MO Media LLC v. NeXt Age Technologies LTD
Claim Number: FA0312000220031
PARTIES
Complainant
is MO Media LLC (“Complainant”),
represented by Paul Owens, 3827 Phelan #179, Beaumont, TX 77707.
Respondent is NeXt Age Technologies LTD (“Respondent”), represented by M.A. Malik, P.O. Box 3668, Doha, Doha 3668, Qatar.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com>, registered with Go Daddy Software, 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.
David
S. Safran as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 16, 2003; the Forum received a hard copy of the
Complaint on December 29, 2003.
On
December 18, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum
that the domain names <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com> are registered with Go Daddy Software,
Inc. and that the Respondent is the current registrant of the names. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
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
January 5, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of January 26,
2004 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@gresecrets.com, postmaster@gmatsecrets.com, postmaster@mcatsecrets.com,
postmaster@lsatsecrets.com and postmaster@toeflsecrets.com by e-mail.
A
timely Response was received and determined to be complete on January 26, 2004.
On February 6, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David S. Safran as
Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
avers that the disputed domain names are confusingly similar to marks in which
it holds protectable rights. Furthermore, that Respondent copied Complainant’s
website in violation of its rights and such evidences the bad faith of
Respondent in adopting the disputed domain names.
B.
Respondent
Respondent
contends that it registered the disputed domain names without knowledge of
Complainant’s domains in furtherance of its standardized test preparation guide
business, that it hired a third party web designer to develop websites for it,
and any copying of Complainant’s websites was the action of the third party web
designer and occurred without Respondent’s knowledge. Furthermore, the fact that it took down the sites as soon as it
was informed of the problem evidences a lack of bad faith on its part.
FINDINGS
Complainant,
as the first to adopt and use the marks GMAT SECRETS, GRE SECRETS LSAT SECRETS,
MCAT SECRETS and TOEFL SECRETS has common law rights in those marks.
Respondent’s
domains, <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com>,
are confusingly similar to those marks.
No
evidence of rights in or legitimate interest in the disputed domains was
presented by Respondent and the admitted wholesale copying of Complainant’s
website in the absence of contravening evidence is evidence of registration and
use 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 alleges that it has established rights
in the GMAT-SECRETS.COM, GRE-SECRETS.COM, LSAT-SECRETS.COM, MCAT-SECRETS.COM and
TOEFL-SECRETS.COM marks through registration of the <gmat-secrets.com>,
<gre-secrets.com>, <lsat-secrets.com>,
<mcat-secrets.com> and <toefl-secrets.com> domain names between
August 1, and October 21, 2002, all of which predate Respondent’s
registration of the disputed domain names. See 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); see also British Broad. Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”). The Panel agrees.
Complainant contends that the <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com> domain names
are confusingly similar to its above mentioned marks, as the disputed domain
names merely eliminate the hyphen from Complainant’s marks. See Chernow
Communications Inc. v. Kimball,
D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such
as hyphens, does not alter the fact that a name is identical to a mark"); see
also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738
(Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to Complainant's mark). The Panel agrees.
Accordingly, the Panel finds that the disputed domain names are all
confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant
maintains that Respondent copied Complainant’s websites in their entirety at
the disputed domain names, which is evidence that Respondent lacks rights and
legitimate interests in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that, as Respondent
attempted to pass itself off as Complainant online, through wholesale copying
of Complainant’s website, Respondent had no rights or legitimate interests in
the disputed domain name); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“It would be
unconscionable to find a bona fide offering of services in a respondent’s
operation of web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business.”). While all of the websites have
been taken down, no evidence was presented by Respondent which would
demonstrate that it had taken any actions to commence legitimate use of the
disputed domains.
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii).
Complainant
alleges that Respondent attempted to sell its domain name registrations to
Complainant for $7000, however, given the prior offer by Complainant to
Respondent, such is not considered evidence of bad faith. See Sumner v. Urvan, WIPO D2000-0596 (WIPO
July 24, 2000) (finding no bad faith where Respondent did not contact
Complainant first, but rather, Complainant first contacted Respondent about
purchasing the domain name) ; see also Aspen
Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding no
bad faith where “the Complainant offers the Respondent far more than the
Respondent paid for the disputed domain name and the Respondent asks for an
even larger sum”); see also Canal
Image UK, Ltd. v. Vanitymail Serv., Inc., FA 94946 (Nat. Arb. Forum July
18, 2000) (finding no bad faith even though Respondent offered to sell the
domain name for $500,000 in a dubious attempt to dissuade Complainant from
further inquiry into purchasing the domain name in question).
Complainant
avers that Respondent’s registration of domain names that are confusingly
similar to its marks, and its use of those domain names for websites which were
wholesale copied versions of Complainant’s websites creates a likelihood of
confusion in the minds of Internet users as to whether Complainant sponsors
Respondent’s websites, which is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons,
FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of
<monsantos.com> to misrepresent itself as Complainant and to provide
misleading information to the public supported a finding of bad faith); see
also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30,
2003) (finding that the disputed domain name was registered and used in bad
faith where Respondent hosted a website that “duplicated Complainant’s mark and
logo, giving every appearance of being associated or affiliated with
Complainant’s business . . . In a
nutshell, Respondent used the disputed domain name to perpetrate a
fraud”). While Respondent avers that
the wholesale copying was performed without its knowledge by an independent
contractor, no evidence has been presented to support this position.
Furthermore, given that a prudent party would not start a commercial venture
without investigating the existence of potential competitors and the
availability for use of the marks to be used, and that it is considered
unlikely that an independent party would decide on its own to locate and
purloin the entire content of another’s website for a client, the naked
assertion that Respondent was the innocent victim of the illegal actions of its
independent contractor, on its own, is not found to be credible.
The Panel thus finds that Respondent
registered and used the disputed domain names in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
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 <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com> domain names be TRANSFERRED from
Respondent to Complainant.
___________________________________________________
David S. Safran, Panelist
Dated: February 18, 2004
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home Page