National Arbitration Forum

 

DECISION

 

Sea World, Incorporated v. JMXTRADE.com c/o JM

Claim Number: FA0612000872052

 

PARTIES

Complainant is Sea World, Incorporated (“Complainant”), represented by Andrea K. Cannon, of Anheuser-Busch Companies, Inc., One Busch Place, St. Louis, MO 63118.  Respondent is JMXTRADE.com c/o JM (“Respondent”), 1136 Via Verde #140, San Dimas, CA 91773.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <shamu.org>, registered with eNom, 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.

 

Robert T. Pfeuffer, Senior District Judge as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 20, 2006.

 

On December 18, 2006, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <shamu.org> domain name is/are registered with eNom, Inc. and that the Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 23, 2007 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@shamu.org by e-mail.

 

A timely Response was received and determined to be complete on January 23, 2007.

 

On January 31, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Identical and/or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant has furnished evidence that it has registered the SHAMU mark with the United States Patent and Trademark Office (“USPTO”) as early as December 20, 1983 and again on October 12, 1993. The Complainant points out that the disputed domain name <shamu.org> incorporates Complainant’s SHAMU mark in its entirety and simply adds the generic top-level domain (“gTLD”) “.org,” and that because the gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i) analysis.

 

Rights or Legitimate Interests: Policy ¶ 4(a)(ii).

 

Policy ¶ 4(a)(ii) states that the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <shamu.org> domain name under Policy ¶ 4(a)(ii) and thereupon the burden shifts to the Respondent to show that it does not have rights or legitimate interests. Complainant argues that Respondent is not commonly known by the <shamu.org> domain name, because the WHOIS information lists the registrant of the domain name as “JMXTRADE.com c/o JM,” and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name.  Complainant further alleges that it never authorized Respondent to register a domain name containing Complainant’s SHAMU mark. In addition to the above, Complainant contends that Respondent’s use of the <shamu.org> domain name to operate a commercially-oriented website displaying links to advertisements and various third-party websites does not present a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

 

Respondent apparently intends to make use of the <shamu.org> domain name to operate a commercial web directory displaying links to various content unrelated to the Complainant; therefore, Complainant argues that the Respondent is diverting Internet users seeking information on Complainant’s products and services under the SHAMU mark to its own website for commercial gain.  Complainant also alleges that Respondent is likely to be receiving click-through fees for each consumer it diverts to other websites.

 

B. Respondent

Identical and/or Confusingly Similar: Policy ¶ 4(a)(i).

 

Respondent has countered Complainant’s allegations on the subject of confusingly similar by stating that it intends to provide a forum for “Shamu” fanatics to post pictures and discuss their experiences with Shamu.  In addition, it refers to their client stating that this was a project of her 4-year old daughter and that she intends to use it as a fan site for “Shamu”.  

 

Respondent contends that just because a corporation or entity has acquired a trademark or is recognised around the world, that it gives them the right to monopolize every means of information source like the “Internet”. 

 

Rights or Legitimate Interests: Policy ¶ 4(a)(ii).

 

Respondent alleges that it has a client with legitimate use for this domain name and that the client has every right to express and share her opinion about “Shamu”.  It further alleges that it has registered under the “.org” in order to present a non-profit forum for free speech.  Respondent contends that the Internet was not created so that corporations can monopolize this information source and that Complainant has created a very nice website <shamu.com> for “commercial use”.  They further contend that Complainant should not be the only source of information about Shamu.

 

Registration and Use in Bad Faith

 

Respondent denies allegations of use in bad faith pursuant to Policy ¶ 4(a)(iii) in that it did not offer to sell the <shamu.org> domain name to anyone, including Complainant and that it did not register the domain name in order to prevent Complainant from registering a domain name containing the SHAMU mark.  It further states that the registration of the domain name was never for profit and that it did not intend to disrupt Complainant’s business nor redirect Internet users to Respondent’s own website for commercial gain by use of the disputed domain name.  Respondent maintains that Complainant has made false allegations regarding Respondent’s conduct and it simply plans to create a fan website at the disputed domain name.

 

FINDINGS

The Panel finds that the law and the evidence submitted to it sustains a finding that:

1.      The domain name registered by 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 to the domain name; and

3.      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

 

The evidence compels the Panel to find that the registered SHAMU mark held by the Complainant with the United States Patent and Trademark Office (“USPTO”) is long standing and that Complainant has established through the evidence presented that it has rights in the mark for purposes of satisfying Policy ¶ 4(a)(i).  See Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).

 

The Panel finds that the <shamu.org> domain name incorporates Complainant’s SHAMU mark in its entirety and simply adds the generic top-level domain “.org”.  The top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i) as discussed in the following cases. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no doubt” that the domain name <bmw.org> is identical to the complainant’s well-known and registered BMW trademarks).

 

Rights or Legitimate Interests

 

A prima facie case has been presented by Complainant that Respondent lacks rights and legitimate interests in the <shamu.org> domain name under Policy ¶ 4(a)(ii).  Accordingly, the burden shifts to the Respondent to show that it does have rights or legitimate interests. Complainant argues that Respondent is not commonly known by the <shamu.org> domain name and is borne out by the evidence because the WHOIS information lists the registrant of the domain name as “JMXTRADE.com c/o JM,”.  No other evidence in the record indicates that the Respondent is commonly known by the disputed domain name.  There is no evidence to dispute the Complainant’s allegation that it never authorized Respondent to register a domain name containing Complainant’s SHAMU mark. Accordingly, the Panel agrees that the Respondent is not commonly known by the <shamu.org> domain name and therefore finds that Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant’s contention that Respondent’s use of the <shamu.org> domain name to operate a commercially-oriented website displaying links to advertisements and various third-party websites is borne out by the evidence therefore sustaining its contention that such use does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  The Panel finds that the Respondent’s use of the disputed domain name to divert Internet users to other websites and presumably earning click-through fees in the process, violates Policy ¶ 4(c)(i) or 4(c)(iii) and, as a result, the Respondent lacks rights and legitimate interests in the disputed domain name.  See The Royal Bank of Scot. Group plc et. Al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).

 

Registration and Use in Bad Faith

 

Respondent uses the <shamu.org> domain name to operate a commercial web directory displaying links to various content unrelated to the Complainant, and therefore is diverting Internet users seeking information on Complainant’s products and services under the SHAMU mark to its own website for commercial gain.  The evidence indicates that Respondent is likely receiving click-through fees for each consumer it diverts to other websites.  The Panel finds that Respondent may be taking advantage of the confusing similarity between the disputed domain name and Complainant’s SHAMU mark in order to profit from the goodwill associated with the mark in bad faith under Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

With respect to claims of First Amendment free speech rights to use the <shamu.org>, the Panel notes that numerous previous panels have determined that such use to operate a fan website can cause confusion as to the source, affiliation, sponsorship, or endorsements of the fan website with Complainant.  The Panel is convinced that is the case in this matter.  The Panel therefore determines that the registration of the disputed domain name <shamu.org> and its use by Respondent is in 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 <shamu.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

ROBERT T. PFEUFFER, Senior District Judge, Panelist
Dated: February 12, 2007

 

 

 

 

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