DECISION

Center for Science in the Public Interest v. Center for Consumer Freedom

Claim Number: FA0210000128796

PARTIES

Complainant is Center for Science in the Public Interest, Washington, DC (“Complainant”) represented by Elizabeth Kingsley, of Harmon, Curran, Spielberg & Eisenberg, LLP.  Respondent is Center for Consumer Freedom, Washington, DC (“Respondent”) represented by Mark Ungerman, of Fulbright & Jaworski L.L.P.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cspinot.com> and <smartmouth.org>, registered with Network Solutions, 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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 31, 2002; the Forum received a hard copy of the Complaint on November 5, 2002.

On November 1, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <cspinot.com> and <smartmouth.org> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 27, 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@cspinot.com and postmaster@smartmouth.org by e-mail.

A timely Response was received and determined to be complete on December 4, 2002.

Complainant filed a timely Additional Submission on December 9, 2002.

On December 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain names at issue are confusingly similar to marks in which Complainant has rights; that Respondent has no rights or legitimate interest in the domain names at issue; and that the domain names at issue were registered in bad faith.

B. Respondent

Respondent contends that the domain names at issue are not identical or confusingly similar to the trademarks or services marks in which Complainant has rights; that Respondent has rights and legitimate interests in the domain names at issue; and that Respondent did not register the domain names at issue in bad faith.

C. Additional Submissions

Complainant’s Additional Submission reinforces the contentions contained in its original Complaint.

FINDINGS

Complainant is a non-profit education and advocacy organization focusing the safety and nutritional quality of the food supply and promoting awareness of food, nutrition, diet, alcohol, the environment and health issues.  Complainant uses its registered marks to promote health through educating the public about nutrition and alcohol; to represent citizens’ interests before legislative, regulatory and judicial bodies, and to work to ensure advances in science are used for the public good.  Complainant also publishes a newsletter and other documents.

Complainant is the registered owner of a trademark/service mark for CENTER FOR SCIENCE IN THE PUBLIC INTEREST and CSPI.  The first use for each of the marks by Complainant dates back to 1971.

Complainant applied for a trademark/service mark in October, 2002 for SMART-MOUTH.ORG.

Respondent is now known as “The Center for Consumer Freedom” and was previously known as “The Guest Choice Network.”  Respondent is a coalition of more than 30,000 restaurant and tavern operators working to protect the public’s right to a full menu of dining and entertainment choices. 

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

The first domain name at issue <cspinot.com> incorporates Complainant’s CSPI mark along with a generic word.  The addition of the word does not dilute the trademark/service mark and could cause confusion among Internet users as the source and sponsorship of the website.  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 Complainant combined with a generic word or term).

The second domain name at issue, <smartmouth.org>, is an exact duplicate of the domain name currently in use by Complainant (<smart-mouth.org>) as part of its campaign to promote nutrition and healthy eating among youngsters.  An application to the U.S. Patent and Trademark Office was submitted in October, 2002 for SMART-MOUTH.ORG.  The deletion of the hyphen is not enough to set the domain name at issue apart from Complainant’s mark.  See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Respondent’s registration of both of the domain names at issue, given the similarities between Complainant’s trademark/service marks and its own websites, suggests that Respondent may have registered the names to disrupt Complainant’s business.  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385, (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant’s marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant’s business).

Rights or Legitimate Interests

Respondent has no rights or legitimate interests in the domain names at issue as it has not demonstrated preparations to use the domain names in connection with a bona fide offering of goods or services.  Further, Respondent has provided no evidence that it is commonly known by either of the domain names at issue. See 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).

Registration and Use in Bad Faith

As the positions of Complainant and Respondent are generally opposed to each other, it appears that Respondent’s primary purpose in registering the domain names at issue is to divert internet users to Respondent’s website.   See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

Further, given the subtle differences between the domain names at issue and Complainant’s trademarks/service marks and websites, it appears that Respondent attempted to create confusion among Internet users looking for Complainant’s websites.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)(finding bad faith where Respondent attracted users to a website sponsored by Respondent and created confusion with Complainant’s mark as to the source, sponsorship, or affiliation of that website).

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 names <cspinot.com> and <smarthmouth.org> be transferred from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist
Dated:  January 6, 2003

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