DECISION

The State Legislative Leaders Foundation v. Sang Yoon a/k/a Alpha Programs, Inc.

Claim Number: FA0209000124863

PARTIES

Complainant is The State Legislative Leaders Foundation, Centerville, MA (“Complainant”) represented by Maya Alexandri, of Wilmer, Cutler & Pickering.  Respondent is Sang Yoon a/k/a Alpha Programs, Inc., Puyallup, WA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sllf.org>, registered with Go Daddy Software.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 10, 2002; the Forum received a hard copy of the Complaint on September 17, 2002.

On September 10, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain name <sllf.org> is registered with Go Daddy Software and that the Respondent is the current registrant of the name.  Go Daddy Software has verified that Respondent is bound by the Go Daddy Software 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 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 10, 2002, 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@sllf.org by e-mail.

A timely Response was received and determined to be complete on October 2, 2002.

On October 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable 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

The <sllf.org> domain name is confusingly similar to Complainant’s trademarks, STATE LEGISLATIVE LEADERS FOUNDATION and SLLF.  Respondent has no rights or legitimate interests in the <sllf.org> domain name.  Respondent registered and used the <sllf.org> domain name in bad faith. 

B. Respondent

Respondent says “I do not even wish to contest to retain ownership of the domain name sllf.org.”

FINDINGS

Complainant, the State Legislative Foundation (“SLLF”), is a non-profit organization with its principal offices in Centerville, Massachusetts.

SLLF is a unique organization, international in its scope, and dedicated exclusively to serving state legislative and parliamentary leaders.  It is the only such private, non-profit organization in the United States or Europe.  SLLF conducts independent research on critical public policy issues and aspects of leadership, publishes newsletters and a political reference text, The Handbook of State Legislative Leaders, and hosts numerous conferences and programs.  In 1998, SLLF created SLLF/Europe for the purpose of bringing together key parliamentary leaders from across Europe to examine public policy issues of mutual interest.  Additionally, the United States Agency for International Development has awarded SLLF a major grant to implement training and education programs for Indonesian parliamentary leaders. 

SLLF’s constituents include all 355 state legislative leaders, and thousands of unique visitors view Complainant’s web site, <sllf.org>, every month.  SLLF depends on its web site to generate business and inform its members of news and developments.

Since 1972, Complainant has made substantial, continuous, and exclusive use of “STATE LEGISLATIVE LEADERS FOUNDATION” and “SLLF” as the name of its organization, as a result of which the name is known to the public as an indicator of source that designates Complainant, its research and publications, and its other products.  Since 1997, Complainant has extended its distinctive and well-known brand to the Internet, with its respected <sllf.org> web site.

Complainant inadvertently and unknowingly permitted its domain name registration for <sllf.org> to expire on or about August 31, 2002.  Respondent registered <sllf.org> on August 31, 2002. 

Complainant contacted Respondent by email twice on September 2, 2002.  In the first email, Respondent was requested to return the domain name registration and update the nameserver information for the domain name.  Respondent refused to return the domain name to Complainant's control at that time, saying that he was experienced in registering domain names belonging to others and that he “typically work[s] something out with previous owners.” 

In the second September 2, 2002 email, Complainant’s President, Steve Lakis, informed Respondent that the domain name <sllf.org> was critical to Complainant and that Complainant would suffer prejudice from having to establish a new web site.  Mr. Lakis invited Respondent to suggest means of resolving the problem.  Respondent replied with two options:  (1) he would “[s]ell the domain name if the price is acceptable,” or (2) “We retain the domain name and you have full use of it.  In return, we would have the rights to advertise on bottom [sic] of your index page with a small text link.”  Respondent also stated that he had updated the nameserver information for the <sllf.org> registration to point back to Complainant's content, and that Complainant’s content would once again be visible under the <sllf.org> name within a day or two.

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.

Identical and/or Confusingly Similar

Complainant’s marks STATE LEGISLATIVE LEADERS FOUNDATION and SLLF have acquired distinctiveness through extensive and exclusive use and the fame and reputation of Complainant.

Respondent’s domain name <sllf.org> is confusingly similar to Complainant’s trademark STATE LEGISLATIVE LEADERS FOUNDATION because “sllf” is the abbreviation for STATE LEGISLATIVE LEADERS FOUNDATION.  See EFG Bank European Fin. Group SA v. Jacob Found., No. D2000-0036 (WIPO Mar. 22, 2000) (<efgpb.com> confusingly similar to “EFG Private Bank” because consumers familiar with banking services are likely to “infer that ‘pb’ is the abbreviation for ‘private bank’”).  Moreover, Respondent’s domain name <sllf.org> is identical to Complainant’s trademark SLLF.  See Kis v. Anything.com, Ltd., No. D2000-0770 (WIPO Nov. 20, 2000) (<kis.com> identical to Complainant’s trademark KIS).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has no legitimate interest in the domain name <sllf.org>.  Respondent has never used the disputed domain name as a service mark or trademark.  See The Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA105211 (Nat. Arb. Forum Apr. 8, 2002) (no evidence that Respondent is known as <therittenhousehotel.com>; therefore, Respondent has failed to satisfy Policy ¶ 4(c)(ii)).  Respondent is not commonly known by the disputed domain name. The fame and recognition associated with Complainant’s established marks creates a presumption that Respondent does not have any rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also 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).

Moreover, the fact that Complainant once held registration of the disputed domain name permits an inference that Respondent has no rights or legitimate interests in the name.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

SLLF is the only organization in the United States or Europe dedicated exclusively to serving the needs of state legislative and parliamentary leaders.  Respondent is therefore unjustly enriched by more than a quarter of a century of goodwill that Complainants have built up in the STATE LEGISLATIVE LEADERS FOUNDATION and SLLF trademarks.  Respondent registered and uses the <sllf.org> domain name to benefit from Complainant’s goodwill and to create confusion as to the source or sponsorship of his website.  Respondent’s actions demonstrate bad faith registration and use within the meaning of Policy ¶ 4(b)(iv).  See Pillsbury Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002) (finding registration of a domain name identical to Complainant’s mark to be in bad faith under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely cause confusion as to the affiliation between Respondent and Complainant); see also Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31, 2002) (finding that, where the Respondent’s <fluor.biz> domain name was identical to the Complainant’s FLUOR mark, Internet users would likely believe an affiliation between the Respondent and Complainant).

Respondent’s registration and use of its confusingly similar domain name, despite knowledge of Complainant’s preexisting rights in its mark, represents bad faith registration and use under the Policy.  See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also 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 Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <sllf.org> be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 25, 2002

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