DECISION

Mothers Against Drunk Driving v. phix

Claim Number: FA0307000174052

PARTIES

Complainant is Mothers Against Drunk Driving, Irving, TX (“Complainant”) represented by Herbert J. Hammond and Heather C. Brunelli, of Thompson & Knight LLP.  Respondent is phix, Beverly Hills, CA (“Respondent”) represented by R. Russell Lucas, Jr. of Goehring, Rutter & Boehm.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <madd.net>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 July 28, 2003; the Forum received a hard copy of the Complaint on August 1, 2003.

On August 1, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <madd.net> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  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 August 6, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 26, 2003 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@madd.net by e-mail.

A timely Response was received and determined to be complete on August 26, 2003.

A timely Additional Submission was received from Complainant on September 2, 2003 and determined to be complete.

A timely Response to Additional Submission was received from Respondent on September 4, 2003 and determined to be complete.

On  September 11, 2003, 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 name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that its registered MADD mark had becom famous long before Respondent registered the domain name at issue on October 17, 1998, and that Respondent’s domain name is simply Complainant’s entire famous trademark MADD and the common URL suffix “.net” such that the mere combination of a famous trademark and “.net” creates a likelihood of confusion.  Complainant further contends that individuals seeking the website for Complainant are likely to seek it at <madd.net> since the domain incorporates the MADD trademark and the a common URL suffix “.net” and would assume that the website located at <madd.net> would be associated with, sponsored by or affiliated with Complainant. 

B. Respondent

Respondent contends that the mark “MADD” and Complainant’s use of it is not sufficiently famous or exclusive that Respondent’s use of the domain name <madd.net> infringes upon any valid trademark rights, and that the terms “Madd” and “madd” have become somewhat generic and have entered into wide colloquial use for purposes unrelated to Mothers Against Drunk Driving’s mission.  Respondent also contends that use of the domain name for personal communications and web server hosting, and not to conduct any business activities competitive to or confusingly similar to Complainant’s is a fair use that demonstrate rights to and legitimate interests in the registered domain name. Still further, that Complainant has the burden of proof and has not established the existence of any of the four factors set forth in Paragraph 4(b) of the Uniform Domain Dispute Resolution Policy as circumstances which constitute evidence of registration and use of a domain name in bad faith.

C. Additional Submission of Complainant

In addition to reinforcing its initial contentions, it is contended by Complainant that current use of the domain name to send e-mail, and use of the MADD.net domain name for e-mail messages and to write computer programs and participate in IRC could all create confusion.  Furthermore, Complainant asserts that Respondent used inaccurate and purposefully misleading information, i.e., false contacts in California and an incorrect owner of the domain name, when registering and subsequently renewing the domain name.

D. Additional Submission of Respondent

In addition to reinforcing its initial contentions, Respondent has asserted that the bad faith requirement must be viewed in the context that of the aim of the Policy to address clearly abusive acts of cybersquatting, not any issue of unfair competition or misuse of a domain name.

FINDINGS

Under Rule 1 of the Policy, the Respondent is defined as "the holder of a domain-name registration against which a complaint is initiated."  Phix-It is the holder of the domain-name registration, while Michael Dille, a 3rd party to Phix-it, is merely acting in this case on behalf of Phix-It, which put a shortened version of its name on the registration for the disputed domain name.  Since Michael Dille did not register the domain name, Michael Dille is not actually the Respondent and the bad faith analysis does not apply to him.  Instead, the bad faith analysis would apply to Phix-It, the registrant of the disputed domain name.  Furthermore, since the minority of Michael Dille at the time of registration was not raised by either party as affecting an aspect of this proceeding, and since there is nothing in the ICANN rules that would preclude a minor from acting in his/her own behalf for the purpose of registering and/or owning a domain name, it has not been taken into consideration.

Registrant Phix-It has no rights to or legitimate interest in the registered domain name. That Phix-it’s registration of and the subsequent use of the MADD.net domain name was in bad faith.

The acronym MADD for the Complainant, Mothers Against Drunk Driving, is a famous trademark that has not become generic, nor has it fallen into common usage. That someone receiving e-mail from a  party whose e-mail address shows a name @ the MADD.net domain or seeing a newsgroup posting from a  party whose e-mail address shows a name @ the MADD.net domain would likely assume that the writing or posting party was affiliated with Complainant.

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 has provided evidence to establish statutory rights in the MADD mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,250,706 registered on September 6, 1983).  Thus, the Panel finds that Complainant’s registration of the MADD mark with the USPTO establishes Complainant’s rights in the mark for purposes of Policy  4(a)(i).  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Complainant also asserts that it has established common law rights in the MADD mark through continuous use in commerce since 1980.  Therefore, the Panel concludes that Complainant has established rights in the MADD mark through secondary meaning.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).

Complainant contends that the <madd.net> domain name is identical to Complainant’s MADD mark because Respondent’s simply adds the generic top-level domain (gTLD), “.net” to Complainant’s entire mark.  The Panel concludes that simply combining Complainant’s famous mark and the gLTD “.net” is not sufficient to distinguish the disputed domain name from Complainant’s mark under Policy  4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to Complainant’s famous NIKE mark).

Rights or Legitimate Interests

Respondent Phix-it has provided no evidence to indicate that it is commonly known by the <madd.net> domain name or the MADD mark, the Panel finds that there is no relationship between Michael Dille which would enable any usage by him to inure to the benefit of Respondent; and while the willingness of Respondent to transfer the domain to Michael Dille has been noted, but such is not deemed to affect the circumstances of registration and use at issue here.  Furthermore, Complainant has never granted Respondent permission to use its MADD mark for any purpose and Respondnent is not affiliated with Complainant in any way.  Thus, the Panel finds that Respondent does not have rights to or legitimate interests in the disputed domain name 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 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); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). 

In addition, Complainant argues that Respondent does not have rights to or legitimate interests in the <madd.net> domain name because the website associated with the disputed domain name is inactive, and use by Michael Dille does not constitute use by Respondent.  Therefore, the Panel finds that Respondent is not using the <madd.net> domain name in connection with any bona fide offering of goods or services pursuant to Policy  4(c)(i) or for any legitimate noncommercial or fair use pursuant to Policy  4(c)(iii).  See 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 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 Respondent is not commonly known by the domain name); see also State Fair of Texas v. State Fair Guides, FA 95066 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name).

Registration and Use in Bad Faith

Complainant argues that Respondent should have been aware that Complainant had rights in the MADD mark when it registered the <madd.net> domain name, as evidenced by Complainant’s registration of the MADD mark with the USPTO, its long and continuous use of the mark in commerce and the notoriety of Complainant’s mark.  Thus, the Panel finds that Respondent acted in bad faith when it registered the disputed domain name with knowledge of Complainant’s rights in the MADD mark.  See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith); see also Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name).

Complainant asserts that due to the fame of the MADD mark, consumers will be confused by the use and registration of the <madd.net> domain name by Respondent.  The panel agrees that the mark is famous and that any possible usage by others of record is insufficient to indicate that the MADD mark has become generic, or that has it fallen into common usage. Furthermore, the fact that Respondent does not use the mark to disparage the MADD mark or to compete with Complainant makes no difference.  Since the MADD mark is famous and distinctive, use of the mark in a domain name is inherently confusing to consumers, and the panel finds that someone receiving e-mail from a  party whose e-mail address shows a name @ the MADD.net domain or seeing a newsgroup posting from a  party whose e‑mail address shows a name @ the MADD.net domain would likely assume that the writing or posting party was affiliated with Complainant. Thus, the Panel finds the Respondent’s use of the <madd.net> domain name for personal communications and web server hosting could easily lead to confusion.  See Goto.com, Inc., v. Walt Disney Co., 200 F.3d 1199, 1206 (9th Cir., 2000) (“With respect to Internet services, even services that are not identical are capable of confusing the public”); see also Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation” with the results in holding that the domain names were registered and used in bad faith pursuant to Policy  4(b)(iv)).

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 <madd.net> domain name be TRANSFERRED from Respondent to Complainant.

David S. Safran, Panelist
Dated: September 25, 2003

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