The Sigma Pi Fraternity International, Inc. v. Greg Morrison
Claim Number: FA1306001503803
Complainant is The Sigma Pi Fraternity International, Inc. (“Complainant”), represented by Jennifer Kovalcik of STITES & HARBISON, PLLC, Tennessee, USA. Respondent is Greg Morrison (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sigmapi2.org> registered with Network Solutions, LLC.
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. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 7, 2013.
On Jun 07, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <sigmapi2.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@sigmapi2.org. Also on June 10, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sigmapi2.org> domain name, the domain name at issue, is confusingly similar to Complainant’s SIGMA PI mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is an international fraternity, which promotes fellowship, character, and leadership. Complainant is currently comprised of 123 active chapters, 6 colonies, and over 95,000 alumni. Complainant began using the SIGMA PI mark as early as 1907 in connection with membership in a national collegiate fraternal organization, and has made substantial contributions to the promotion and publicity of the mark. Complainant owns the SIGMA PI mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,035,616 registered February 4, 1997). Complainant owns the Σπ mark through its trademark registration with the USPTO (Reg. No. 1,587,248 registered March 13, 1990).
The <sigmapi2.org> domain name is confusingly similar to the SIGMA PI mark. Respondent owns no legitimate interest in the <sigmapi2.org> domain name, nor does Respondent own rights in the SIGMA mark. Respondent uses the resolving page in connection with content that inappropriately sexualizes women and provides advice on how to seduce and attract women. Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Respondent’s actions are likely to result in confusion among relevant customers as to whether the disputed domain is sponsored by, affiliated with, or endorsed by Complainant. Respondent’s use of the disputed domain name in connection with content that inappropriately sexualizes women and provides dating advice on how to seduce women will tarnish Complainant’s SIGMA PI mark. Respondent had knowledge of Complainant’s former use of the disputed domain name. Respondent registered the domain name at issue on February 16, 2009 after Complainant let the domain name lapse.
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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant owns the SIGMA PI mark through its trademark registration with the USPTO (Reg. No. 2,035,616 registered February 4, 1997). Complainant also owns the Σπ mark through its trademark registration with the USPTO (Reg. No. 1,587,248 registered March 13, 1990). Both Complainant and Respondent reside in the United States. Complainant’s USPTO registration establishes its right in the SIGMA PI mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name includes Complainant’s SIGMA PI mark in its entirety, deleting the space, and adding the number “2,” and the generic top-level domain “.org.” The <sigmapi2.org> domain name is confusingly similar to the SIGMA PI mark under Policy ¶ 4(a)(i), despite the aforementioned differences. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding 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)).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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. 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“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 owns no legitimate interest in the <sigmapi2.org> domain name, nor does Respondent own rights in the SIGMA PI mark. The registrant in the WHOIS information is identified as “Greg Morrison.” There is no evidence in the record indicating that Respondent is commonly known by the disputed domain name, and therefore the Panel holds that Respondent is not commonly known by the domain name in dispute pursuant to Policy ¶ 4(c)(ii). See 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).
Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but instead uses Complainant’s notoriety to confuse Internet users and attract traffic to Respondent’s own site. Respondent uses the resolving page in connection with content and imagery that inappropriately sexualizes women, provides advice on how to seduce and attract women, and provides information about the “Tao of Badass” Josh Pellicer, a controversial dating coach who claims to teach others how to seduce women. Complainant asserts that such use is contrary to the ideals promoted by Complainant. Respondent’s reliance on Complainant’s notoriety to divert users to his own site that sexualizes women, provides advice on how to seduce women, and provides a platform for a controversial dating coach, does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Respondent uses Complainant’s SIGMA PI mark predominately on the resolving site, causing the attraction and confusion. This is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme);
Respondent uses the SIGMA PI mark predominately on the resolving site and purports to have a Greek Organization connection. Such resultant confusion damages Complainant's reputation and tarnishes its SIGMA PI mark. Respondent’s efforts to misrepresent itself as Complainant is evidence of bad faith under Policy ¶ 4(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Respondent’s bad faith is further evidenced by Respondent’s use of the disputed domain name in connection with content and images that inappropriately sexualizes women and provides dating advice on how to seduce women. Such content conflicts with to the ideals promoted by Complainant and tarnishes Complainant’s SIGMA PI mark.
Respondent had knowledge of Complainant’s former use of the disputed domain name. Complainant previously owned and the disputed domain until it decided to let the domain lapse in favor of its primary domain name <sigmapi.org>, which Complainant uses to provide information about the Sigma Pi Fraternity. Respondent was aware of Complainant’s prior use of the domain name and, accordingly, the Panel finds Respondent’s awareness is evidence of bad faith under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”).
Complainant notes that its SIGMA PI mark appears predominantly on top of the resolving page and previously included the tag line “The Ultimate Sorority.” The Panel finds that Respondent had actual knowledge of Complainant’s rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sigmapi2.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 15, 2013
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