Mothers Against Drunk Driving v. Hyun-Jun Shin

Claim Number:  FA0304000154098



Complainant is Mothers Against Drunk Driving, Irving, TX, USA (“Complainant”) represented by Heather C. Brunelli, of Thompson & Knight LLP. Respondent is Hyun-Jun Shin, Gyeongbuk, KOREA (“Respondent”).



The domain name at issue is <>, registered with Hangang Systems, Inc. d/b/a  Doregi.Com.



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.


James A. Crary as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 4, 2003; the Forum received a hard copy of the Complaint on April 7, 2003.


On April 5, 2003, Hangang Systems, Inc. d/b/a Doregi.Com confirmed by e-mail to the Forum that the domain name <> is registered with Doregi.Com and that Respondent is the current registrant of the name. Doregi.Com has verified that Respondent is bound by the Doregi.Com 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 April 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 5, 2003 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 by e-mail. Both English and Korean copies of the Commencement Notification and Complainant were included.


Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.


On Mat 15, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.


Since the Respondent failed to respond to the translated Commencement Notification and Complaint, the Panel determines, in accordance with Rule 11, that the remaining Administrative Proceeding may be conducted in English.



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



A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is identical to Complainant’s MADD mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant, Mothers Against Drunk Driving, is a non-profit organization devoted to the mission to stop drunk driving, and other related issues. Complainant, which operates under the acronym “MADD,” was founded in 1980 and has grown into one of the largest crime victims organizations in the world. Complainant has used the MADD mark since its inception in 1980.


Complainant holds U.S. Patent and Trademark Office Reg. No. 1,250,706 for the MADD mark, which was registered on September 6, 1983. Complainant holds a variety of other registrations and applications for trademarks and service marks that incorporate its MADD mark, including, inter alia: Reg. No. 2,187,625 for MADD DISH; Reg. No. 2,354,324 for MADD MUNCHIES; and Reg. No. 1,998,125 for MADD VICTIM SERVICES. Complainant has also registered or filed applications for its MADD mark in multiple countries throughout the world, including Australia, Canada and Japan.


Complainant has operated from the <> domain name since April 22, 1996, and has maintained a website at that domain name for approximately seven years.


Complainant has invested substantial effort, including significant expenditures, to develop goodwill in the MADD mark and to cause the relevant consuming public to recognize the MADD mark as distinctly designating its services. Complainant’s advertising and promotion of its MADD mark for the past twenty years has made the mark famous.


Respondent, Hyun-Jun Shin, registered <> on December 18, 2002. Complainant’s investigation of Respondent’s use of the disputed domain name indicates that shortly after Respondent registered <>, the website located at the domain name advertised that the domain name registration was for sale. Respondent suggested, in correspondence with an agent of Complainant, that a “reasonable price” for the subject registration was $20,000.


Subsequent to Complainant’s inquiry relating to sale of the subject domain name, on March 18, 2003, the <> domain name redirected visitors to a pornographic website located at <>.


On March 20, 2003, the website connected to the domain name again contained only a notice that the domain name registration was for sale.



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.


Identical and/or Confusingly Similar


Complainant has established rights in the MADD mark through registration with various international trademark authorities and continuous use of the mark since at least 1980.


Respondent’s <> domain name is identical to Complainant’s MADD mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates by the addition of the top-level domain “.com.” Because top-level domains are a required element in domain names, their presence is inconsequential in discerning “identicality” under Policy ¶ 4(a)(i). Internet users seeking Complainant’s website are likely to key <> into the browser because the domain name incorporates the MADD trademark and the most common URL suffix “.com.” See Sporty's Farm L.L.C. vs. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) ("For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com"); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).


The Panel finds that Policy ¶ 4(a)(i) has been satisfied.  


Rights or Legitimate Interests


Complainant’s submission to the Panel asserts that Respondent does not have any rights or legitimate interests in the <> domain name. Because Respondent failed to submit a Response, Complainant’s assertions are unopposed and the Panel is permitted to accept all reasonable inferences contained in the Complaint as true unless clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).


Additionally, because Complainant has provided proof of valid, subsisting rights in a mark that is identical to the domain name in question and alleged that Respondent lacks rights or legitimate interests in <>, the burden shifts to Respondent. By not responding, Respondent has failed to assert any circumstances that could substantiate its rights or interests in the subject domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also 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).


Uncontested circumstances indicate that Respondent’s domain name registration has continually been advertised for sale. Respondent’s apparent willingness to dispose of its rights in the <> domain name suggests that it lacks rights or legitimate interests in the domain name. Further, in conjunction with its attempts to sell its rights in the domain name, Respondent has used <> to divert unsuspecting Internet users to a pornographic website located at <>. Such diversionary use of the domain name works to tarnish and dilute Complainant’s MADD mark. Therefore, Respondent fails to establish rights in the domain name under Policy ¶¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling its rights); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).


There is no evidence before the Panel that suggests Respondent is commonly known by the “madd” identifier, or that Respondent is affiliated with a legitimate business that uses the <> domain name as its identity. Moreover, Respondent is not licensed or authorized by Complainant to make use of the MADD mark in connection with any purpose or use. Respondent’s use of the domain name to link to a pornographic website with no use of  “madd” in its content suggests Respondent does not have a legitimate relationship with the “madd” second-level domain. Because of the above circumstances, the Panel concludes that Respondent fails to establish rights in <> under 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 interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).


Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.  


Registration and Use in Bad Faith


Respondent registered and used the <> domain name in bad faith pursuant to Policy ¶ 4(b)(i). Specifically, uncontested evidence indicates that Respondent’s domain name, at various times, resolved to a website indicating that the domain name registration was for sale. Further, Respondent was seeking to sell its rights for $25,000, a figure in excess of typical out-of-pocket costs related to the domain name. Respondent has failed to submit any evidence justifying this presumed exorbitant figure. Circumstances indicate that Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring its rights to Complainant. Complainant’s initiation of the discussion about the purchase of the domain name registration is not relevant in determining bad faith, especially since in this instance, Respondent’s website advertised the sale prior to Complainant’s inquiry. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Marrow v., D2000-1234 (WIPO Nov. 22, 2000) (stating that a Panel should not “put much weight on the fact that it was the Complainant who contacted the Respondent to see if it was interested in selling the domain name”).


The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.



Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.






James A. Crary, Panelist

Dated:  May 27, 2003





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