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Moneylogic v. Made For You Publishing, Etc. [2005] GENDND 1816 (4 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moneylogic v. Made For You Publishing, Etc.

Case No. D2005-0824

1. The Parties

The Complainant is Moneylogic, Dallas, Texas, United States of America, represented by Baker Botts, LLP, Dallas, Texas, United States of America.

The Respondent is Made For You Publishing, Etc., Birmingham, Alabama, United States of America.

2. The Domain Name and Registrar

The disputed domain name <moneylogic.org> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2005. On August 2, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On August 3, 2005, Wild West Domains, Inc. 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 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 Respondent of the Complaint, and the proceedings commenced on August 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2005.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 20, 2005. 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.

4. Factual Background

Moneylogic was founded on June 11, 2004, and is an organization dedicated to helping its members achieve financial independence through personal financial management. Moneylogic provides members with discounts to help them save money on the products and services they use every day. In addition, Moneylogic provides the tools to help members learn how to direct those savings to build assets and reduce debt.

Complainant has continuously used the trademark MONEYLOGIC in interstate commerce throughout the United States since January 2005. Complainant owns a United States Service mark application for MONEYLOGIC, Serial No. 78/398,970, filed April 8, 2004, for which a Notice of Allowance has issued. However, no Statement of Use has been filed and no registration has yet issued.

Complainant also owns the domain name <moneylogic.com> through which it operates a web site providing information regarding its discount program and educational services.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy, Complainant contends that:

(1) The Domain Name at issue is <moneylogic.org>; the Complainant’s trademark is MONEYLOGIC.

(2) The Domain Name is identical to the trademark owned and used by Complainant.

(3) Complainant’s use of the trademark predates any use or registration of the Domain Name.

(4) The Domain Name was registered to Respondent on March 22, 2005, after Complainant acquired trademark rights in the name MONEYLOGIC.

(5) Complainant’s “www.moneylogic.com” website advertised its MONEYLOGIC services at least as early as September 2004.

With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:

(1) Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

(2) Respondent is not (either as an individual, business or other organization) known by the name MONEYLOGIC;

(3) There is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services.

(4) Respondent is using the Domain Name to redirect Internet users to a competitor’s commercial website.

(5) Respondent is not a licensee of Complainant, and has not received any permission or consent to use the trademark MONEYLOGIC or apply for the Domain Name.

With respect to paragraph 4(a)(iii) of the Policy, Complainant contends that:

(1) The Domain Name was registered by Respondent “primarily for the purpose of disrupting the business of a competitor” (the Policy, paragraph 4(b)(iii));

(2) The Domain Name <moneylogic.org> is set up so that users are redirected to Respondent’s website, which is being used in connection with marketing a discount program offered through a multilevel network;

(3) Respondent is a competitor of the Complainant and registered and is using the Domain Name primarily to disrupt Complainant’s business;

(4) Respondent’s Domain Name causes Internet users to mistakenly believe that the Domain Name is affiliated with Complainant. The initial user confusion that the Domain Name causes is evidence that Respondent registered and used the Domain Name in bad faith pursuant to Policy, paragraph 4(a)(iii); and

(5) Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location pursuant to Policy, paragraph 4(b)(iv). Respondent’s diversion of Internet users to its website for commercial gain through use of its confusingly similar Domain Name constitutes bad faith registration and use in violation of Policy, paragraph 4(b)(iv).

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

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

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

The Respondent’s default does not automatically result in a decision in favor of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding. The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 (<vanguar.com>, Transfer); Berlitz Investment Corp. v. Stefan Tinculescu WIPO Case No. D2003-0465 (<berlitzsucks.com>, Transfer); Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383 (<brookehogan.com>, Denied).

A. Identical or Confusingly Similar

The Complainant alleges that it has been using the MONEYLOGIC mark continuously since January 2005, and that it advertised its MONEYLOGIC services at least as early as September 2004 on its “www.moneylogic.com” website, but Complainant has provided no documentary evidence of such use. Nonetheless, the Panel has visited Complainant’s website to confirm its present use.

There being no response to the Complaint, the Panel accepts as true the allegation that Complainant has rights in the mark MONEYLOGIC since at least January 2005. The Domain Name is confusingly similar to Complainant’s mark.

B. Rights or Legitimate Interests

In order for Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455, Transfer; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, Transfer.

Respondent is not making a legitimate noncommercial or fair use of the Domain Name and is not, as an individual, business or other organization, known by the name “Moneylogic.” There is no evidence that Respondent is known by the name “Moneylogic” or that Respondent uses the Domain Name in connection with a bona fide offering of goods or services.

Based on the case file, and in view of Respondent’s failure to respond to the allegations, the Panel finds it likely that the Respondent has no rights or legitimate interests in the Domain Name at issue. However, as the Complaint fails under the third element, it is not necessary to conclude on this matter.

C. Registered and Used in Bad Faith

Complainant argues that Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source or sponsorship of Respondent’s website.

This argument presupposes proof that Respondent had actual knowledge of Complainant’s rights. However, there is little if any basis in this record for such a finding. Complainant alleges that it used its mark continuously in commerce barely three months before Respondent registered the Domain Name. Complainant does not allege or prove that its mark was used widely or was well known. Complainant offers no evidence of the quantity or breadth of the use of its mark. Although Complainant has offered evidence of an Intent to Use trademark application, there is no evidence in this record that a Statement of Use has been filed or that a registration has issued. Complainant makes no allegations and offers no evidence about the popularity of its services. This is not enough to support a finding that Respondent had actual knowledge of Complainant’s rights and, therefore, acted in bad faith.

At the time Respondent registered the Domain Name, Complainant had pending an application to register its mark in the United States Patent and Trademark Office, but this was an Intent to Use application and Complainant has not yet filed a Statement of Use and no registration has issued. This is not enough to charge Respondent with actual knowledge of Complainant’s rights.

It could be argued that Respondent may have learned that Complainant’s <moneylogic.com> domain name was registered when it inquired about the availability of <moneylogic.org>. See Ski Utah, Inc. v. The Lodging Company Reservations Ltd., WIPO Case No. D2003-0776 (“In the Panel’s experience, if one is registering a Domain Name in the .net domain, one will be likely to have checked who has registered the same name in the .com and possibly .org domains.”).

However, this is not certain and not enough to support a bad faith finding. In Diknah, S.L. v. WebQuest.com Inc., WIPO Case No. D2005-0573, transfer denied, the panel rejected the contention that a respondent who redirected Internet traffic to a search engine necessarily did so with the intent to benefit from confusion:

On the contrary, it seems more likely that Respondent registered the domain name to redirect Internet traffic to its search engine, but without the intention to freeride on the goodwill created by Complainant in it trademarks…This Panel does not endorse the practice of registering domain names in order to redirect confused Internet users to a specific search tool. However, said practice does not as such warrant a finding of bad faith under the Policy. As stated in WIPO Case No. D2004-0748, Builder’s Best, Inc. v. Yoshiki Okada, in order to find bad faith, “there must be some evidence of knowledge that the Respondent knew the domain name was identical or similar to the Complainant’s mark, not just ‘someone’s’ mark.”

Similarly here, this Panel cannot infer actual knowledge and consequent bad faith. See also, Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323 (transfer denied).

7. Decision

For all the foregoing reasons, the Complaint is denied.

Lawrence K. Nodine
Sole Panelist

Date: October 4, 2005