national arbitration forum

 

DECISION

 

Mothers Against Drunk Driving v. Marcus Finefrock

Claim Number: FA1304001492647

PARTIES

Complainant is Mothers Against Drunk Driving (“Complainant”), represented by  Herbert J. Hammond, Deborah L. Lively, Justin S. Cohen and Craig C. Carpenter of Thompson & Knight LLP, Texas, USA.  Respondent is Marcus Finefrock (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <maddvictimimpactpanel.com>, registered with GoDaddy.com, LLC.

 

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.

 

Fernando Triana, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 2, 2013; the National Arbitration Forum received payment on April 2, 2013.

 

On April 2, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <maddvictimimpactpanel.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2013 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@maddvictimimpactpanel.com.  Also on April 3, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 timely Response was received and determined to be complete on April 22, 2013.

 

On May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Fernando Triana, Esq. 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.

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

 

1.            Complainant is a non-profit organization devoted to stop drunk driving, support the victims of drunk drivers, and prevent underage drinking, for over the 30 years for which it has used the trademark MADD. 

 

2.            Complainant has registered the trademark MADD with the United States Patent & Trademark Office (“USPTO”), i.e., Registration No. 1,250,706 registered on September 6, 1983 to identify: “association services-namely, promoting the interests of individuals opposed to drunk driving” within international Class 42.  Complainant has also registered the trademark VICTIM IMPACT PANELS MADD & Design with Registration No. 1,628,711 registered on December 18, 1990 to identify: “association services-namely, promoting the interests of individuals opposed to drunk driving” within international Class 42.

 

3.            The trademark MADD has been widely publicized and it is recognized by the public and was first used on September 5, 1980. The trademark MADD has been continuously used in the United States of America, Canada and Mexico.

 

4.            Victim Impact Panels are court mandated awareness programs for offenders who have been arrested for driving under the influence of alcohol or drugs. Complainant created its Victim Impact Panel in 1989 and identifies it with the trademark VICTIM IMPACT PANELS MADD (Registration No. 1,628,711 registered on December 18, 1990 to identify: “association services-namely, promoting the interests of individuals opposed to drunk driving” within international Class 42).

 

5.            Complainant registered its domain name <madd.org> on April 22, 1996.

 

6.            Respondent registered the disputed domain name on October 13, 2011.

 

7.            Respondent’s disputed domain name <maddvictimimpactpanel.com> is confusingly similar with the trademark MADD, since it essentially incorporates the entire trademark VICTIM IMPACT PANELS MADD, and the entire trademark MADD.  The addition of the generic top-level domain (“gTLD”) “.com” is not relevant in preventing confusing similarity.

 

8.            Respondent is an individual named “Marcus Finefrock,” a criminal defense attorney who in fact practices in DUI/DWI defense work. 

 

9.            Respondent is not commonly known by, or affiliated with any business that goes by the trademark MADD. 

 

10.         Respondent is likely aware of MADD’s Victim Impact Panels program due to his work.

 

11.         Complainant has never granted Respondent permission to use the trademark MADD or any similar names or trademarks.  Respondent is in no way affiliated with Complainant.  Respondent is not authorized, or otherwise shown to be promoting Complainant’s services.

 

12.         Respondent is exploiting the fact that consumers might assume that the disputed domain name is affiliated or sponsored by Complainant.

 

13.         Respondent is using this domain name to resolve to a parked website that contains links to third-party businesses offering background checks, and providing Internet users with a list of lawyers for DUI defense, along with other hyperlinks that are not affiliated with Complainant’s services.  The parking of a disputed domain name is not a legitimate or bona fide use of the domain name.  Respondent is presumably obtaining advertising revenue by allowing the domain name to be used as a place to host commercial hyperlinks.

 

14.         Respondent is disrupting Complainant’s business under the trademark MADD by redirecting Internet users to the website of third-party hyperlinks offering criminal defense and DUI attorneys.

 

15.         Internet users are likely to be confused into believing there is some association between the content of the disputed domain name’s website and Complainant.  Internet users will wrongfully be led to believe that Complainant has in some way affiliated itself with, or endorsed, the criminal defense DUI attorneys listed on these websites.

 

B. Respondent

 

1.            Respondent is a plaintiff’s injury and criminal defense attorney, in Arizona. As an attorney, Respondent advices his clients on how to comply with Court orders regarding victim impact panels.

 

2.            Many courts and organizations use the term “impact panels” or “victim impact panels” in referencing a component of a criminal defendant’s punishment for committing a particular crime. 

 

3.            Victim impact panels were first initiated in 1982 by Complainant and it has since been used in the setting of property crimes, assaults, domestic violence, child and elder abuse, and homicide. 

 

4.            Respondent claims that because “Victim Impact Panel” is not registered by Complainant, Complainant cannot be in a position to judge whether it is within Respondent’s rights to use the phrase in domain names. 

 

5.            Respondent has not yet exercised any legitimate interest in the disputed domain name.

 

6.            Respondent plans to use the domain name to provide information about Complainant’s MADD victim impact panels, among others. Respondent’s use would be nominative, informational, educational, and non-commercial.

 

7.            Respondent’s use of the disputed domain name is to be nominative and informational, and not a profit-seeking venture.

 

8.            Respondent is not currently using the disputed domain name, meanwhile, the disputed domain name is “parked”, until the website is developed.

 

9.            The disputed domain name is parked by GoDaddy, and thus Respondent receives no commercial benefit from any hyperlinks therein.  Internet users could not possibly confuse a parked website as somehow being run by Complainant. 

 

10.         Respondent is merely in the developmental stages of turning the disputed domain name into a place where Internet users can find information.

 

FINDINGS

1.    Complainant owns the trademark MADD in the United States of America, since before the disputed domain name was registered by Respondent.

 

2.    Respondent must have been aware of the Complainant’s rights in the trademark MADD, since Respondent business is related to Complainant business, yet Respondent incorporated the trademark MADD in the disputed domain name. Thus, Respondent used the trademark MADD to create a likelihood of confusion aimed to divert consumers to Respondent’s website.

 

3.    Respondent is not affiliated with Complainant in any way: Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark MADD, nor is Respondent an authorized supplier of Complainant’s services.

 

4.    Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services.

 

5.    Before any notice, Respondent neither used the disputed domain names nor demonstrated that preparations have been made in connection with a bona fide offering of goods or services.

 

6.    Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark due to the links referred in its website.

 

7.    Respondent might use different domain names to provide the services described in its response.

 

DISCUSSION

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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

First of all, the Panel will determine whether or not the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights. Secondly, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and thirdly, the Panel will establish whether or not the disputed domain name has been registered and is being used in bad faith by Respondent.

 

Identical and/or Confusingly Similar

 

Complainant contends to be the owner of the trademark MADD in the United States of America, which has been continuously used since September 5, 1980 to identify association services-namely, promoting the interests of individuals opposed to drunk driving.

 

a)    Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in a number of many jurisdictions of the world.

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks^[1] and thus, it is well established that a Complainant does not require a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the Trademark MADD. Exhibit A to the Complaint shows:

 

·        United States Trademark Registration No. 1,250,706 registered on September 6, 1983, for: “association services-namely, promoting the interests of individuals opposed to drunk driving”.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with the stated services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.^[2] Thus, Complainant established its rights in the trademark MADD.^[3]

 

Moreover, as per an ex officio search conducted by the Panel on May 15, 2013 based on the information provided by Complainant in the Complaint, Complainant is also owner of the trademark VICTIM IMPACT PANELS MADD, as follows:

 

·        United States Trademark Registration No. 1,628,711 registered on December 18, 1990, for: “association services-namely, promoting the interests of individuals opposed to drunk driving”.

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark MADD for purposes of Paragraph ¶ 4(a)(i) of the Policy.

 

b)   Identity or confusing similarity between the Disputed Domain Name and the Complainant’s trademark

 

Complainant alleges that the disputed domain is confusingly similar to the trademark MADD and incorporates all of the words associated with the trademark VICTIM IMPACT PANELS MADD.

 

Respondent, agrees with Complainant by stating in the Response that the “disputed domain name uses and is similar to the one registered mark of ‘MADD’”.

 

On the first place, before establishing whether or not the disputed domain name <maddvictimimpactpanel.com> is confusingly similar to the Complainant’s trademark MADD, the Panel wants to point out that the addition of generic top-level domain (“gTLD”), i.e., “.com,” “.biz,” “.edu,” “.org”, cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark.^[4] Neither the addition of country-code top-level domains (“ccTLD”), i.e., “.co,” “.de,” “.cr,” “.es,” nor the insertion of a gTLD has a distinctive function^[5].

 

UDRP Panels have unanimously accepted that the inclusion of the “.com” (gTLD), in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

“[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is without legal significance since use of a gTLD is required of domain name registrants, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services.”

 

Furthermore, the Panel considers that the reproduction of the trademarks MADD and VICTIM IMPACT PANELS MADD, by the disputed domain name <maddvictimimpactpanel.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark^[6], mainly since the disputed domain name reproduces entirely Complainant’s trademark VICTIM IMPACT PANELS MADD without any other distinctive elements and Complainant’s trademark MADD adding the descriptive words “victim impact panel”. Consequently, consumers will assume that the owner of the disputed domain name is the Complainant.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph ¶ 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

 

a)  Prima Facie Case.

 

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent^[7].

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

“Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel’s view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head”.

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks of rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests^[8].  If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the domain name <maddvictimimpactpanel.com> because of the following: i) Respondent is not commonly known by, or affiliated with any business with the name MADD; ii) Respondent must have known the trademark MADD due to his work as an attorney regarding, among others, DUI cases; iii) Respondent has not been authorized by Complainant to use the trademark MADD in any manner; iv) Respondent is using Complainant’s trademarks in the disputed domain name to confuse consumers making them believe Respondent is affiliated with or sponsored by Complainant; and v) Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services, because the disputed domain name offers sponsored links of services related with Complainant’s activities.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent’s rights or legitimate interests in the disputed Domain Name.

 

Paragraph 4(c) of the Policy includes an enunciative listing of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:

 

(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent states that he has not yet exerted any legitimate interest in the disputed domain name. Respondent plans to create an informational website, encouraging individuals to participate in victim impact panels, such as the VICTIM IMPACT PANELS MADD. Respondent asserts that he is not using the disputed domain name and that it is parked with Godaddy.  

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain name <maddvictimimpactpanel.com>. Simply stating that the domain name is going to be used as an informational site is not evidence of Respondent’s rights or legitimate interest in it. Since its registration, Respondent has had enough time to prepare and use the website of the disputed domain name; notwithstanding, it has not use it or proven that it has been preparing it to be used.

 

Accordingly, Respondent failed to prove that before receiving the written notice of the Complaint he was using or preparing a website to use the disputed domain name in connection with a bona fide offering of goods or services.

 

The Panel conducted searches ex officio on May 15, 2013, in the search engines Google and BING to confirm that Respondent is not commonly known by the disputed domain name < maddvictimimpactpanel.com >,[9] concluding that the respondent was not and has never been commonly known by the disputed domain name, which fails to comply with the defense set forth under Policy ¶ 4(c)(ii).

 

Respondent has not used the disputed domain name as he asserts in his Response. If so, Respondent is not making a legitimate noncommercial or fair use of the domain names. Failing to actively use the disputed domain names does not qualify as 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).[10] 

 

However, the disputed domain name resolves to a site which promotes “Public Arrest Records”, “Criminal Defense Lawyers”, “Criminal Background Check” among others”. Consequently, the disputed domain name is being used to promote services once the consumers have already been misled.

 

Finally, Respondent asserts that its registration and intended use of the disputed domain name, which incorporate Complainant’s trademark, constitutes nominative fair use.  As Respondent has not come forward with concrete evidence of its alleged intended use of the disputed domain name, the Panel declines to address this assertion.[11]

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

 

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(1)   Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(2)   Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(3)   Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(4)   By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.

 

Respondent states in his Response that Victim Impact Panels were first initiated in 1982 by Complainant, showing previous knowledge of Complainant’s trademarks and activities.

 

Thus, this Panel deems that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith.^[12]  See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.

 

Complainant also mentions that Respondent’s web site contains sponsored links being a pay-per-click site, and the Panel accepts the uncontested evidence submitted by Complainant that Respondent has used the disputed domain name to host a page consisting of pay-per-click links to commercial websites related to, among other things, criminal back ground check (Exhibit H to the Complaint).  As in Microsoft Corporation v. Abdullah Ali, NAF Case No. 1423605, this Panel believes that “pay-per-click advertisement is a valid Internet advertising model which does not necessarily entail use of a domain name in bad faith.  However, this Panel also believes that registering a domain name which comprises someone else’s well-known mark so as to make profit from diverted Internet users in the form of pay-per-click fees, is use in bad faith as per Policy 4(b)(iv)”.

 

Hence, the Panel concludes that such use of the disputed domain name by Respondent constitutes an attempt to use Complainant’s trademark to attract Internet users to its site for commercial gain which constitutes evidence of bad faith usage under paragraph 4(b)(iv) of the Policy.

 

The Panel finds that Respondent must have known that the disputed domain name would attract Internet users seeking the Complainant to the website from which he expected to make money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s trademark. The more diverted Internet users Respondent could attract the more profit he would make.

 

Respondent has created confusion as to Complainant’s affiliation or sponsorship of the disputed domain name and website in order to obtain profits through sponsored links. This is indicative of bad faith under Policy ¶ 4(b)(iv).^[13] 

 

Consequently, the disputed domain name incorporating Complainant’s trademark, possibly disrupts Complainant’s business and create a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement, thus, evidencing a bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).

 

Therefore, the three elements of the Policy ¶ 4(a)(iii) are satisfied in the present case in respect to Respondent of the disputed domain name.

 

DECISION

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

 

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

 

 

Fernando Triana, Esq., Panelist

Dated:  May 15, 2013