March Group Delaware, LLC v. James Michael
Claim Number: FA1201001427460
Complainant is March Group Delaware, LLC (“Complainant”), Florida, USA. Respondent is James Michael (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <themarchgroup.org>, <marchgroup.net>, and <themarchgroup.info>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2012; the National Arbitration Forum received payment on February 3, 2012.
On January 31, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <themarchgroup.org> domain name is registered with Godaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <marchgroup.net> and <themarchgroup.info> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@themarchgroup.org, postmaster@marchgroup.net, and postmaster@themarchgroup.info. Also on February 15, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A Response was received and determined to be deficient on March 7, 2012, as the Response was received after the deadline to file a Response.
On March 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant in the Complaint claims that:
· Complainant owns a trademark with the United States Patent and Trademark Office ("USPTO") for the THE MARCH GROUP mark (Reg. No. 3,364,484 registered January 8, 2008).
· The <themarchgroup.org> domain name is Complainant’s trademarked company name.
· The owner of the domain name is placing content on the websites seeking to discredit and disrupt Complainant’s business.
· The domain name holder has selected and used the <themarchgroup.org> domain name in bad faith to unfairly tarnish Complainant’s trademark.
· The domain holder is publishing content inaccurately stating Complainant has scammed business owners and the domain name further inaccurately links Complainant’s legitimate business to other businesses Complainant has never done business with.
B. Respondent
Respondent in his response alleges that:
· Complainant claims common law trademark rights.
· Trademark infringement law prevents only unauthorized usage of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential customers. In this regard it has relied upon following decisions:
(i) Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672, 74 USPQ2d 1280 (9th Cir. 2005) (holding that defendant Kremer’s use of bosleymedical.com for a website that was critical of Bosley’s hair-restoration services was not made in connection with the sale of goods and services and therefore did not constitute infringement or dilution under the Lanham Act); and
(ii) Prestonettes, Inc. v. Coty, 264 U.S. 359, 368 (1924) (a trademark only gives right to prevent use of it to protect the owner’s goodwill against the sale of another’s product).
· The top-level domain “.org” has been customarily used for non-profit entities and organizations, which Respondent falls under for its hosting of the website.
· A domain name with the same second-level domain but different gTLD is not necessarily considered identical.
· Complainant does not argue that the trademark is being used in connection with the sale of goods and services or any commercial transactions.
· Complainant has presented no evidence supporting its assertion that Respondent has no rights or legitimate interests in the domain names. The Policy and Rules envisage that the initial burden rests squarely on the shoulders of Complainant to show that Respondent has no rights or legitimate interest in respect of the domain name. It is only thereafter that the burden shifts to the Respondent to rebut or explain. In this regard, Respondent has relied upon the following decisions of this Forum:
(i) Stream Int’l Inc. v. dotPartners LLC, FA 112428 (Nat. Arb. Forum May 2, 2002) (decision under STOP); and
(ii) The Wharton School of the Univ. of Pa. v. Motherboards.com, FA 161274 (Nat. Arb. Forum June 13, 2003) (holding that "Complainant failed to support its contentions with evidence and just limited to copy parts of the provisions of the Policy without further explanation. A mere allegation of the lack of rights or interests of the Respondent is not enough under the scope of the Policy to find a Complaint successful.").
· Respondent has been commonly known by the <themarchgroup.org> domain name through its use of the website since October 2011. The domain name “themarchgroup.org”, since its inception, has included the term, “The March Group Leaks” prominently, and many people visiting the website has thus been made aware of the domain name in question. Respondent therefore claims that it has rights and legitimate interests in the disputed domain name - THEMARCHGROUP.ORG.
· Respondent is using the domain names in question to provide information gathered from other users. It is making a legitimate noncommercial use of the disputed domain name without any intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
· Complainant’s allegations that Respondent has “redirected $2 million” from Complainant’s business is misleading, as Complainant’s exhibits do not show such a statement made by Respondent.
· Respondent has not attempted to sell the domain name to Complainant or anyone else.
· Respondent has not endorsed or promoted Complainant’s competitors or used the website for commercial gain.
· Complainant is using more than 20 other related domain names for its business, proving that Respondent has not prevented Complainant from using their trademark on the Internet.
· Complainant has not met its burden of proof of bad faith registration and use. In order to support its contention that the Complainant has completely failed to meet the burden of proof of bad faith registration and use under Policy 4(a)(iii), the Respondent has relied upon the following decisions of this Forum:
(i) Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech. Ltd., FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (holding that mere assertions of bad faith are insufficient for a complainant to establish Policy 4(a)(iii)); and
(ii) Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (holding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith.).
· Respondent has alleged that evidence to support a finding of bad faith includes - (a) evidence undermining a reasonable explanation for the choice of domain name except for its similarity to the Complainant’s marks, (b) an offer to sell the domain name to the Complainant, (c) presentation of the mark on the Respondent’s website that is similar in nature to the use by the Complainant of its mark or marks, (d) any pattern of conduct by the Respondent indicating a willingness to register domain names opportunistically. In this regard, Respondent has relied upon the following decisions of this Forum in:
(i) BasicNet S.P.A. v. Jinpoong, Park Myung Hwan, D2008-0308 (WIPO May 6, 2008);
(ii) The Neiman Marcus Group, Inc. v. Ball, FA 1159811 (Nat. Arb. Forum May 2, 2008).
· The Respondent contends that the Complainant should not be granted any of the relief it seeks, and Respondent should be allowed to continue to use and control the disputed domain names - THEMARCHGROUP.ORG, MARCHGROUP.NET, THEMARCHGROUP.INFO.
· The Panel finds that the Complainant is having the trade mark registration with USPTO for the mark “THE MARCH GROUP WORLDWIDE” since 8th January, 2008. It is more than 3 years thereafter, i.e. after the registration of the above-mentioned trademark by the Complainant on 8.1.2008, the Respondent had registered the disputed domain names in <themarchgroup.org>, <themarchgroup.info> and <marchgroup.net> in its name in April/May 2011 and is using the said domain names.
· The Panel finds that although it becomes clear from the reading of the response of the Respondent and Annexure-4 thereto, that the Complainant has other domain names registered in its favour, however, the Complainant in its Complaint has neither mentioned nor annexed any document as proof of its having any other domain names registrations in its favour using its trademark. As set-out hereinbelow, the contention of the Respondent that the Complainant has claimed common law trademark rights, is entirely incorrect. The case of the Complainant in this regard that it had gotten USPTO registration of its trade mark “THE MARCH GROUP WORLDWIDE” since 8th January, 2008.
· The Complainant alleges that Respondent’s domain names uses its trademarked company name and has contents that discredits and disrupts Complainant’s business. Indeed, trademark infringement law prevents only unauthorized usage of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential customers.
· The Panel finds that the disputed domain names – <themarchgroup.org>, <themarchgroup.info> and <marchgroup.net> registered by the Respondent are confusingly similar to the trademark “THE MARCH GROUP WORLDWIDE” of the Complainant; Respondent has no rights or legitimate interests in relation to the domain name; and the domain name is being used in bad faith.
· The Panel also finds that domain names – <themarchgroup.org>, <themarchgroup.info> and <marchgroup.net> deserve to be transferred to the Complainant and the Respondent is not entitled to use this domain names. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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."
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.
(4) 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."
Preliminary Issue : Deficient Response
The Panel observes that the Respondent was required to submit its response by March 6, 2012 but it actually submitted its Response on March 7, 2012 which was past the Response deadline date of March 6, 2012. The National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. However, to allow equal opportunity and fair play, the Panel decides to accept the response of the Respondent and consider it for deciding the dispute. In this regard, The Panel derives strength from the following decisions of this Forum in:
(i) Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (holding that electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); and
(ii) Victoria’s Secret Stores Brand Mgmt. Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”).
· Complainant asserts that it owns a trademark with the USPTO for the THE MARCH GROUP mark. The Panel observes that Complainant’s evidence of such may be found in two places: in the Complaint as an attached picture; and within Annex 1. However, the Panel finds that Annex 1 is not the trademark certificate issued by the USPTO, but is a Notice of Publication under 12(a) document that is dated October 3, 2007. However, the Panel also observes that the picture contained within the Complaint matches the serial number of the publication in Annex 1 for the THE MARCH GROUP mark. The Panel observes that the picture within the Complaint identifies Complainant’s THE MARCH GROUP as being registered with the USPTO (Reg. No. 3,354,484 registered January 8, 2008). The Panel accepts this evidence and finds that Complainant has established rights in the THE MARCH GROUP mark under Policy 4(a)(i) through its registration with the USPTO. In this regard, the Panel finds the following decisions of this Forum to be relevant:
(i) Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (holding that “As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy 4(a)(i).”); and
(ii) Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (holding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
· Respondent alleges that Complainant has asserted common law trademark rights in this case. However, the Panel finds that Complainant has presented evidence of a trademark that it owns with the USPTO.
· Further, Respondent argues that the <themarchgroup.org> domain name contains a different gTLD than Complainant’s domain names, thus making its domain name “not necessarily identical” to Complainant’s mark. To substantiate its argument, the Respondent has relied upon a prior UDRP case for this proposition - Pueblo Int’l, Inc. v. Pueblo On-Line, FA 95250 (Nat. Arb. Forum Aug. 24, 2000) (holding that the disputed domain name <pueblo.org> is not identical to the domain names <pueblo.com> or <pueblo.net>).
· However, the Panel disagrees with the argument of the Respondent that the disputed domain name <themarchgroup.org> is not identical to Complainant’s THE MARCH GROUP mark under Policy 4(a)(i).
· Complainant argues that the <themarchgroup.org> domain name is identical to its trademarked company name. Complainant does not present any arguments as to the <themarchgroup.info> domain name, but the Panel finds that this domain name also appears to be identical to the THE MARCH GROUP mark. Although Complainant makes no other arguments in this regard, the Panel finds that the removal of the spaces from Complainant’s mark and the addition of the generic top-level (“gTLD”) “.org” or “.info” are not significant enough changes to Complainant’s mark to render the domain names distinct from the mark. The Panel finds the following decisions of this Forum to be relevant in this regard:
(i) Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (holding that <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); and
(ii) Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (holding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy 4(a)(i)).
· Therefore, the Panel finds that the Respondent’s <themarchgroup.org> and <themarchgroup.info> domain names are confusingly similar / identical to Complainant’s THE MARCH GROUP mark under Policy 4(a)(i).
· Complainant does not present any arguments as to the <marchgroup.net> domain name. However, the Panel observes that the domain name removes the spaces between the terms of the mark, omits the term “THE” from the mark, and adds the gTLD “.net.” The Panel finds, from a comparison of the domain name to Complainant’s mark, that under Policy 4(a)(i) the disputed domain name is confusingly similar to Complainant’s mark. In this regard, the Panel finds the following decisions of this Forum to be relevant:
(i) U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (holding that “Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy 4(a)(i).”); and
(ii) Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal’.”).
· The Panel observes that 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 following decisions of this Forum, in this regard, are relevant:
(i) 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); and
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (holding that “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
· Respondent contends that it has become commonly known by the <themarchgroup.org> domain name through its use of the domain name since October 2011. Respondent claims that Internet users visiting the website have come to associate Respondent with the domain name. The use of the disputed domain name claimed by the Respondent is barely of a few months and the Complainant has a registered Trademark which is the name of the Complainant’s company name also and therefore, the Complainant would have a better case on prior use as well. The Panel does not find itself in a position to accept the contention of the Respondent that internet users visiting the website of Respondent have come to associate Respondent with the domain name. In any case, the evidence establishing registration of the trademark by the Complainant with USPTO since 8.1.2008 would not permit sustainability of any argument to the contrary raised on behalf of the Respondent.
· Further, Respondent alleges that it has rights and legitimate interests in the domain names. Respondent argues that it is using the domain names to present information about Complainant’s company that it has gathered from other Internet users. The Panel finds that the evidence offered by Respondent appears to show that Respondent’s website criticizes Complainant’s company could, at best, prove Respondent to be a competitor of the Complainant who, in order to use the Internet to express his right to free speech and expression of opinion, subject to provisions of other laws. The Panel relies upon the decision in Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (holding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website.).
· Complainant does not present any argument under Policy 4(c)(ii). However, the Panel observes from the WHOIS information that the Respondent “James Michael” is the registrant of the disputed domain names. The Panel finds that this does not create a connection between Respondent and the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). The Panel finds the following decisions of this Forum to be relevant:
(i) M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (holding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy 4(c)(ii) based on the WHOIS information and other evidence in the record); and
(ii) St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name.).
· Complainant states that Respondent is using the disputed domain names to “attempt to discredit Complainant’s business” by stating that Respondent has “redirected $2 million from Complainant’s business.” Complainant has attached to the present Complaint some screen shots to show Respondent’s use of the disputed domain names as a criticism website. The Panel accepts this evidence of the Complainant and finds that Respondent is not making a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii) through its use of the domain names to criticize Complainant. The Panel finds the following decisions to be relevant in this regard:
(i) Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); and
(ii) Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (holding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark.).
· The Panel observes that Complainant does not present a specific argument under any of the Policy 4(b) factors. However, the Panel finds that the Policy 4(b) factors are illustrative and not meant to be an exhaustive list of bad faith instances under the Policy. In this regard the following decisions are relevant:
(i) Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (holding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); and
(ii) CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (holding that “The Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”.).
· Complainant argues that “the domain name holder has selected and used this domain in bad faith to unfairly tarnish our trademark.” Complainant further argues that Respondent is using the disputed domain names to publish content “inaccurately stating that Complainant has scammed business owners,” while linking Complainant’s business to other businesses Complainant states it has never done business with. While the Panel observes that Complainant’s arguments that Respondent is tarnishing its trademark, do not apply under the UDRP, but the Panel finds bad faith under Policy 4(a)(iii) where Respondent is using Complainant’s trademark in the disputed domain names. The Panel in this regard finds support from the following decisions:
(i) Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); and
(ii) Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (holding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <themarchgroup.org>, <marchgroup.net>, and <themarchgroup.info> domain names be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: 20.03.2012
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