Gallup, Inc. v. Leesungyong
Claim Number: FA0505000486111
PARTIES
Complainant
is Gallup, Inc. (“Complainant”)
represented by Lisa B. Kiichler, of Gallup, Inc. 1001 Gallup Drive, Omaha, NE, 68102. Respondent is Leesungyong (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <gallupkorea.info>, <gallupresearch.info>, <gallupconsultinginternational.info>, <gallupconsultingkorea.info>, <galluphealthcareresearch.info>, <galluponlineresearch.info>, <gallupresearchconsulting.info>, <gallupinternationalconsulting.info>, <gallupresearchinternational.info>, <gallupworldconsulting.info>, <gallupworldresearch.info>, <gallupresearchbank.info>
and <gallupcybercollege.info>,
registered with YesNIC Co., Ltd.
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.
Hon.
Karl V. Fink (Ret.) as Chair and G. Gervaise Davis, III and Hon. Charles K.
McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 1, 2005.
On
June 7, 2005, YesNIC Co., Ltd. confirmed by e-mail to the National Arbitration
Forum that the domain names <gallupkorea.info>, <gallupresearch.info>, <gallupconsultinginternational.info>, <gallupconsultingkorea.info>, <galluphealthcareresearch.info>, <galluponlineresearch.info>, <gallupresearchconsulting.info>, <gallupinternationalconsulting.info>, <gallupresearchinternational.info>, <gallupworldconsulting.info>, <gallupworldresearch.info>, <gallupresearchbank.info>, <gallupcybercollege.info>
are registered with YesNIC Co., Ltd. and that the Respondent is the current
registrant of the names. YesNIC Co.,
Ltd. has verified that Respondent is bound by the YesNIC Co., Ltd. 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
June 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 5,
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@gallupkorea.info, postmaster@gallupresearch.info, postmaster@gallupconsultinginternational.info,
postmaster@gallupconsultingkorea.info, postmaster@galluphealthcareresearch.info,
postmaster@galluponlineresearch.info, postmaster@gallupresearchconsulting.info,
postmaster@gallupinternationalconsulting.info, postmaster@gallupresearchinternational.info,
postmaster@gallupworldconsulting.info, postmaster@gallupworldresearch.info, postmaster@gallupresearchbank.info,
and postmaster@gallupcybercollege.info by e-mail.
On July 14, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Hon. Karl V. Fink (Ret.) as Chair and G. Gervaise Davis, III
and Hon. Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
·
Complainant
is the largest, oldest and best-known opinion polling service in the
world. Established prior to World War
II, Complainant has used the trademarks GALLUP and GALLUP POLL as trademarks
for seventy years. (These marks and
other GALLUP elemental marks are referred to herein collectively as the “GALLUP
Mark’). The name and mark GALLUP is, in
fact, one of the best-known trademarks in the world. Complainant has registered the mark GALLUP in 103 countries.
·
The claim
of the celebrity of the GALLUP name and GALLUP Marks is supported by the
following facts:
(a) Cumulative business conducted under
the GALLUP Marks in the United States and internationally has exceeded one
billion dollars.
(b) Cumulative advertising and promotion
in the United States and internationally of the GALLUP name and GALLUP Marks
has exceeded fifty million dollars.
(c) A check of the computerized research
database, Lexis/Nexis, indicated in excess of one hundred thousand stories
related to GALLUP.
(d) Through its affiliation with CNN/USA
Today, the Gallup name has been used extensively on television and in
newspapers around the world. Gallup
Poll is mentioned in virtually every CNN broadcast involving polling.
(e) In addition to the foregoing, Gallup
has conducted seminars and distributed literature in the United States for many
years prior to the registration of Respondent’s domain names.
(f) Gallup publishes its own weekly and
monthly magazines respectively call “Gallup Tuesday Briefing” and “Gallup
Management Journal”. In addition,
Gallup has published numerous business
books.
(g) Complainant owns a website, first
registered in 1993, gallup.com giving users worldwide access. That web site gets extensive traffic and has
had visits by as many as 100,000 unique users in a single day.
(h) The Mark GALLUP and GALLUP POLL are
often referred to on television, radio and in print, when reference is made to
polls conducted by Complainant.
·
Complainant
has registered GALLUP, GALLUP POLL and other GALLUP trademarks of the disputed
domains before the December 2004 domain registration. Complainant’s first trademark registration date for GALLUP POLL
was January 31, 1984. It has several
other registered trademarks with the term GALLUP and has several trademark
applications pending using GALLUP. The
Complainant owns numerous domain names incorporating the GALLUP and GALLUP POLL
names.
·
Respondent
is not a licensee of Complainant, nor has Respondent ever been authorized by
Complainant to use Complainant’s GALLUP mark or any mark including GALLUP.
·
Respondent
is not commonly known by the GALLUP name.
·
Respondent’s
domain names do not resolve to an active website. Therefore, Respondent has failed to make use of the domain name,
either for commercial or non-commercial purposes.
·
Complainant
sent a letter to Respondent putting Respondent on notice of its infringement of
Complainant’s trademarks. In response
to that letter, Respondent claims planned businesses that may overlap with
Complainant’s, yet Respondent ignores Complainant’s superior trademark rights. In addition, Respondent states his intent to
sell the domains to the organization willing to pay Respondent’s price. Respondent’s willingness to sell the domain
names is evident that Respondent lacks rights or legitimate interest in the
domain names.
·
By
Respondent’s own communication, Respondent merely seems interested in hijacking
domain names and selling them to the highest bidder. Respondent’s attempt to sell the domain names is evidence of bad
faith registration pursuant to Policy ¶4(b)(i).
·
The domain
names registered by Respondent are identical or confusingly similar to the
trademark in which Complainant has rights, and Respondent’s domain names have
been registered in bad faith.
FINDINGS
For the reasons set forth below, the
Panel finds Complainant has proved that the domain names should be transferred.
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.”
Having received no Response from Respondent, using the same
contact details and methods as were used for the Commencement Notification, the
National Arbitration Forum transmitted to the parties a Notification of
Respondent Default.
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." 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.
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.").
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.
The
Panel finds that Complainant has established rights in the GALLUP mark through
registration with the United States Patent and Trademark Office (“USPTO”)
(E.g., Reg. Nos. 1,266,004 issued January 31, 1984; 2,242,387 issued May 4,
1999; 189,234 issued May 2, 1995). See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see
also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The Panel also finds that
Respondent’s <gallupkorea.info>, <gallupresearch.info>, <gallupconsultinginternational.info>, <gallupconsultingkorea.info>, <galluphealthcareresearch.info>, <galluponlineresearch.info>, <gallupresearchconsulting.info>, <gallupinternationalconsulting.info>, <gallupresearchinternational.info>, <gallupworldconsulting.info>, <gallupworldresearch.info>, <gallupresearchbank.info>
and <gallupcybercollege.info>
domain names are confusingly similar to Complainant’s GALLUP mark,
as the domain names incorporate the mark entirely and merely add generic or
geographic terms. Respondent’s domain
names add the generic top-level domain “.com.”
Such minor additions are not enough to overcome a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term); see also Gen.
Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding
that adding the generic term “direct” to the complainant’s marks (GE CAPTIAL
and GECAL) did not alter the underlying mark held by the complainant, and thus
the respondent’s domain names were confusingly similar); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition
of a top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
Complainant has proved this
element.
The Panel
finds that Respondent’s failure to respond allows the Panel to accept all
reasonable allegations and assertions set forth by Complainant as true. See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum
June 17, 2002) (finding that in the absence of a response, the Panel is free to
make inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); 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.”).
The
Panel finds that Complainant has submitted a prima facie case, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain names. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once complainant asserts that respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Because Respondent did not to respond to
the Complaint, Respondent has failed to propose any set of circumstances that
could substantiate its rights or legitimate interests in the <gallupkorea.info>, <gallupresearch.info>, <gallupconsultinginternational.info>, <gallupconsultingkorea.info>, <galluphealthcareresearch.info>, <galluponlineresearch.info>, <gallupresearchconsulting.info>, <gallupinternationalconsulting.info>, <gallupresearchinternational.info>, <gallupworldconsulting.info>, <gallupworldresearch.info>, <gallupresearchbank.info>
and <gallupcybercollege.info>
domain names pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent
has no rights or legitimate interests in the domain name because the respondent
never submitted a response or provided the Panel with evidence to suggest
otherwise).
Respondent is not making any use of the
disputed domain names, as they do not resolve to any active websites. The Panel finds that such use is not in
connection with any bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before notice
of the domain name dispute, the domain name did not resolve to a website, and
the respondent is not commonly known by the domain name).
Respondent lacks rights or legitimate
interests in the disputed domain names because Respondent offered to sell the disputed
domain names to Complainant. See Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”); see also Mothers Against Drunk Driving v.
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the
circumstances, the respondent’s apparent willingness to dispose of its rights
in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name).
Respondent
is neither commonly known by the disputed domain names nor authorized to
register domain names featuring Complainant’s GALLUP mark. Thus, the Panel finds that Respondent has
not established rights or legitimate interests in the <gallupkorea.info>, <gallupresearch.info>, <gallupconsultinginternational.info>, <gallupconsultingkorea.info>, <galluphealthcareresearch.info>, <galluponlineresearch.info>, <gallupresearchconsulting.info>, <gallupinternationalconsulting.info>, <gallupresearchinternational.info>, <gallupworldconsulting.info>, <gallupworldresearch.info>, <gallupresearchbank.info>
and <gallupcybercollege.info>
domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interests where the respondent was not commonly known
by the mark and never applied for a license or permission from the complainant
to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS
information implies that the respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply).
Complainant has proved this
element.
The
Panel finds that Respondent registered the disputed domain names in bad faith
because Respondent has not made any use of the disputed domain names since
registering them in December 2004. See
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Respondent registered the
disputed domain names with actual or constructive knowledge of Complainant’s
rights in the GALLUP mark due to Complainant’s registration of the mark with
the USPTO. The Panel finds that
Respondent registered the domain names with actual knowledge of Complainant’s
rights in the mark due to the obvious connection between the content featured
on Respondent’s domain name and Complainant’s business. Registration of domain names that are
confusingly similar to another’s mark despite actual or constructive knowledge
of the mark holder’s rights is tantamount to bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Samsonite
Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24,
2002) (finding that because the link between the complainant’s mark and the
content advertised on the respondent’s website was obvious, the respondent
“must have known about Complainant’s mark when it registered the subject domain
name”).
The
Panel also finds that Respondent registered the disputed domain names in bad
faith pursuant to Policy ¶ 4(b)(i) because Respondent offered to sell the
disputed domain names to Complainant. See
Am. Online, Inc. v. Avrasya
Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000)
(finding bad faith where the respondent offered domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to the complainant amounts to a use of the domain name in bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO
Dec. 7, 2000) (finding bad faith where the respondent made no use of the domain
names except to offer them for sale to the complainant); see also Banca
Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where the respondent offered the domain names for sale).
Complainant has proved this
element.
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 <gallupkorea.info>,
<gallupresearch.info>, <gallupconsultinginternational.info>,
<gallupconsultingkorea.info>, <galluphealthcareresearch.info>,
<galluponlineresearch.info>, <gallupresearchconsulting.info>,
<gallupinternationalconsulting.info>, <gallupresearchinternational.info>,
<gallupworldconsulting.info>, <gallupworldresearch.info>,
<gallupresearchbank.info> and <gallupcybercollege.info>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl. V. Fink (Ret.), Chair
G. Gervaise Davis, III, Panelist
Hon. Charles K. McCotter, Jr. (Ret.),
Panelist
Dated: July 26, 2005
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