Mothers Against Drunk
Driving v. MaDD HaTT Entertainment
Claim Number: FA0709001074881
PARTIES
Complainant is Mothers Against Drunk Driving (“Complainant”), represented by Remy
M. Davis, of Thompson & Knight, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <maddhattentertainment.com>,
registered with Godaddy.com, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 6, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 7, 2007.
On September 6, 2007, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <maddhattentertainment.com> domain
name is registered with Godaddy.com, Inc.
and that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 September 14, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 4, 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@maddhattentertainment.com
by e-mail.
A timely Response was received and determined to be complete on September 18, 2007.
On September 25, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Mothers
Against Drunk Driving (“MADD”) is a non-profit organization. Its mission is to stop drunk driving, support
victims of this violent crime and prevent underage drinking. MADD was founded in 1980 and has grown to be one
of the largest crime victims organizations in the world. In 1984 MADD became an international presence
when
The MADD
mark has been continuously used since September 5, 1980 in the
MADD is one
of the most well-known non-profit organizations in the country, and its MADD
mark is one of the most highly recognized trademarks among non-profit organizations.
In addition, the MADD Website, Complainant’s official website, provides
a source of not only advertising and exposure, but also fundraising efforts to
individuals worldwide. Complainant owns
the domain name <madd.org>, which was registered with registrar
Godaddy.com, Inc. on
The domain name <maddhattentertainment.com> is confusingly similar to Complainant’s distinctive and famous MADD Marks. Complainant has priority rights in the MADD Marks because all of the MADD Marks have been in use before Respondent registered the domain name on May 5, 2000.
Respondent’s domain name incorporates
the entire word portion of Complainant’s federally registered and famous MADD
mark. It is also confusingly similar to
other MADD Marks because it incorporates and features the dominant and
distinctive word portion of the MADD Marks and adds only two additional terms,
one of which is the misspelling of the generic and descriptive word “hat,”
while the other is the generic and descriptive term “entertainment.”
Respondent has no rights or legitimate interest in the <maddhattentertainment.com> domain name. Respondent is not commonly known as any of Complainant’s MADD Marks. Furthermore, Respondent is also not making any legitimate non-commercial or fair use of the disputed domain name.
Respondent’s website does not appear to offer any goods or services under the mark “Madd Hatt Entertainment.” In fact, other than the domain name and a design element incorporating these words on the webpage, there is no other use of the mark or goods or services offered under the mark.
Respondent registered and is using
the domain name <maddhattentertainment.com>
in bad faith. Upon registering the
domain name in 2000 long after registration of the MADD mark, Respondent knew
or should have known of Complainant’s famous MADD Marks.
Respondent also uses Complainant’s famous MADD mark in its domain name
simply for profit. Respondent’s bad
faith is evidenced by the fact that its website does not offer any products or
services through its domain name, but rather all links on the domain name
redirect visitors to Respondent’s secondary pay-per-click website.
As further evidence of Respondent’s bad faith, Complainant has twice
attempted to contact Respondent at the address made available through the
Godaddy.com, Inc. “whois” page. Both
attempts at an amicable resolution to this matter were ignored.
B. Respondent
Madd Hatt Entertainment was founded 1995 as a hip-hop music and entertainment
company. It registered the disputed domain
name in May of 2000. The very reason “madd”
was spelled with two Ds was not to exploit MADD’s trademark, but rather to keep
in touch with hip-hop’s tradition of "flipping" words so “mad” would
become “madd,” “hat” would become “hatt,” “dollar bills would become dolla
billz.” Also people would use terms like
“madd loot,” “madd skills,” or “madd flava” and purposely misspell the word or
flip it to make it unique.
Respondent’s goal was to build a diverse network of sites and cross
promote them site wide. It was
successful to a point, and as it grew it phased out the articles and other
content and focused more on services to maintain traffic. One of its sister domains, <nofatchicks.com>,
was borrowed by PETA for a national ad campaign against animal cruelty.
Complainant argues that simply having MADD in a domain will allow
someone to reap the benefits and exploit MADDs’ trademark.
If Respondent were trying to gain profit off the MADD trademark then it
would optimize its pages so that the search engines would list it at or near
the top of the listings whenever someone searches for MADD or any other terms
that they draw most of their traffic from.
Respondent has not now nor ever used the MADD name or its logos to
mislead or defraud anyone. MADD surely
would have taken action against Respondent much sooner had that been the case.
FINDINGS
(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.
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.
Complainant asserts rights in the MADD mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,250,706 issued Sept. 6, 1983). The Panel finds that Complainant’s USPTO trademark registration establishes Complainant’s rights to the MADD mark pursuant to Policy ¶ 4(a)(i). See Diners Club Int’l Ltd. v. Rulator Corp., FA 967678 (Nat. Arb. Forum June 5, 2007) (conferring rights in the DINERS mark to the Complainant based upon its USPTO trademark registration); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant alleges
that Respondent’s <maddhattentertainment.com> domain name is confusingly
similar to Complainant’s MADD mark pursuant to Policy ¶ 4(a)(i). Complainant contends that the disputed domain
name contains its MADD mark in its entirety, and that MADD prevails as the
dominant portion of the disputed domain name.
Complainant further contends that the mere additions of the generic
descriptive words “hat” spelled with an additional “t” and “entertainment” do
not sufficiently distinguish the disputed domain name from Complainant’s MADD
mark. The Panel finds that the addition
of the generic top-level domain (“gTLD”) “.com” is without relevance to this analysis. Therefore, the Panel finds that Respondent’s <maddhattentertainment.com>
domain name is confusingly similar to Complainant’s MADD mark pursuant to
Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409
(WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary
descriptive word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Novell, Inc. v. Taeho
Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the
<novellsolutions.com> domain name confusingly similar to the NOVELL mark
despite the addition of the descriptive term “solutions” because even though
“the word ‘solutions’ is descriptive when used for software, Respondent has
used this word paired with Complainant's trademark NOVELL”).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. The Panel finds that Complainant has
established such a prima facie case
pursuant to Policy ¶ 4(a)(ii). See
Hanna-Barbera Prods.,
Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under UDRP ¶
4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Complainant states that Respondent is not affiliated with Complainant, and does not promote Complainant’s goods or services. The Panel finds that Respondent is not commonly known by the <maddhattentertainment.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that
Respondent is using the <maddhattentertainment.com> domain name to redirect
Internet users to a pay-per-click search engine website at <searchvivor.com>,
which Complainant alleges is a domain name also owned by Respondent. Complainant asserts that Respondent is
attempting to commercially gain from the confusing similarity with
Complainant’s MADD mark. The Panel finds
that Respondent is not using the <maddhattentertainment.com>
domain name in connection with a bona
fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Complainant alleges that Respondent is attempting to profit from the goodwill associated with Complainant’s MADD mark by creating a likelihood of confusion. Customers may become confused as to the source, sponsorship, affiliation, or endorsement of the goods and services advertised by the links advertised on Respondent’s website that resolves from the <maddhattentertainment.com> domain name. Complainant alleges that Respondent is attempting to profit from this likelihood of confusion by using the pay-per-click structure. The Panel finds that Respondent’s registration and use of the <maddhattentertainment.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Respondent registered the <maddhattentertainment.com> domain name in 2000, which
is long after Complainant began using the MADD mark. The Panel determines that Respondent knew or
should have known of Complainant’s rights in the MADD mark, and finds this to
be further evidence that Respondent registered and is using the <maddhattentertainment.com>
domain name in bad faith pursuant to 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 Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration).
DECISION
Since the Complainant has established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <maddhattentertainment.com> domain
name be TRANSFERRED from Respondent to Complainant.
Dated: October 10, 2007
National
Arbitration Forum
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page