organization and operates with a presence on the internet using the domain name address www.NRA.ORG. In addition to its NRA.ORG web address the NRA owns over fifty additional NRA-formative domain name address which it uses in connection with its official and authorized provision of services and goods.

11. Complainant contends that consumers have been mistakenly attempting to locate the NRA genuine site using top level domain names such as dot com and dot net due to confusion by the public in assuming that the uses by Respondent of the mark NRA.NET is authorized by the NRA which it states is not the case..

12. The NRA licenses it registered trademark to approved licensees including an authorized travel agent. Respondent owns the domain name address www.NRA.NET and commenced use of the domain name www.NRA.NET in connection with an internet web presence designed to attract internet users looking for the Complainant, NRA. Respondent's use of the domain name NRA.NET creates a false affiliation with the NRA by virtue of numerous links which Respondent includes as part of its use of its web pages located at the internet address NRA.NET.

13. Complainant claims that Respondent's use of "NRA.NET" is likely to cause confusion with the NRA and has already caused actual confusion by reason of Respondent's unauthorized use of reference to and linking to at least one licensed NRA travel agent in violation of the travel agent's limited license rights with the NRA. The NRA does not permit its licensees unfettered rights to the use the famous NRA trademark without control

14. Respondent’s home page and first linked pages from Respondent's web presence located at www.NRA.NET prominently lists top categories as NRA, Guns, Gun Magazines, and NRA Supreme Award Winners. The genuine NRA mark is often used by Complainant in connection with awards and sport shooting competitions. Each of the categories used by Respondent suggests a strong affiliation if not an outright endorsement from the NRA where no such affiliation or endorsement is provided.

15. Complainant states that most if not all the links on the Respondent web pages forward the internet user web pages for service and products unaffiliated and not endorsed or related to the NRA. One such link goes to the web address www.affinity-nra-travel.com and a web site titled NRA TRAVEL which includes a use of the famous NRA mark and also a separate and distinct use of the registered trademark National Rifle Association and Design of an Eagle, registered under U.S. Reg. No. 541,576 and others. While the linked travel agent does have a limited license to use the NRA's registered trademarks, Complainant states that this is a limited license and does not include the right to use the license in connection with unauthorized uses of the licensor's famous NRA trademark.

16. The Respondent is using the NRA mark (which Complainant contends is arbitrary, famous and distinctive) for commercial gain to divert customers to its own unauthorized web pages at NRA.NET when users search for the genuine NRA web site located at NRA.ORG.

17. Respondent is in the business of registering multiple domain names for use in connection with internet search engine commercialization for profit vis-à-vis, pop-up advertising revenue which is not in connection with bona fide offering of goods or services. Registering and using a trademark and adding a top level domain name such.org, .net, and .com, to what is otherwise commonly associated with a world famous mark is not a bona fide registration or use

18. Complainant states that there is a likelihood of confusion, caused by Respondent’s wrongful, bad faith use and registration of "NRA.NET" which is compounded by its display of numerous commercial links to various authorized and unauthorized sites (some of which feature unauthorized use of the NRA Marks) purporting to offer goods and services relating to the NRA.

19. The official NRA.ORG web site is being unfairly forced to compete with the non-authorized NRA.NET web site because non-authorized services and goods are offered at NRA.NET. This epitomizes unfair competition, vis-à-vis, using another's trademark to ride on the trademark owner's coat-tails for commercial benefit.

20. Respondent’s conduct constitutes a pattern of cybersquatting.

B. Respondent

1. Respondent does not dispute that its <nra.net> is identical to Complainant MRA mark. However, it also states that the mark is a simple abbreviation, generic and not entitled to trademark protection.

2. Respondent states that the NRA mark is an abbreviation used by others including National Road Authority, National Resistance Army, National Recovery Act and is not capable of functioning as a trademark making its identical quality with the disputed domain name inconsequential.

3. It is further contended that long before Respondent received notice of this domain dispute, it had been using NRA within the domain name to provide consumers interested in goods and services relating to national rifle associations with links to relevant websites. Respondent further states that it is in the business of owning Internet properties (approximately 100,000 domain names), Internet portals and technology. Therefore, it is using the domain name in connection with a bona fide offering of goods and services.

4. Respondent contends that Complainant has not shown the requisite intention to use the NRA in bad faith as it did not register it to prevent Complainant from doing so, they are not competitors, and has not registered the domain name to intentionally create a likelihood of confusion but rather to capitalize on what they believe to be a generic term.

Additional Submissions

Complainant

1. Complainant states that registration with the U.S. Patent and Trademark Office and placement on the PTO’s Principal Register connotes that its NRA mark is distinctive, non-descriptive and non-generic.

2. Respondent’s claim that the NRA mark is a generic term being used as an acronym similar to its list of 18 acronym uses of the mark worldwide confuses the definition of what is generic and is an erroneous conclusion.

Respondent

1. Respondent argues that Complainant’s supplemental filing is an impermissible amendment to the original Complaint and provides only additional argument in support of its points.

2. The public considers the NRA mark to be generic by reason of the national rifle association o f England which is an entity unrelated to Complainant which makes frequent and varied use of the NRA mark.

3. Respondent is making a legitimate use of an abbreviation for a generic term to provide information about the subject matter covered by that generic term, namely, rifle associations and firearms.

FINDINGS

1. Complainant’s filing is one day late under the applicable UDRP rules. The Panel will, in the interests of justice, consider this filing and Respondent’s Response to the Supplemental Filing.

2. The NRA is non-profit organization and operates with a presence on the internet using the domain name address www.NRA.ORG.

3. The National Rifle Association is a membership organization of approximately three (3) million members, most of whom reside in the United States while others reside in Europe, Africa, Asia, Australia, New Zealand, Canada, South and Central America, the British Virgin Islands and the Grand Cayman Islands.

4. It provides services in the fields of firearms and hunting, including clubs and associations, competitive shooting and services, education and training, law enforcement and hunting services, safety programs, museum services, youth and woman's programs, business opportunities, and political and legislation.

5. The NRA is non-profit organization and operates with a presence on the internet using the domain name address www.NRA.ORG.

6. Complainant has establised rights in the NRA mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,885,345 issued March 21, 1995). These rights predate Respondent’s registration of the <nra.net> domain name on June 4, 1998. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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.”).

7. Complainant’s NRA mark is well known, distinctive, non-descriptive and non-generic.

8. Complainant has not given Respondent any license, permission, or authorization to use any of its trademarks.

9. Respondent’s domain name is confusingly similar to Complainant’s NRA mark.

10. Respondent has no legitimate interests in the domain name.

11. The domain name has been registered and is being used in bad faith.

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.

Identical and/or Confusingly Similar

Respondent concedes that its domain name is confusingly similar to Complainant’s NRA mark. Complainant asserts and submits extrinsic evidence to support that it has establised rights in the NRA mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,885,345 issued March 21, 1995). The Panel finds that Complainant has established rights in the NRA mark through its valid trademark registration with the USPTO, and that its rights in the mark predate Respondent’s registration of the <nra.net> domain name on June 4, 1998. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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.”).

Under Policy ¶ 4(a)(i), it has been consistently held that the mere addition of a generic top-level domain to an otherwise identical mark renders the disputed domain name identical to the mark contained therein. See 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); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to the complainant’s trademark TOSHIBA). The Panel concludes that in light of Respondent’s admission, and its own finding, that the disputed domain name it is confusingly similar to the NRA mark.

Rights or Legitimate Interests

The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests. See 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).”); see also 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”). The Panel finds that Complainant has met its prima facie showing thus shifting the burden to Respondent to rebut this showing.

Complainant alleges that Respondent is not commonly known by the disputed domain name. Respondent operates under the business name “Future Media Architects, Inc.” Since Respondent has not come forward with evidence to suggest otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

Complainant also contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. As Complainant evidenced in its Complaint, the disputed domain name resolves to a website that displayed a number of sponsored text links to third-party websites related to a variety of topics, including, but not limited to, “guns,” “airline tickets” and “online credit reports.” Additionally, Complainant contends that the resulting website generates a number of pop-up advertisements on the initial page load. FMA states that its business is as an internet development company and that it owns more than 100,000 domains. FMA gives no further explanation of how it exactly it employs these domain and conducts such business. What is clear, however, is that FMA has encountered challenges to its use of domains that are the registered trademarks owned by others and for which it has not obtained rights from such owner to the use of the mark. In one such case, FMA was ordered to transfer its domain notwithstanding arguments much the same as made in this case. (See QNX Software Systems Ltd v. Future Media Architects, Inc. Case no. D2003-0921 wherein qnx.info mark used solely to attract "Internauts" for commercial gain and FMA knew or should have known of the fame and distinctiveness of qnx - transfer ordered).

In the opinion of the Panel, there is a strong reason to believe that Respondent’s conduct falls within the cybersquatting activity for which the ICANN policy was designed to discourage. The Panel thus finds that under the circumstances of this case, Respondent’s use of the disputed domain name to display sponsored advertisements and generate pop-up advertisements does not qualify as a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See 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 pop-up advertisements and 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); see also Wells Fargo & Co. v. Party Night Inc. FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (holding that the respondent’s use of “confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert Internet users to websites featuring pop-up advertisements” was not a bona fide offering of goods or services); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the 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).

Registration and Use in Bad Faith

Complainant alleges that the Respondent registered and has used the disputed domain name in bad faith. Since the domain name resolves to a website that displays a variety of text links and generates a number of pop-up advertisements, the Panel believes that it is reasonable to infer that Respondent receives commercial gain from the operation of the resulting website. Furthermore, since the disputed domain name is identical to Complainant’s NRA mark and the resulting website contains links to gun-related websites, the Panel finds that there is likelihood that Internet users will become confused as to Complainant’s sponsorship of or affiliation with the resulting website. In this case, there does appear to have been confusion created by virtue of Respondent's unauthorized use of reference to and linking to at least one licensed NRA travel agent in violation of the travel agent's limited license rights with the NRA.

Te Panel finds that Complainant’s NRA mark is well known, distinctive, non-descriptive and non-generic. Under these circumstances, Respondent either knew or should have known (by reason of the Complainant’s numerous registered trademarks and constructive notice thereof) that its registration and use of the disputed domain would be infringing upon Complainant’s trademark. Such infringing use is not a legitimate use of the domain. Furthermore, it is clear that the NRA has not licensed Respondent’s use of the NRA mark for use as the disputed domain.

Accordingly, the Panel finds that Respondent’s use of the disputed domain name that is confusingly identical to Complainant’s mark to resolve to a website from which it commercially benefits from the displaying of advertisements evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements). Cf. Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a trademark involves words that could be generic in a different context, the reputation of that mark in the field where the mark is associated, means that the intentional registration and use of a misspelling of that mark manifests the intent to capitalize on the mark, and constitutes bad faith).

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 <nra.net> domain name be TRANSFERRED from Respondent to Complainant.

Steven L. Schwartz, Panelist
Dated: October 13, 2006

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