DECISION

MO Media LLC v. NeXt Age Technologies LTD

Claim Number: FA0312000220031

PARTIES

Complainant is MO Media LLC (“Complainant”), represented by Paul Owens, 3827 Phelan #179, Beaumont, TX 77707. Respondent is NeXt Age Technologies LTD  (“Respondent”), represented by M.A. Malik, P.O. Box 3668, Doha, Doha 3668, Qatar.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com>, registered with Go Daddy Software, 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.

David S. Safran as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 16, 2003; the Forum received a hard copy of the Complaint on December 29, 2003.

On December 18, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com> are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2004 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@gresecrets.com, postmaster@gmatsecrets.com, postmaster@mcatsecrets.com, postmaster@lsatsecrets.com and postmaster@toeflsecrets.com by e-mail.

A timely Response was received and determined to be complete on January 26, 2004.

On February 6, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant avers that the disputed domain names are confusingly similar to marks in which it holds protectable rights. Furthermore, that Respondent copied Complainant’s website in violation of its rights and such evidences the bad faith of Respondent in adopting the disputed domain names.

B. Respondent

Respondent contends that it registered the disputed domain names without knowledge of Complainant’s domains in furtherance of its standardized test preparation guide business, that it hired a third party web designer to develop websites for it, and any copying of Complainant’s websites was the action of the third party web designer and occurred without Respondent’s knowledge.  Furthermore, the fact that it took down the sites as soon as it was informed of the problem evidences a lack of bad faith on its part.

FINDINGS

Complainant, as the first to adopt and use the marks GMAT SECRETS, GRE SECRETS LSAT SECRETS, MCAT SECRETS and TOEFL SECRETS has common law rights in those marks.

Respondent’s domains, <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com>, are confusingly similar to those marks. 

No evidence of rights in or legitimate interest in the disputed domains was presented by Respondent and the admitted wholesale copying of Complainant’s website in the absence of contravening evidence is evidence of registration and use in bad faith.

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 alleges that it has established rights in the GMAT-SECRETS.COM, GRE-SECRETS.COM, LSAT-SECRETS.COM, MCAT-SECRETS.COM and TOEFL-SECRETS.COM marks through registration of the <gmat-secrets.com>, <gre-secrets.com>, <lsat-secrets.com>, <mcat-secrets.com> and <toefl-secrets.com> domain names between August 1, and October 21, 2002, all of which predate Respondent’s registration of the disputed domain names. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”). The Panel agrees.

Complainant contends that the <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com> domain names are confusingly similar to its above mentioned marks, as the disputed domain names merely eliminate the hyphen from Complainant’s marks. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (“the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738  (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark). The Panel agrees.

Accordingly, the Panel finds that the disputed domain names are all confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant maintains that Respondent copied Complainant’s websites in their entirety at the disputed domain names, which is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that, as Respondent attempted to pass itself off as Complainant online, through wholesale copying of Complainant’s website, Respondent had no rights or legitimate interests in the disputed domain name); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“It would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business.”). While all of the websites have been taken down, no evidence was presented by Respondent which would demonstrate that it had taken any actions to commence legitimate use of the disputed domains.

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant alleges that Respondent attempted to sell its domain name registrations to Complainant for $7000, however, given the prior offer by Complainant to Respondent, such is not considered evidence of bad faith. See Sumner v. Urvan, WIPO D2000-0596 (WIPO July 24, 2000) (finding no bad faith where Respondent did not contact Complainant first, but rather, Complainant first contacted Respondent about purchasing the domain name) ; see also Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 5, 2001) (finding no bad faith where “the Complainant offers the Respondent far more than the Respondent paid for the disputed domain name and the Respondent asks for an even larger sum”); see also Canal Image UK, Ltd. v. Vanitymail Serv., Inc., FA 94946 (Nat. Arb. Forum July 18, 2000) (finding no bad faith even though Respondent offered to sell the domain name for $500,000 in a dubious attempt to dissuade Complainant from further inquiry into purchasing the domain name in question).

Complainant avers that Respondent’s registration of domain names that are confusingly similar to its marks, and its use of those domain names for websites which were wholesale copied versions of Complainant’s websites creates a likelihood of confusion in the minds of Internet users as to whether Complainant sponsors Respondent’s websites, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where Respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . .  In a nutshell, Respondent used the disputed domain name to perpetrate a fraud”).  While Respondent avers that the wholesale copying was performed without its knowledge by an independent contractor, no evidence has been presented to support this position. Furthermore, given that a prudent party would not start a commercial venture without investigating the existence of potential competitors and the availability for use of the marks to be used, and that it is considered unlikely that an independent party would decide on its own to locate and purloin the entire content of another’s website for a client, the naked assertion that Respondent was the innocent victim of the illegal actions of its independent contractor, on its own, is not found to be credible.

The Panel thus finds that Respondent registered and used the disputed domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

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  <gresecrets.com>, <gmatsecrets.com>, <mcatsecrets.com>, <lsatsecrets.com> and <toeflsecrets.com> domain names be TRANSFERRED from Respondent to Complainant.

                                         

___________________________________________________

David S. Safran, Panelist
Dated: February 18, 2004

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