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American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A. [2004] GENDND 1113 (23 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

American Civil Liberties Union of New Mexico v. Vilma Morales/e:bOOm, S.A.

Case No. D2004-0473

1. The Parties

Complainant is American Civil Liberties Union of New Mexico, Albuquerque, New Mexico, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

Respondent is Vilma Morales/e:bOOm, S.A., Lisboa, Portugal.

2. The Domain Name and Registrar

The disputed domain name <aclunm.org> is registered with Dotster, Inc.

3. Procedural Histor

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2004, declaring that Respondent is Mark Foster who according to the Dotster Whois database is the registrant of the domain name at issue; the Complaint also declared that according to the Public Interest Registry database, the registrant of the domain name at issue is Vilma Morales. On June 30, 2004, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On June 30, 2004, Dotster, Inc. transmitted by email to the Center its verification response advising that Vilma Morales, not Mark Foster, is listed as the current registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for a response was July 22, 2004. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on July 23, 2004.

The Center appointed Joan Clark as the sole panelist in this matter on July 28, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel advised the Center on August 4, 2004, that the Complaint was incomplete with respect to the description of Complainant. On the same day the Center issued Administrative Panel Order No. (1) giving Complainant until August 9, 2004, to complete the description of Complainant.

On August 5, 2004, the Panel informed the Center that the Complaint provided different names for Respondent and requested clarification or correction. The Center forwarded this request to Complainant later that day.

Complainant filed the First Amended Complaint dated August 9, 2004, in which it declared that a copy thereof had been sent or transmitted to Respondent on August 9, 2004, by courier and electronically, as well as to the Registrar Dotster, Inc.

On August 12, 2004, the Center advised the parties of the Panel’s decision that Respondent be given 5 days to respond to the First Amended Complaint counting from the date of notification of that communication, and that a decision would be due on August 23, 2004. On August 18, 2004, the Center advised the Panel that Respondent had not responded to the First Amended Complaint.

The First Amended Complaint completed the description of Complainant, as requested by Administrative Panel Order No. (1). The First Amended Complainant also commented on the different information identifying the registrant given in different databases. According to the Dotster Whois database, the registrant of the disputed domain name is e:bOOm, S.A. with the administrative and technical contact being Vilma Morales. On the PIR (Public Interest Registry) database the registrant is listed as Vilma Morales, of the organization listed as e:boom, S.A., and with the same administrative and technical contact and email address as on the Dotster Whois database. However according to the DotRegistrar Whois database the registrant of the disputed domain name is Mark Foster, but with the same email address as Vilma Morales. In light of the conflicting information about the identity of the registrant, Complainant stated that it had provided, in the original Complaint, the listed contact information for both listed registrants (Vilma Morales and Mark Foster), and served copies of the Complaint and annexes on both named registrants.

The Panel notes that the administrative and technical contact given for e:bOOm, S.A. in the Dotster Whois database and for Vilma Morales in the PIR database is the same email address as that of Mark Foster appearing in the DotRegistrar Whois database.

In its First Amended Complaint Complainant states that since filing the original Complaint it has received an email from Vilma Morales of e:bOOm, S.A. offering to sell the disputed domain name to Complainant. Complainant considers that this email appears to confirm that Vilma Morales is the actual registrant of the domain name <aclunm.org>. Complainant has amended the contact information in its original Complaint to delete information related to Mark Foster and to provide only information related to Vilma Morales of e:bOOm, S.A.

Complainant has described Respondent in the heading of the Complaint and First Amended Complaint as simply e:bOOm, S.A., although it has declared in the body of the First Amended Complaint that the actual registrant is Vilma Morales. The discrepancy does not invalidate these proceedings as service has been made on the email address provided for Vilma Morales who has moreover evidenced knowledge of these proceedings by her email to Complainant.

The Panel finds that the actual registrant of the domain name in dispute is Vilma Morales of e:bOOm, S.A., or Vilma Morales/e:bOOm, S.A.

4. Factual Background

Complainant, American Civil Liberties Union of New Mexico (hereinafter “ACLU-NM”), declares itself to be a non-profit organization formed in Albuquerque, New Mexico. According to the database operated by PIR, the Registrar of the disputed domain name is Dotster Inc. Since the registrant of the disputed domain name is described in the Dotster Whois database as e:bOOm, S.A. with Vilma Morales being the administrative and technical contact, and in the PIR database as Vilma Morales of the organization e:bOOm, S.A., the Panel is satisfied that Respondent is correctly identified as Vilma Morales / e:bOOm, S.A.

Complainant states that it has used the service marks ACLU, ACLU OF NEW MEXICO and ACLU-NM in connection with its advocacy, legal and educational services since 1962, and that it has goodwill associated with the marks.

Complainant further states that Complainant’s “National Affiliate”, American Civil Liberties Union which has an address in New York, owns a United States service mark registration for ACLU for “printed reports, newsletters and brochures relating to the defence of the Bill of Rights” and also for public interest fundraising services. This registration was issued on January 31, 1995,and claims January 19, 1920, as date of first use.

The domain name in dispute, <aclunm.org>, was registered with the Registrar Dotster, Inc. on September 24, 2003.

5. Parties’ Contention

A. Complainant

Complainant states that it has used the service marks ACLU, ACLU OF NEW MEXICO and ACLU-NM since 1962. Complainant makes no explicit statement that it has rights in these service marks or trademarks, other than what may be implied from the fact that it has used them and from the fact it refers to them using the possessive form, such as “Complainant’s ACLU, ACLU-NM and ACLU OF NEW MEXICO marks and names”.

Complainant states that its national affiliate, American Civil Liberties Union, owns a United States service mark registration for ACLU.

Complainant further asserts that the domain name at issue, <aclunm.org>, which it misdescribes as “ACLU-NM”, consists of Complainant’s ACLU-NM service mark in combination with “.org”, that the domain name at issue is nearly identical to Complainant’s said mark, and that the only difference between them is that Respondent has removed the hyphen from Complainant’s mark. Complainant concludes that the domain name is likely to be confused with Complainant and its ACLU-NM mark. Complainant also refers to likelihood of confusion between the domain name at issue and Complainant’s domain name, but no information has been given with respect to the latter.

Complainant further argues that Respondent’s lack of rights in the disputed domain name and its bad faith in registering and in using same are demonstrated by the fact that Responden

- is not commonly known by ACLUNM,

- registered the disputed domain name without any prior rights or legitimate interests in ACLU-NM, and

- did not register the disputed domain name until January 22, 2003, whereas Complainant had offered its goods and services under the ACLU-NM name and mark since at least as early as 1962

Complainant further states that when the disputed domain name is entered in an internet browser, the viewer is “mousetrapped”, as web pages automatically open at a variety of domain names, including such domains as <pinkflicks.com> and <gothfuck.com>. Complainant attaches as Exhibit G a copy of these sites which are clearly pornographic and argues that redirecting traffic to a pornographic web site is evidence of bad faith registration and use. Complainant also states that the various sites to which internet users are redirected upon typing “www.aclunm.org” cause other browser screens to open automatically, after the user has closed the initial “pop-up” screens.

Complainant asserts that Respondent’s mouse-trapping of visitors via “pop-up” advertisements, and presumable commercial gain from such conduct, is further evidence of bad faith use and registration.

Complainant states that Respondent’s actions show that the disputed domain name has been registered and is being used in bad faith.

Complainant requests that the Panel issue a decision that the contested domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that in order to be successful, Complainant has the burden of proving that all three elements are present in the Complaint, namely:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate Respondent’s rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

A. Identical or Confusingly Similar

The issue here is whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

The first question to be answered is whether Complainant has rights in a mark to which the disputed domain name is alleged to be identical or confusingly similar. These rights need not be rights of ownership and need not be exclusive. A licensee having the right to use a mark under its license is clearly a party having a right in the service or trademark. A Complainant, through its affiliation with its grandparent corporation which owns a trademark registration, has been held to have rights in and duties concerning the mark (Miele, Inc. v. Absolute Air Cleaners and Purifiers, WIPO Case No. D2000-0756).

Rights in the mark may also flow from a Complainant’s prior use of the mark and the establishment of goodwill therein. Complainant herein has not explicitly stated it has rights in any mark, but asserts its use of the service marks ACLU, ACLU OF New Mexico and ACLU-NM since 1962. Also, Complainant refers to these marks as “Complainant’s”, which is an implicit assertion that Complainant has rights in the marks. In addition, Complainant claims it has goodwill associated with the marks.

The Panel agrees with the interpretation of the Policy expressed in the following decision, holding that rights in a mark may be established by use of the mark:

“Whether Complainant has a “legal” right to use the trademark, or has been “authorized” by the owner of the registered trademark to use the trademark is not for the Panel to decide... The Policy only states that the Complainant must have rights in the trademark, which Complainant has shown by virtue of its use over the last eight years.

- Häfele America Co. v. Hafele, LLC, WIPO Case No. D2000-1839.

A party which has established goodwill in a mark may be considered to have rights in the mark, as confirmed in the following decision

“It is abundantly clear from the evidence filed that the Complainant has established a substantial goodwill under and by reference to the name Smart Design, a name which is a common law trade mark or service mark and which is identical or confusingly similar to the Domain Name. It is also abundantly clear from the evidence filed by Respondent that there are literally dozens of other entities trading under and by reference to precisely the same name. Accordingly, the Complainant’s rights in respect of the name are by no means exclusive.”

“While the Panel is aware that certain previous Panels have taken the view that in these circumstances the Complaint must fail at the first hurdle, this Panel does not take that view. In this Panel’s view the test under paragraph 4(a)(i) of the Policy, which makes no mention of “exclusive rights” is or ought to be a relatively easy test for a Complainant to satisfy, its purpose simply being to ensure that the Complainant has a bona fide basis for making the Complaint in the first place.”

- Smart Design LLC v. Carolyn Hughes, WIPO Case No. D2000-0993.

Complainant relies in part upon the registration of the mark ACLU, the registrant being American Civil Liberties Union which is declared to be Complainant’s “national affiliate”. This mark is registered as a trademark in association with printed reports, newsletters and other articles and also as a service mark in association with services such as promoting the public interest in the defence of the Bill of Rights. There is no indication that Complainant is licensed to use the registered mark. Nor is there an explanation of the relationship between Complainant and the registrant of the mark. If there had been no use by Complainant of the mark, the mere fact that the mark was registered in the name of another entity described as Complainant’s national affiliate, without an explanation that Complainant was licensed to use the mark or was related as a subsidiary of the registrant, would not form the basis, in the Panel’s view, for concluding that Complainant has rights in the mark

The Panel concludes that Complainant has established, by virtue of its use of the described marks and its declared goodwill in same, that it has rights in the marks ACLU, ACLU-NM and ACLU OF NEW MEXICO.

The Panel also finds that the domain name at issue, <aclumn.org>, is confusingly similar to the mark ACLU-NM, the only differences being the hyphen in the mark and the fact that the letters in the domain name are in lower case; the addition of the suffix indicating the top level domain should not be considered with regard to the issue of whether a domain name is identical or confusingly similar to a trademark.

The Panel also finds there is a confusing similarity between the domain name at issue and the other marks relied upon by Complainant, ACLU and ACLU OF NEW MEXICO.

The criterion of paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

There has been no evidence before the Panel that Respondent has used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. According to the Complaint, when the disputed domain name is entered in an internet browser the viewer is referred to other sites, referred to as “pop-up” sites, which are clearly pornographic, and from there to other “pop-up” screens after the viewer has closed the initial “pop-up” sites. The referring of a viewer to other domain names and web pages does not constitute a bona fide offering of goods or services by the domain name holder, according to paragraph 4(a)(ii) of the Policy. (See National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co. aka chargersgirls.net, WIPO Case No. D2000-0118, where the domain name in dispute was used to divert Internet users to a pornographic web site; and Libro AG v. NA Global Link Limited, WIPO Case No. D2000-0186, where the domain name was used to redirect users to a different web site.) The pornographic web sites, to which Respondent’s web site under its domain name refers internet users, may offer goods or services but this does not constitute a use of the domain name by Respondent for the bona fide offering of goods or services. (See Women in Military Service for America Memorial Foundation, Inc. v. Russian Web marketing, WIPO Case No. D2001-0610)

There is no evidence that Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. Nor is there any intimation that Respondent was commonly known by the domain name.

The domain name at issue is at once unusual and confusingly similar to Complainant’s marks. Not having filed a Response, Respondent has not advanced an explanation as to why she adopted the domain name. As found in Drexel University v. David Brouda, WIPO Case No. D2001-0067:

“... rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant.

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and the criterion of paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The Panel finds that by registering and using the domain name in dispute which is confusingly similar to Complainant’s marks aforesaid Respondent has intentionally attempted to attract to her web site Internet viewers believing they were accessing Complainant’s web site, and then diverted them to other sites. Using a confusingly similar domain name to direct users to unrelated advertisements is classic bad faith. (See Backstreet Productions, Inc. v. John Zuccarini, Cupcake Party, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654 and Society for Human Resource Management v. Local Services ICN., WIPO Case No. D2004-0127). That the choice of the disputed domain name was done for commercial gain appears from Respondent’s email of August 4, 2004, addressed to the Center and to Complainant stating “We are ready to sell the domain in dispute to the complainant for 1000 USD.” This in itself is an indication that the domain name was registered and used in bad faith. Although Respondent did not file a Response, she did dispatch the email aforesaid but provided no justification for adoption of the domain name <aclunm.org>.

The Panel concludes that the domain name was registered and is being used in bad faith. The criteria of paragraph 4(a)(iii) of the Policy have been satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <aclunm.org> be transferred to Complainant.

Joan Clark
Sole Panelist

Dated: August 23, 2004