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National Notary Association, d/b/a California Notary Association v. CA Notary Services, Kenneth White d/b/a California Notary Association d/b/a CA Notary Association d/b/a CNA Golden Notary d/b/a CalifNotaryAssoc.com [2004] GENDND 1138 (9 August 2004)

1. The Parties

The Complainant is National Notary Association, d/b/a California Notary Association, Chatsworth, California, of United States of America, represented by Sheldon & Mak PC, United States of America.

The Respondents are CA Notary Services and Kenneth White d/b/a California Notary Association d/b/a CA Notary Association d/b/a CNA Golden Notary d/b/a CalifNotaryAssoc.com, Tarzana and West Los Angeles, California, of United States of America.

2. The Domain Name and Registrar

The disputed domain name <califnotaryassoc.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was received with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2004. On May 27, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 28, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, 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 the Respondents of the Complaint, and the proceedings commenced on June 7, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was June 27, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents of their default on June 30, 2004.

The Center appointed Mark Partridge as the Sole Panelist in this matter on July 7, 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.

On July 9, 2004, the Panelist issued an order requesting the Complainant to submit evidence on the following four issues: 1) the manner and extent of Complainant’s alleged use of its mark as a trademark or service mark prior to Respondents’ registration of the domain name <califnotaryassoc.com>; 2) the manner in which Respondents have used the domain name; 3) the instances of actual confusion allegedly caused by the Respondents’ use of the domain name; and 4) evidence of the strength and fame of the Complainant’s mark.

4. Factual Background

Complainant provides publications and services to notaries public and aspiring notaries public in California and throughout the United States. Complainant also conducts educational seminars and provides printed materials such as books, manuals, pamphlets, magazines, and newspapers to notaries public in maintaining their certification as well aspiring notaries interested in obtaining certification.

The Complainant has demonstrated that it has used its mark CALIFORNIA NOTARY ASSOCIATION for over forty years. The extent and manner of the use of the mark are demonstrated in the record by the use of the mark in ten newsletters spanning from May of 1958 to February 1965, and the current use of the mark in three notary bulletins, dated December of 2002, February of 2003, and April of 2003.

Approximately 230,000 members across the United States and 120,000 members in California are members of the Complainant’s organization.

Complainant registered the service mark, CALIFORNIA NOTARY ASSOCIATION, with the California Secretary of State on April 22, 2003.

Complainant has a pending application for the mark with the United States Patent and Trademark Office (hereinafter “USPTO”), which was filed on February 17, 2004.

The manner in which the Respondent has used the domain name is demonstrated in the record from pages of the Respondents’ website.

Respondents operate under the business name CNA NOTARY SERVICES. Respondents also use the marks CALIFORNIA NOTARY ASSOCIATION and CNA GOLDEN NOTARY for their business.

Like the Complainant, the Respondents provide services and goods to notaries public in California. The Respondents state their website is “the onestop esource for notaries.” From the Respondents’ website, notaries public can purchase membership in their organization, insurance, and supplies.

The Respondent Kenneth White registered the disputed domain name <califnotaryassoc.com> on January 26, 2002.

The record demonstrates the following uncontested instances of actual confusion related to the Respondent’s use of the domain name:

(1) A letter, dated February 5, 2004, from Jon Secrist from Mobile Notary addressed to the National Notary Association. This letter in pertinent part states the following: “I found this company’s website ‘califnotaryassoc.com’ through a general search on Google. I was looking for your company who I obtained notary supplies in the past, and came across the California Notary Association. I thought this was you because I have some of your materials that have your name ‘California Notary Association’ printed right in the heading. When I called to get some information, there was no record of any of my previous orders in the computer. When asked what was going on, they said maybe I had been confused with the National Notary Association.”

(2) A letter, dated April 19, 2004, from notary public Kendall Leigh to the National Notary Association. This letter indicates that this notary public had ordered a journal and acknowledgement certificate from the Respondent believing the products ordered came from the Complainant. The letter states “I got confused because I know your organization also is the ‘California Notary Association.’”

(3) A note which documented a call from June 3, 2004, to the Complainant, written on pages from the Respondent’s website. This note indicates a customer purchased “$50 pkg from CNA, no pkg sent, no response to voicemail/email.”

(4) An undated note, written on pages from the Respondent’s website. This note states that a “customer purchased supplies from CNA but never received” and “thought she was purchasing from CNA.”

Complainant’s counsel sent a cease and desist letter to the Respondents on or about May 11, 2004. The dispute between the Complainant and the Respondents was not resolved, and this action followed.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns trademark rights in CALIFORNIA NOTARY ASSOCIATION and the domain name is confusingly similar to that mark. Complainant contends that the Respondents’ conduct is not legitimate and constitutes bad faith as a deliberate attempt to attract Internet users looking for Complainant’s identical services to the Respondents’ website.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

In the event of a default, Paragraph 14 of the Rules provides that “the Panel shall draw such inferences therefrom as it considers appropriate and proceed to decision.” See Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101 (April 13, 2002) (finding where respondent had failed to answer and defaulted that it was appropriate to presume from the respondent’s default after notice that the respondent does not dispute the facts presented by the complainant). Under U.S. law, where a defendant has defaulted, the facts stated in the plaintiff’s complaint are regarded as admitted. However, the court is still obligated to review the complaint to ensure that it properly states a claim. See State of Wisconsin v. Pro-Life Domains, Inc., WIPO Case No. D2003-0432 (August 4, 2003) citing GlobalSantaFe Corp. v. Globalsantafe.com, 250 F.Supp.2d 610, 612 (E.D.Va. 2003). These principles are applicable here since both parties are located within the United States.

Furthermore, even though a Respondent has defaulted, the Policy, Paragraph (4)(a) of the Policy still requires the Complainant bear the burden of proving each of the following elements:

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

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

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

A. Identical or Confusingly Similar

If the Complainant does not establish enforceable rights in the mark, the Panel need not consider whether Complainant has met its burden under Paragraph (4)(a). See Pet Warehouse v. Pets.com, Inc., WIPO Case No. D2000-0105 (April 13, 2000).

Complainant has filed a Federal Trademark Application for the Mark with the USPTO. An application for registration does not provide evidence of enforceable rights. See Amsec Enterprises v. Sharon McCall, WIPO Case No. D2001-0083 (April 3, 2001) (finding no enforceable rights in BACKGROUND FACTS).

However, enforceable trademark rights can arise from use without registration by establishing common law rights in a mark. See Denie Hiestand and Health & Integrity Corp. v. Rita Lambrose Segur and Body Electric, Inc., WIPO Case No. D2001-0111 (March 29, 2001). Common law rights can be proved through a showing of acquired distinctiveness or secondary meaning through use. Factors considered in determining whether secondary meaning has been acquired are the following (1) length and manner of use; (2) manner and extent of advertising and promotion; (3) sales volume; and (4) survey evidence. See Fort Lee Chamber of Commerce v. Carmine A. DeMarco, WIPO Case No. D2002-0291 (June 18, 2002) (finding that complainant failed to present any evidence of secondary meaning in a disputed domain name proceeding, except for the bald allegations of its complaint) citing Home Mortgage Corp. v. Platinum Financial Group, [1998] USCA7 785; 149 F.3d 722 (7^th Cir. 1998); Investacorp, Inc. v. Arabian Investment Banking Corp., 931 F 2.d 1519 (11^th Cir. 1991).

I find that the Complainant has submitted sufficient evidence to establish common law rights in its mark. The record demonstrates that the Complainant has used its mark CALIFORNIA NOTARY ASSOCIATION for over forty years for its goods and services to notaries public. The Complainant has also used its mark to promote its organization in newsletters and bulletins.

Although the Complainant’s mark is descriptive, it can be presumed to have acquired distinctiveness and to be entitled to protection because of the Complainant’s use of the mark for over forty years. In the United States, a descriptive mark may be presumed to be distinctive and entitled to protection after five years of continuous use. See Hachette Filipacchi Media U.S., Inc. d/b/a ShowBoats International and Eyeball International, Inc. v. URTHERE Productions, Inc. and Brad Nolan, WIPO Case No. D2002-0143 (May 30, 2002) (finding a slim preponderance of the evidence trademark rights in the mark Charter Fleet International based on at least five years of use and respondents’ conduct after the conclusion of its relationship with complainants).

The disputed domain name is clearly an abbreviated version of the Complainant’s mark.

In fact, the Complainant has submitted uncontested evidence of actual confusion where notaries public have confused the Respondents’ website as being affiliated with the Complainant. Evidence of actual customer confusion “is patently the best evidence of likelihood of confusion.” Allied Marketing Group, Inc. v. CDL Marketing, Inc., [1989] USCA5 1125; 878 F.2d 806, 813 (5th Cir. 1989) (quoting Chevron Chem. Co. v. Voluntary Purchasing Groups, 659 F.2d 695, 704 (5th Cir. 1981), cert. denied, 457 U.S. 1126, 73 L. Ed. 2d 1342, 102 S. Ct. 2947 (1982)). Therefore, I find that the Complainant has met the requirements of Paragraph (4)(a)(i) of the Policy and shown that the Respondents’ domain name is confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate a registrant’s rights to and legitimate interest in the domain name:

(1) demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(2) an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

The mere use of a domain name in connection with the sale of goods or services prior to notice of Complainant’s objections does not necessarily establish a legitimate interest. Not all such use qualifies as bona fide use. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and <Madonna.com>, WIPO Case No. D2000-0847 (October 12, 2000). Here, it is reasonable to conclude that Respondents knew of Complainant’s rights in the mark CALIFORNIA NOTARY ASSOCIATION, given the use of its mark for over forty years. The Respondents’ use also appears to be a deliberate attempt to trade on Complainant’s mark and to confuse the public. Therefore, I find that the Respondents do not have rights or legitimate interests in the domain name.

C. Registered and Used in Bad Faith

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondents] have registered or [Respondents] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondents’] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondents] have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondents] have engaged in a pattern of such conduct; or

(iii) [Respondents] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondents] have intentionally attempted to attract, for commercial gain, Internet users to [Respondents’] website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondents’] website or location or of a product or service on [Respondents’] website or location.

The failure of the Respondents to participate in the proceeding may be suggestive of bad faith and a lack of legitimate interest in the mark. See Mars, Incorporated v. Vanilla, Ltd., WIPO Case No. D2000-0586 (September 1, 2000)(finding that respondent’s repeated lack of response suggested bad faith use and registration); VoiceStream Wireless Corporation v. John Pike, WIPO Case No. D2001-1224 (February 5, 2002) (finding that taken together respondent’s registration of a domain name that is confusingly similar to complainant’s registered and well-known mark, and respondent’s failure to file a response was sufficient to demonstrate that respondent registered and used the domain name in bad faith).

A registrant agrees to follow the registrar’s dispute policy when registering a domain name. Paragraph 4 of the Policy states that the registrant is required to submit to a mandatory administrative proceeding “for certain types of disputes.” The Policy plainly states the kinds of evidence that can be offered to show a legitimate interest in the domain name to defeat the claim. Therefore, anyone capable enough to complete the submission process required to register a domain name should also be considered capable enough of submitting a response. The Rules appropriately notify a respondent that the Panel may draw such inferences as it considers appropriate from the respondent’s failure to respond. The Policy also implies that a good faith respondent has an obligation to respond, since it is “required” to submit to the Policy. See Mars, Incorporated v. Vanilla, Ltd., WIPO Case No. D2000-0586.

The Respondents’ failure to file a Response is troubling. The burden of filing a response is minimal. It would have taken little effort for the Respondents to file a response.

Therefore, the Respondents’ failure to file a response coupled with the Respondents’ use of the domain name and the same mark of CALIFORNIA NOTARY ASSOCIATION as the Complainant to advertise identical goods and services not affiliated with Complainant support a finding of bad faith use and registration.

Such use is intentionally designed to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark (Policy, Paragraph 4(b)(iv). In fact, Respondents’ use has created actual confusion in some instances. Such use is also indicative of an attempt by Respondent to disrupt Complainant’s business. Both of these represent bad faith use of <califnotaryassoc.com>.

7. Decision

The Panel finds the following: 1) the domain name is confusingly similar to the trademark in which Complainant has protectable rights; 2) Respondents do not have rights or legitimate interests in the domain name; and 3) the Respondents have registered and used the domain name in bad faith. 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, <califnotaryassoc.com>, be transferred to the Complainant.

Mark Partridge
Sole Panelist

Dated: August 9, 2004