The Mega Society v. Dr. Gina Lynne LoSasso d/b/a Mega Foundation
Claim Number: FA0312000215404
Complainant is The Mega Society, San Diego, CA (“Complainant”) represented by Leighton M. Anderson, Esq., of Bewley, Lassleben & Miller LLP, 13215 East Penn Street, Suite 510, Whittier, CA 90602. Respondent is Dr. Gina Lynne LoSasso d/b/a Mega Foundation, P.O. Box 894, Eastport, NY 11941 (“Respondent”).
The domain names at issue are <megasociety.net>, <megasociety.com>, <megafoundation.net>, <megafoundation.org>, and <megacenter.org>, registered with Domaindiscover.
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.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 3, 2003; the Forum received a hard copy of the Complaint on December 8, 2003.
On December 5, 2003, Domaindiscover confirmed by e-mail to the Forum that the domain names <megasociety.net>, <megasociety.com>, <megafoundation.net>, <megafoundation.org>, and <megacenter.org> are registered with Domaindiscover and that the Respondent is the current registrant of the names. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 December 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 6, 2004 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 email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on January 5, 2004.
On January 12, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq. as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
The Complainant contends that two of five domain names at issue, <megasociety.net> and <megasociety.com> are identical to Complainant’s trademark The Mega Society; and the other three domain names at issue, <megafoundation.net>, <megafoundation.org> and <megacenter.org> are confusingly similar to Complainant’s mark. Complainant contends that it was formed around 1992 and is an association where members qualify for admission based upon their scores in one or more intelligence tests. According to Complainant, no other party has used the trademarks in connection with the creation, business or publications of a society of high IQ individuals prior to Complainant. Complainant contends that although it has no federally registered trademarks, it has acquired enforceable trademark rights under the common law of California and other states. In support of this contention Complainant cites to and provides a copy of a judgment of the Superior Court of the State of California. Mega Society v. Chris Langan, et al., GIC 787630 (April, 29, 2001)(“California action”).
Complainant contends that Respondent in this proceeding conducts its business and operations for and in association with the Defendant in the California action. The California action recognizes Complainant’s rights to certain trademarks and tradenames, including but not limited to “The Mega Society” and specifically enjoins Defendant from using or continuing to use or claim ownership of <megasociety.net> or any other Internet domain name that uses or incorporates any of Complainant’s names or marks or engage in any activities which are intended to or likely to have the effect of causing confusion with respect to Complainant or its marks. Complainant contends that Respondent is a former member of Complainant’s organization and on or about October 1, 1997, left Complainant’s organization and formed its own competing business with Defendant Langan from the California action. Complainant contends that Respondent’s use of the domain names at issue for the purpose of a business with policies and purposes similar to that of The Mega Society constitutes bad faith, especially in light of the judgment in the California action. Complainant also contends that as a result of Respondent’s conduct, it is unable to establish its own website and that prospective members and the general public searching for Complainant on the Internet are led to Respondent’s website.
Respondent contends that the Panel does not have jurisdiction to decide an issue that is based on the judgment of a California court to which Respondent was not a party. Respondent further contends that there is a clear distinction between her company “The Mega Foundation” and Complainant’s association “The Mega Society.” Respondent contends that its company The Mega Foundation has been in existence since December, 1999 when it filed its Articles of Incorporation, and obtained tax exempt status from the IRS in June, 2000.
Respondent contends that Complainant does not possess any common law trademark rights because it is not involved in a commercial enterprise that provides legitimate goods or services. Respondent also argues that Complainant has not been in business continually since the 1980s, but rather was dormant for a period of time in the 1980s and began activities in its current form around 1990-91. Respondent also contends that the term “mega”, common to all the disputed names, is extremely common and not a proper basis for a trademark. Respondent also questions the validity of the judgment in the California action noting that Respondent herein was not a party to that action and that the Defendant in the California action was not properly notified, the case was not properly adjudicated and the judgment was improperly issued. Although, Respondent contends that it was not acting “in concert or cooperation” with the Defendant in the California action, it does admit that Defendant Mr. Langan is on The Mega Foundation Board of Directors.
Respondent further contends that the domain names <megafoundation.org> and <megafoundation.net> were acquired in 1999 at approximately the same time that Respondent’s Articles of Incorporation were filed, that the domain names <megasociety.net> and <megasociety.com> were acquired in December, 2000, by which time The Mega Foundation was well established as an officially recognized non-profit entity and the domain name <megacenter.org> was acquired for the possible establishment of a giftedness resource center. Respondent contends that Complainant has the opportunity to register and use “megasociety” related domain names such as <megasociety.us> or <themegasociety.net>, .info, or .us, all of which are still available. Respondent contends that Complainant’s conduct is nothing more than attempted “reverse domain name hijacking” to deprive Respondent of its domain names.
The Panel finds that with respect to the domain names <megasociety.net> and <megasociety.com> that Complainant has established that the marks are identical or confusingly similar to its common law mark, that Respondent has no rights or legitimate interests with respect to those domain names and that those domain names have been registered and are being used in bad faith. Those two domain names should be transferred to Complainant. The Panel finds that Complainant has failed to meet its burden of proof with respect to the domain names <megafoundation.net>, <megafoundation.org> and <megacenter.org>.
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.
Complainant asserts common law rights in the THE MEGA SOCIETY and NOESIS marks through use as a tradename in the former, and as a journal publication in the latter. Both marks are purportedly used in connection with a private society comprised of high-IQ individuals that was formed in or about 1982. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”); see also Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).
Complainant further presents proof of a judgment, issued by the California Superior Court for San Diego County, prohibiting the infringment of various marks associated with the Mega Society. The judgment in the California action, specifically recognizing Complainant’s trademark rights to marks including “The Mega Society”, orders that Defendant is enjoined from using, or continuing to use the domain name, <megasociety.net>, or any other Internet domain name that uses or incoporates any of Complainant’s names or marks. Although, Respondent contends that this Panel is not the proper body to enforce California judgment, the Panel is entitled to rely upon the decision and judgment as evidence in support of Complainant’s claims. In addition to that evidence, there is proof submitted that Complainant has been using The Mega Society name and marks since the 1980s with respect to its association and publications and has acquired common law rights to that name. The Panel finds that the domain names <megasociety.net> and <megasociety.com> are identical or confusingly similar to Complainant’s name and marks.
However, with respect to the domain names, <megafoundation.net>, <megafoundation.org> and <megacenter.org>, Complainant has failed to establish either common law rights to those domain names, or that those domain names are identical or confusingly similar to any name to which it has rights. As noted by Respondent, the term “mega” is a generic term synonomous with general words such as “large,” “great,” and “good.” Respondent argues that “generic applications of common words are not legally acceptable as trademarks.” See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("[c]ommon words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis"); see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000) (“genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration”); see also Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that seminar and success are generic terms to which Complainant cannot maintain exclusive rights).
The Panel finds that Complainant has failed to establish that it has common law rights to The Mega Foundation or Mega Center, and thus has failed to meet its burden of proof with respect to the <megafoundation.net>, <megafoundation.org> and <megacenter.org> domain names.
With respect to the domain names <megasociety.net> and <megasociety.com> Respondent lacks rights or legitimate interests in the disputed domain names because Respondent has registered and used the domain names knowing they were Complainant’s name and marks. Knowledge of Complainant’s rights in the mark is evidenced by the fact that the Chairman of Respondent’s foundation was previously a member of Complainant’s society, but has since begun a new business in conjunction with Respondent. In addition, Respondent lacks rights and legitimate interests because it is using the disputed domain names in connection with publications that are substantially similar to those of Complainant. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).
Furthermore, Respondent submits no proof that it is engaging in any business under the name The Mega Society. But, rather is merely using its mega society domain names for the purpose of redirection to its website. Based upon the above, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests to the domain names <megasociety.net> and <megasociety.com>.
Respondent’s registration and use of the disputed domain names has disrupted the competitive business of Complainant, evidencing bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant’s business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that the domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).
Complainant has met its burden of establishing that Respondent’s registration and use of the domain names <megasociety.net> and <megasociety.com> was in bad faith.
Respondent has also contended that commencement of this proceeding constitutes reverse domain name hijacking on the part of Complainant. The claim of reverse domain name hijacking is a serious claim and should not be made without substantial proof and support. In this case the Panel finds that Complainant is entitled to the transfer of the domain names <megasociety.net> and <megasociety.com>. There can be no reverse domain name hijacking with respect to those domain names. Although the Panel finds that Complainant is not entitled to the transfer of the domain names <megafoundation.net>, <megafoundation.org> and <megacenter.org>, Respondent has provided insufficient proof to support a claim of reverse domain name hijacking with respect to any of these domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in part.
Accordingly, it is Ordered that the <megasociety.net>, <megasociety.com>, domain names be TRANSFERRED from Respondent to Complainant, The Mega Society. No Order is made with respect to the <megafoundation.net>, <megafoundation.org>, and <megacenter.org> domain names.
David P. Miranda, Panelist
Dated: January 30, 2004
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