Smithsonian Institution v. Manish
Aggarwal
Claim
Number: FA0503000436792
Complainant is Smithsonian Institution (“Complainant”),
represented by Scott D Bolden, Department of Justice, Civil
Division, Commercial Litigation Branch, 1100 L Street Room 11118, Washington,
DC 20530. Respondent is Manish Aggarwal (“Respondent”),
represented by Rajiv Jain, 30481 Marbella Vista, San Juan
Capistrano, CA, 92675.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <smithsonian.com>, registered with Address
Creation.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 14, 2005.
On
March 18, 2005, Address Creation confirmed by e-mail to the National
Arbitration Forum that the domain name <smithsonian.com> is
registered with Address Creation and that Respondent is the current registrant
of the name. Address Creation has
verified that Respondent is bound by the Address Creation 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
March 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 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@smithsonian.com by e-mail.
Having
received no Response from Respondent, using the same contact details and methods
as were used for the Commencement Notification, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
April 15, 2005 pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) 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 <smithsonian.com>
domain name is identical to Complainant’s SMITHSONIAN mark.
2. Respondent does not have any rights or
legitimate interests in the <smithsonian.com> domain name.
3. Respondent registered and used the <smithsonian.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Smithsonian Institution, is a trust instrumentality of the United States,
incorporated by Act of Congress in 1846, whose mission is “the increase and
diffusion of knowledge.” 20 U.S.C. §
41, et seq.
Complainant is
the world’s largest museum and research complex. Complainant maintains 16 different museums, is affiliated with
129 other museums and manages 7 research centers.
Complainant has
used the SMITHSONIAN mark in commerce to identify its museum services for over
150 years. Complainant has registered
the SMITHSONIAN mark with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,003,626 issued January 28, 1975).
Respondent
registered the <smithsonian.com> domain name on April 4,
2001. Respondent’s domain name resolves
to a search engine website that features links to various unrelated commercial
websites.
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.
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 has
established rights in the SMITHSONIAN mark through registration of the mark
with the USPTO and through continuous use of the mark in commerce for over 150
years. 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.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <smithsonian.com> domain name is
identical to Complainant’s SMITHSONIAN mark.
The addition of the generic top-level domain “.com” is not enough to
distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy
¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd.,
FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain
is irrelevant when establishing whether or not a mark is identical or
confusingly similar, because top-level domains are a required element of every
domain name.”); see also Kioti Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to
[contest complainant’s allegations] is tantamount to admitting the truth of
complainant’s assertion in this regard.”); see also Bayerische Motoren Werke
AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002)
(finding that in the absence of a response, the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
construe Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <smithsonian.com> domain
name pursuant to Policy ¶ 4(a)(ii). See
Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <smithsonian.com> domain name, which is identical to
Complainant’s SMITHSONIAN mark, to operate a search engine website that
features links to various unrelated websites.
The Panel finds that such diversionary use is 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). See 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); see also
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the disputed domain name to redirect
Internet users to websites unrelated to the complainant’s mark, websites where
the respondent presumably receives a referral fee for each misdirected Internet
user, was not a bona fide offering of goods or services as contemplated by the
Policy).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<smithsonian.com> domain name or authorized to register domain
names featuring Complainant’s SMITHSONIAN mark. Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
various unrelated websites. Because
Respondent’s domain name is identical to Complainant’s mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s commercial use of the <smithsonian.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant’s mark when the domain name
resolves to commercial websites and the respondent fails to contest the
Complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)); see also Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's
attempt to commercially benefit from the misleading domain name is evidence of
bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered the <smithsonian.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the SMITHSONIAN mark due to Complainant’s registration of the mark with the
USPTO and to the immense fame and popularity associated with Complainant’s
mark. Registration of a domain name
that is identical to another’s mark despite actual or constructive knowledge of
the mark holder’s rights is tantamount to bad faith registration and use under
Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Ty Inc. v.
Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s
registration and use of an identical and/or confusingly similar domain name was
in bad faith where the complainant’s BEANIE BABIES mark was famous and the
respondent should have been aware of it).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <smithsonian.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 26, 2005
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