Western Economic Association v. Web Advertising, Corp.
Claim Number: FA0701000896623
Complainant is Western Economic Association (“Complainant”), represented by Joyce
Ellen Rosendahl of Law Offices of Joyce Ellen Rosendahl,
P.O. Box 15966, Newport Beach, CA, 92659. Respondent is Web Advertising, Corp. (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <weai.org>, registered with Domaindoorman, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 23, 2007; the National Arbitration Forum received a hard copy of the Complaint January 26, 2007.
On January 24, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <weai.org> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name. Domaindoorman, LLC verified that Respondent is bound by the Domaindoorman, LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 22, 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@weai.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <weai.org>, is identical to Complainant’s WEAI mark.
2. Respondent has no rights to or legitimate interests in the <weai.org> domain name.
3. Respondent registered and used the <weai.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Western Economic Association, is a professional association of economists that has been in existence since 1934. Complainant asserts common law rights in the WEAI mark through extensive use of the mark and resulting secondary meaning.
Respondent registered the <weai.org> domain name September 12, 2006. Complainant contacted Respondent, attempting to purchase the disputed domain name registration; and Respondent replied that it would sell the registration for $5,900.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 has not registered its WEAI mark with any
governmental agency. Despite
Complainant’s lack of governmental registration of its mark, the Panel finds
that trademark registration is not required to establish rights in the mark
pursuant to Policy ¶ 4(a)(i). See
Complainant asserts rights in the WEAI mark through extensive use of the mark since 1999. Complainant has used the mark to promote membership in the Association, membership conferences and Complainant’s peer-reviewed journals. The Panel finds that Complainant established with extrinsic proof in this proceeding that it has made extensive use of the WEAI mark such as would establish secondary meaning. Thus, Complainant has shown common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
The disputed domain name that Respondent registered, <weai.org>, incorporates Complainant’s WEAI mark in its entirety and merely adds the generic top-level domain (“gTLD”) “.org.” The Panel finds that addition of a gTLD to an otherwise identical domain name is insufficient to establish distinctiveness in the domain name pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); 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).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Rights to or
Legitimate Interests
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant alleges that Respondent has no such rights to or legitimate interest in the domain name containing in its entirety a mark in which Complainant has exclusive rights. Once Complainant has established a prima facie case in support of its allegations, the burden shifts to Respondent to set forth substantial evidence establishing rights and legitimate interests in the disputed domain name in accordance with Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); 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).”).
Review of Respondent’s WHOIS information reveals that the registrant of the <weai.org> domain name is “Web Advertising, Corp.” Given the lack of evidence suggesting otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name and how not shown that it is authorized to register domain names using Complainant’s mark in any way in accordance with Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that Respondent offered its disputed domain name registration for sale. The Panel finds that Respondent’s offer to sell its disputed domain name registration is not a bona fide offering pursuant to Policy ¶ 4(c)(i) and it is not a legitimate or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith by registering a domain name that contains in its entirety a mark in which Complainant has rights by further by offering to sell the disputed domain name registration to Complainant for $5,900. The Panel finds that Respondent’s offer to sell the disputed domain name registration for a price that is obviously far in excess of out-of-pocket costs supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the respondent registered and used the domain names to profit where the respondent offered to sell the domain names for $2,300 per name); see also World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
The Panel finds that Complainant 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 <weai.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 14, 2007.
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