Management Plus Enterprises Inc. v. MPE
Technology Services and 000-SJ43711
Claim
Number: FA0309000192746
Complainant is Management Plus Enterprises Inc.,
Manhattan Beach, CA, USA (“Complainant”) represented by P. Landon Moreland, of Manatt, Phelps & Philips, LLC. Respondent is MPE Technology Services and
000-SJ43711, Brussels,
Belgium (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mpe.com>, registered with R&K
Globalbusinessservices, Inc. d/b/a 000Domains.Com (hereinafter
“000Domains.Com”).
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 4, 2003; the Forum received a hard copy of the
Complaint on September 4, 2003.
On
September 4, 2003, 000Domains.Com confirmed by e-mail to the Forum that the
domain name <mpe.com> is registered with 000Domains.Com and that
Respondent is the current registrant of the name. 000Domains.Com has verified
that Respondent is bound by the 000Domains.Com 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 8, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 29, 2003 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@mpe.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 14, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <mpe.com>
domain name is identical to Complainant’s MPE mark.
2. Respondent does not have any rights or
legitimate interests in the <mpe.com> domain name.
3. Respondent registered and used the <mpe.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Management Plus Enterprises Inc., registered the <mpe.com> domain
name on August 31, 1995 with Network Solutions, Inc., and used it in connection
with sports entertainment and management, production and marketing services.
Under the MPE mark, Complainant has represented many “stars” in the sports
business, including Kareem Abdul-Jabbar, Oscar De La Hoya and Shaquille O’Neil.
Complainant is also in the business of merging sports and entertainment, and
has been responsible for such events as the “Rap & Jam” basketball/rap
music tour, the creation of the World Championship of Beach Volleyball event,
creating the Taco Bell “One-on-One” game which features various high-profile
sports figures, and producing various projects such as the movies Blue Chips,
Kazaam and Steel. Complainant has operated under the MPE mark
since 1988.
On August 8,
2003, an unknown individual gained access to Complainant’s account with Network
Solutions, Inc., and changed the name of the domain name registrant from
Complainant to Respondent. On August 13, 2003, the domain name registration was
moved from Network Solutions, Inc., to 000Domains.Com, the current registrar of
the domain name. Complainant became aware that its domain name had been
misappropriated on August 15, 2003, when Complainant’s website became
unavailable and Complainant stopped receiving email for addresses at the <mpe.com>
domain name. Respondent is currently making no use of the disputed domain name.
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."
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.
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.
Complainant has
established rights in the MPE mark through widespread use of the mark in
commerce, in addition to its longstanding use of the <mpe.com> domain name prior to this dispute. See
Am. Anti-Vivisection Soc'y. v.
"Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that the fact that Complainant held the domain name prior to
Respondent’s registration, as well held a pending trademark application in the
mark, evidences rights in the domain name and the mark therein contained); see
also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed.
2002) (The ICANN dispute resolution policy is “broad in scope” in that “the
reference to a trademark or service mark ‘in which the complainant has rights’
means that ownership of a registered mark is not required–unregistered or
common law trademark or service mark rights will suffice” to support a domain
name Complaint under the Policy).
Respondent’s <mpe.com>
domain name is identical to
Complainant’s MPE mark. The addition of the “.com” is inconsequential for the
purposes of analysis under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain (gTLD) “.com” after the name
POMELLATO is not relevant).
Accordingly, the
Panel finds that the <mpe.com> domain name is identical to Complainant’s MPE mark under Policy ¶
4(a)(i).
According to the
uncontroverted Complaint, Respondent assumed possession of Complainant’s domain
name registration without authorization by Complainant. Respondent’s use of
fraud to first gain access to Complainant’s account with Network Solutions,
Inc. and then to transfer the domain name registration to itself is prima
facie evidence that Respondent lacks rights or legitimate interests in the
disputed domain name. See generally Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because Respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<mpe.com> domain name
under Policy ¶ 4(a)(ii).
Under the
totality of the circumstances surrounding this dispute, Respondent registered
and used the disputed domain name in bad faith. Respondent deliberately set
upon a course of action to replace Complainant with itself as the registrant of
the <mpe.com> domain name.
Respondent never paid for the disputed domain name registration and was never
authorized by Complainant to access or alter Complainant’s account with Network
Solutions, Inc. Although Respondent technically never “registered” the disputed
domain name, the Panel holds that Respondent’s conversion of the disputed
domain name amounts to registration under the unique facts of this case, and is
evidence of bad faith. Respondent’s transfer of the disputed domain name
registration to a new registrar and subsequent decision to deny Complainant any
use of the disputed domain name is evidence that the domain name was registered
in bad faith. See Twentieth
Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000)
(finding that in determining if a domain name has been registered in bad faith,
the Panel must look at the “totality of circumstances”).
The Panel thus
finds that Respondent registered and used the <mpe.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <mpe.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
October 27, 2003
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