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Generic Top Level Domain Name (gTLD) Decisions |
The Mega Society v. Dr. Gina Lynne
LoSasso d/b/a Mega Foundation
Claim Number: FA0312000215404
PARTIES
Complainant
is The Mega Society, San Diego, CA
(“Complainant”) represented by Leighton
M. Anderson, Esq., of Bewley, Lassleben & Miller LLP, 13215 East Penn Street, Suite 510, Whittier, CA 90602. Respondent is Dr. Gina Lynne LoSasso d/b/a
Mega Foundation, P.O. Box 894, Eastport, NY 11941 (“Respondent”).
The
domain names at issue are <megasociety.net>, <megasociety.com>,
<megafoundation.net>, <megafoundation.org>,
and <megacenter.org>, registered with Domaindiscover.
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
P. Miranda, Esq. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 3, 2003; the Forum received
a hard copy of the
Complaint on December 8, 2003.
On
December 5, 2003, Domaindiscover confirmed by e-mail to the Forum that the
domain names <megasociety.net>, <megasociety.com>,
<megafoundation.net>, <megafoundation.org>,
and <megacenter.org> are registered with Domaindiscover and that
the Respondent is the current registrant of the names. Domaindiscover has verified that Respondent
is bound by the Domaindiscover 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
December 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 6, 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@megasociety.net, postmaster@megasociety.com,
postmaster@megafoundation.net, postmaster@megafoundation.org, and
postmaster@megacenter.org by e-mail.
A
timely Response was received and determined to be complete on January 5, 2004.
On January 12, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed David P.
Miranda, Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant contends that two of five domain names at issue, <megasociety.net>
and <megasociety.com> are identical to Complainant’s trademark The
Mega Society; and the other three domain names at issue, <megafoundation.net>,
<megafoundation.org> and <megacenter.org> are
confusingly similar to Complainant’s mark.
Complainant contends that it was formed around 1992 and is an
association where members qualify for admission based upon their scores
in one
or more intelligence tests. According
to Complainant, no other party has used the trademarks in connection with the
creation, business or publications of a society
of high IQ individuals prior to
Complainant. Complainant contends that
although it has no federally registered trademarks, it has acquired enforceable
trademark rights under the
common law of California and other states. In support of this contention Complainant
cites to and provides a copy of a judgment of the Superior Court of the State
of California. Mega Society v. Chris
Langan, et al., GIC 787630 (April, 29, 2001)(“California action”).
Complainant
contends that Respondent in this proceeding conducts its business and
operations for and in association with the Defendant
in the California
action. The California action
recognizes Complainant’s rights to certain trademarks and tradenames, including
but not limited to “The Mega
Society” and specifically enjoins Defendant from
using or continuing to use or claim ownership of <megasociety.net>
or any other Internet domain name that uses or incorporates any of
Complainant’s names or marks or engage in any activities which
are intended to
or likely to have the effect of causing confusion with respect to Complainant
or its marks. Complainant contends that
Respondent is a former member of Complainant’s organization and on or about
October 1, 1997, left Complainant’s
organization and formed its own competing
business with Defendant Langan from the California action. Complainant contends that Respondent’s use
of the domain names at issue for the purpose of a business with policies and
purposes similar
to that of The Mega Society constitutes bad faith, especially
in light of the judgment in the California action. Complainant also contends that as a result of Respondent’s
conduct, it is unable to establish its own website and that prospective
members
and the general public searching for Complainant on the Internet are led to
Respondent’s website.
B.
Respondent
Respondent
contends that the Panel does not have jurisdiction to decide an issue that is
based on the judgment of a California court
to which Respondent was not a
party. Respondent further contends that
there is a clear distinction between her company “The Mega Foundation” and
Complainant’s association
“The Mega Society.”
Respondent contends that its company The Mega Foundation has been in
existence since December, 1999 when it filed its Articles of
Incorporation, and
obtained tax exempt status from the IRS in June, 2000.
Respondent
contends that Complainant does not possess any common law trademark rights
because it is not involved in a commercial enterprise
that provides legitimate
goods or services. Respondent also
argues that Complainant has not been in business continually since the 1980s,
but rather was dormant for a period
of time in the 1980s and began activities
in its current form around 1990-91.
Respondent also contends that the term “mega”, common to all the
disputed names, is extremely common and not a proper basis for a
trademark. Respondent also questions the validity of
the judgment in the California action noting that Respondent herein was not a
party to that
action and that the Defendant in the California action was not
properly notified, the case was not properly adjudicated and the judgment
was
improperly issued. Although, Respondent
contends that it was not acting “in concert or cooperation” with the Defendant
in the California action, it does
admit that Defendant Mr. Langan is on The
Mega Foundation Board of Directors.
Respondent
further contends that the domain names <megafoundation.org> and <megafoundation.net>
were acquired in 1999 at approximately the same time that Respondent’s Articles
of Incorporation were filed, that the domain names
<megasociety.net>
and <megasociety.com> were acquired in December, 2000, by which
time The Mega Foundation was well established as an officially recognized
non-profit entity
and the domain name <megacenter.org> was
acquired for the possible establishment of a giftedness resource center. Respondent contends that Complainant has the
opportunity to register and use “megasociety” related domain names such as
<megasociety.us>
or <themegasociety.net>, .info, or .us, all of
which are still available. Respondent
contends that Complainant’s conduct is nothing more than attempted “reverse
domain name hijacking” to deprive Respondent
of its domain names.
FINDINGS
The Panel finds that with respect to the
domain names <megasociety.net> and <megasociety.com>
that Complainant has established that the marks are identical or confusingly similar
to its common law mark, that Respondent has
no rights or legitimate interests
with respect to those domain names and that those domain names have been
registered and are being
used in bad faith.
Those two domain names should be transferred to Complainant. The Panel finds that Complainant has failed
to meet its burden of proof with respect to the domain names <megafoundation.net>,
<megafoundation.org> and <megacenter.org>.
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.
Complainant asserts common law rights in the THE
MEGA SOCIETY and NOESIS marks through use as a tradename in the former, and as
a
journal publication in the latter.
Both marks are purportedly used in connection with a private society
comprised of high-IQ individuals that was formed in or about
1982. See 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”);
see also Great Plains Metromall,
LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the
Uniform Domain Name Dispute Resolution Policy does not require “that a
trademark be registered by a governmental authority for such rights to exist”);
see also Passion Group Inc. v.
Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that
Complainant established sufficient rights by virtue of its distribution and
advertising
to enable it, at common law, to prevent another magazine by the
same name from being passed off as that of Complainant. Thus Complainant
established that it ‘has rights’ under the ICANN Policy).
Complainant
further presents proof of a judgment, issued by the California Superior Court
for San Diego County, prohibiting the infringment
of various marks associated
with the Mega Society. The judgment in
the California action, specifically recognizing Complainant’s trademark rights
to marks including “The Mega Society”,
orders that Defendant is enjoined from
using, or continuing to use the domain name, <megasociety.net>, or any other
Internet domain name that uses or incoporates any of Complainant’s names or
marks. Although, Respondent contends
that this Panel is not the proper body to enforce California judgment, the
Panel is entitled to rely
upon the decision and judgment as evidence in support
of Complainant’s claims. In addition to
that evidence, there is proof submitted that Complainant has been using The
Mega Society name and marks since the 1980s
with respect to its association and
publications and has acquired common law rights to that name. The Panel finds that the domain names <megasociety.net> and <megasociety.com> are identical
or confusingly similar to Complainant’s name and marks.
However, with
respect to the domain names, <megafoundation.net>, <megafoundation.org> and <megacenter.org>, Complainant
has failed to establish either common law rights to those domain names, or that
those domain names are identical or
confusingly similar to any name to which it
has rights. As noted by Respondent, the
term “mega” is a generic term synonomous with general words such as “large,”
“great,” and “good.” Respondent argues
that “generic applications of common words are not legally acceptable as
trademarks.” See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO
May 12, 2000) ("[c]ommon words and descriptive terms are legitimately
subject to registration as domain names
on a 'first-come, first-served'
basis"); see also Rollerblade, Inc. v. CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000)
(“genericness, if established, will defeat a claim of trademark rights, even in
a mark which is
the subject of an incontestable registration”); see also Successful Money Mgmt. Seminars, Inc. v.
Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (finding that
seminar and success are generic terms to which Complainant cannot maintain
exclusive rights).
The Panel finds
that Complainant has failed to establish that it has common law rights to The
Mega Foundation or Mega Center, and
thus has failed to meet its burden of proof
with respect to the <megafoundation.net>, <megafoundation.org> and <megacenter.org>
domain names.
With respect to the domain names <megasociety.net>
and <megasociety.com> Respondent
lacks rights or legitimate interests in the disputed domain names because
Respondent has registered and used the domain
names knowing they were
Complainant’s name and marks. Knowledge
of Complainant’s rights in the mark is evidenced by the fact that the Chairman
of Respondent’s foundation was previously
a member of Complainant’s society,
but has since begun a new business in conjunction with Respondent. In addition, Respondent lacks rights and
legitimate interests because it is using the disputed domain names in
connection with publications
that are substantially similar to those of
Complainant. See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(holding that Respondent’s appropriation of Complainant’s mark to market
products that
compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Clear Channel Communications, Inc.
v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that
Respondent, as a competitor of Complainant, had no rights or legitimate
interests
in a domain name that utilized Complainant’s mark for its competing
website).
Furthermore, Respondent submits no proof
that it is engaging in any business under the name The Mega Society. But, rather is merely using its mega society
domain names for the purpose of redirection to its website. Based upon the above, the Panel finds that
Complainant has established that Respondent has no rights or legitimate
interests to the
domain names <megasociety.net> and <megasociety.com>.
Respondent’s
registration and use of the disputed domain names has disrupted the competitive
business of Complainant, evidencing bad
faith registration and use pursuant to
Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost,
D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in
opposition to another and the context does not imply or
demand any restricted
meaning such as commercial or business competitor”); see also Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between Complainant and Respondent, Respondent
likely
registered the contested domain name with the intent to disrupt Complainant’s
business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that the domain names were registered and used
in bad faith where Respondent
and Complainant were in the same line of business
in the same market area).
Complainant has met its burden of
establishing that Respondent’s registration and use of the domain names <megasociety.net>
and <megasociety.com> was in bad faith.
Respondent has also contended that
commencement of this proceeding constitutes reverse domain name hijacking on
the part of Complainant. The claim of
reverse domain name hijacking is a serious claim and should not be made without
substantial proof and support. In this
case the Panel finds that Complainant is entitled to the transfer of the domain
names <megasociety.net> and <megasociety.com>. There can be no reverse domain name
hijacking with respect to those domain names.
Although the Panel finds that Complainant is not entitled to the
transfer of the domain names <megafoundation.net>, <megafoundation.org>
and <megacenter.org>, Respondent has provided insufficient proof
to support a claim of reverse domain name hijacking with respect to any of
these domain
names.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED in part.
Accordingly, it is Ordered that the <megasociety.net>, <megasociety.com>,
domain names be TRANSFERRED
from Respondent to Complainant, The Mega Society. No Order is made with respect to the <megafoundation.net>, <megafoundation.org>,
and <megacenter.org> domain names.
David P. Miranda, Panelist
Dated: January 30, 2004
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