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Missing Children Minnesota v. Run Yell Tell [2000] GENDND 1555 (20 November 2000)

National Arbitration Forum

The Complainant is Missing Children Minnesota, Minneapolis, MN, USA ("Complainant") represented by Julie L. Finch and Cecilia M. Michel, Hinshaw & Culbertson. The Respondent is Run Yell Tell, Ltd, Bedford, NY, USA ("Respondent") represented by Peter Sloane, Ostrolenk, Faber, Gerb & Soffen.

The domain name at issue is "runyelltell.com", registered with Network Solutions.

The undersigned panelist, Robert R. Merhige, Jr., certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on October 17, 2000; The Forum received a hard copy of the Complaint on October 16, 2000.

On 10/17/00, Network Solutions confirmed by e-mail to The Forum that the domain name "runyelltell.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has therefore agreed to resolve domain-name disputes brought by third parties in accordance with the Uniform Dispute Resolution Policy (UDRP) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN).

On October 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 7, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@runyelltell.com by e-mail.

November 6, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed the undersigned, Robert R. Merhige, Jr., as Panelist.

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

A. Complainant

Complainant asserts it is the owner of common-law service mark rights in its "Run, Yell & Tell!" mark, and that Respondent has engaged in a pattern of using a confusingly similar domain name as Complainantís service mark.

B. Respondent

Respondent asserts that Complainant has no cognizable rights to the phrase, "Run, Yell & Tell!" nor is the domain name "runyelltell.com" confusingly similar to the phrase "Run, Yell & Tell!" to which Complainant claims to own rights.

The record reflects that the Complainant is a Minnesota non-profit corporation dedicated to providing abduction prevention educational programs and assistance in cases of abducted and abused children. The genesis of Complainantís organization began in 1983 when a group of parents of missing children formed the board of Missing Kids Action Agency incorporated in 1984 for purposes of providing support services to families dealing with missing children. In 1986, the name was changed to its present title and has continued to provide educational programs for both parents and children on the problem of abducted and abused children.

During the course of its services, Complainant developed, printed, and sold a presenterís manual as a guide in abduction prevention safety programs for young children. The record reflects that that manual and other related items have been distributed throughout the United States and are offered by the Complainant for sale, or as to books and videotape, rental, to any interested parties. Included in the items sold and distributed in support of Complainantís program and to promote it are coloring books, song machines, music sheets, posters, videotapes, etc. As a consequence, the mark "Run, Yell & Tell!" has been in commerce continuously since at least 1989, and has become well known in its association with Complainant as the source in connection with Complainantís child safety program and its accompanying products.

The unrefuted record establishes that on May 11, 1998, Complainant filed with the U.S. Patent and Trademark Office an application for registration of its "Run, Yell & Tell!" mark as applied to educational services, namely, conducting abduction prevention safety workshops and distributing in commerce related program material described above.

Respondent is a for-profit New York corporation which registered and uses the domain name in issue to promote and sell its instructional services for child protection and safety which appears to be similar to that offered by Complainant under its "Run, Yell & Tell!" mark.

The domain name in issue is identical to Complainantís "Run, Yell & Tell!" mark with the single exception of punctuation. The domain name utilized by Respondent is by its own admission confusingly similar to Complainantís common-law service mark. The record further reflects that despite its prior awareness and knowledge of Complainantís "Run, Yell & Tell!" program and publication of a safety book for children, Respondent has published a book with a nearly identical title and on November 10, 1998, it retained a copyright registration on same.

Complainant created and used its "Run, Yell & Tell!" for several years prior to Respondentís registering the confusingly similar domain name, "runyelltell.com." I find that Respondent knew of Complainantís mark at the time of the registration by virtue of its having admitted knowledge of Complainantís mark through a search of the internet.

I conclude from the record that Complainant has been using the "Run, Yell & Tell!" mark since at least 1986 and properly asserts common-law rights in said mark. The record further reflects that the mark has become well known as being associated with the Complainantís child safety programs. The fact that it has not as yet been registered as a trademark will not detract from this conclusion. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" had sufficient secondary association with the complainant that common-law trademark rights exist).

This finding is further supported by the fact that Complainant as previously noted, supra, has a pending trademark application for its "Run, Yell & Tell!" mark. See Seek America Networks, Inc. v. Tariq Masood and Solo Signs, D2000-0131 (WIPO April 13, 2000).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 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 ń unregistered or common-law trademark or service mark rights will suffice." To support a domain name complaint under the Policy. See McCarthy on Trademarks and Unfair Competition,  25:74.2, Vol. 4 (2000).

For the reasons heretofore stated, I conclude that Complainant has superior rights to the mark in issue.

The Complainant contends that the Respondent is attracting Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainantís marks as to the affiliation of the website. Policy  4.b.(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name ,fossilwatch.com. and using it to sell various watch brands); AltaVista Company v. Andrew Krotov, D2000-1091 (Oct. 25, 2000) (finding bad faith under Policy  4.b.(iv) where the Respondent linked the domain name to a website that offers a number of web services.

See also The Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (finding registration and use in bad faith where the Respondent knew of the Complainantís mark before registering the domain name and sought commercial gain from the website).

I find that the Complainant has shown, by the greater weight of the evidence, that the domain name in issue has been registered and is being used in bad faith.

The record in this case mandates that the domain name in issue be transferred from the Respondent to the Complainant.

For the reasons aforesaid, it is DIRECTED that the domain name "runyelltell.com" registered by Respondent, Run Yell Tell, Ltd., be forthwith transferred to Complainant, Missing Children Minnesota.

Honorable Robert R. Merhige, Jr.

Retired Judge

Arbitrator

Dated: November 20, 2000