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American Mensa, Ltd. v. Alan Heigl et al. [2005] GENDND 286 (24 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

American Mensa, Ltd. v. Alan Heigl et al.

Case No. D2005-0068

1. The Parties

Complainant is American Mensa, Inc. (“Complainant” or “Mensa”), located at Arlington, Texas, United States of America.

Respondents are Alan Heigl and Minnesota Mensa (collectively “Respondent”) both located at Northfield, Minnesota, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <minnesotamensa.org> (the “Domain Name”). The registrar is TotalChoice Hosting Services as reseller for Wild West Domains which is an affiliate of Go Daddy Group, Inc. (the “Registrar”).

3. Procedural History

On January 21, 2005, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On January 25, 2005, the Center received hardcopy of the Complaint. On January 25, 2005, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On January 25, 2005, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

The Center verified that the Complaint with Amendment satisfies 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 Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On March 4, 2005, after participating in an exchange of communications with the parties, the Center received an Amended Complaint from Complainant via email. On March 7, 2005, the Center received the Amended Complaint in hardcopy.

On March 8, 2005, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint and Amended Complaint. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On April 21, 2005, the Center received an email communication from the Respondent.

On April 12, 2005, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the “Panel”), the Center notified the parties of the appointment the Panel.

4. Factual Background

Complainant is an international high IQ society which permits its local chapters to register domain names using its registered service mark MENSA (the “Mark”). The authorized website for the Minnesota chapter of Mensa was established as <mnmensa.org>. Complainant also has a logo consisting of a globe on top of a stylized letter “M” (the “Logo”). Both the Mark and the Logo are registered with the United States Patent and Trademark Office for various services including the class indicating membership in a society in which the sole requirement for qualification for membership is a score at or above the 98^th percentile of any of a number of standard IQ tests.

Respondent Heigl was previously the webmaster for the Minnesota chapter of Mensa, but was terminated from this position. Respondent Heigl then registered the Domain Name <minnesotamensa.org> and proclaimed his website to be the official website of the Minnesota chapter of Mensa. The Domain Name was later transferred to Respondent Minnesota Mensa which appears to be an entity controlled by Respondent Heigl. The Domain Name is directed to Respondent’s website which also displays the Logo.

Respondent has filed no formal Response in this matter, but the Center has provided the Panel with email exchanges between the parties in which Respondent is apparently answering individual paragraphs in email sent by Complainant. These email exchanges will be referred to as email “chains.” The Panel has attempted to ascertain Respondents’ contentions by deciphering these email chains.

5. Parties’ Contentions

A Complainant’s contentions

i. Complainant contends that it has registrations of the Mark MENSA, that its registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the MENSA Mark. 15 U.S.C. § 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its exclusive right to use the Mark in connection with the stated services. 15 U.S.C. §§ 1065 and 115(b).

ii. Complainant argues that the Domain Name is confusingly similar to the MENSA Mark, pursuant to paragraph 4(a)(i) of the Policy, because it wholly incorporates the MENSA Mark with the addition of generic terms.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) because it is not properly or commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the MENSA Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of paragraph 4(a)(iii). Complainant alleges that Respondent intentionally registered the Domain Name with full knowledge of Complainant’s rights, because Respondent Heigl felt he had been wrongly terminated as webmaster of the Minnesota chapter and felt his replacement was incompetent.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the MENSA Mark.

ii. Respondent does not dispute that the Domain Name is identical or confusingly similar to the MENSA Mark.

iii. Respondent asserts that the transfer to Minnesota Mensa created rights to or legitimate interests in the Domain Name because this was the original request of Complainant, regardless of the current demand by Complainant that the Domain Name be transferred to Complainant.

iv. Respondent denies that it registered or used the Domain Name in bad faith, because it was instructed to transfer the Domain Name to Minnesota Mensa and did exactly as requested.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772, n. 3.

Failure to File a Response

Even though Respondent has failed to file a Response, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met and will address the apparent contentions of Respondent found in the email chains in this file.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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 legitimate interests in respect of the domain name; and,

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

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the Mark MENSA that its registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the MENSA Mark. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the Mark and exclusive right to use the mark in connection with the stated services.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not come forward with any contrary evidence. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the MENSA Mark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with or confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i). Respondent has not contested this assertion.

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Panel notes that the entirety of the MENSA Mark is included in the Domain Name, with the addition of “Minnesota” and “.org”. The Panel finds that these additions are geographically descriptive and a gTLD extension necessary respectively, neither of which is distinctive.

Generally, a user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it.” 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).

Therefore, the Panel finds that the Domain Name is confusingly similar to the MENSA Mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270.

Complainant contends that Respondent has no permission from the owner to use the MENSA Mark for any purpose. Respondent asserts that the initial demand to transfer the Domain Name to Minnesota Mensa constitutes permission to use the Mark. By then transferring the Mark to an entity named Minnesota Mensa, Respondent claims rights to control content of the website to which the Domain Name is directed. Complainant denies that any rights have been given to Respondent and now demands a transfer to itself to clarify the situation.

The Panel finds that the position of Complainant as the owner of the MENSA Mark is persuasive and that Respondent has not been given permission the use the MENSA Mark. Therefore, none of Respondent’s actions in registering and transferring the Domain Name and directing it to a website is legitimate or bona fide.

The Policy paragraph 4(c) allows three other nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Complainant has sustained its burden of coming forward with allegations that the Respondent lacks rights to or legitimate interests in the Domain Name. Respondent has chosen not to file any formal response and appears to have taken the position in the email chains with Complainant that Respondent is the authorized and official representative of Complainant. The Panel has already found this not to be a sustainable position. Respondent has offered nothing to rebut the assertions of the Complainant that Respondent has no rights or legitimate interests in the Domain Name.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you 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 you have engaged in a pattern of such conduct; or

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

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product.

The Panel finds the evidence inconclusive to find the existence of one of the defined criteria in Paragraph 4(b).

However, the four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

One factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s MENSA Mark when Respondent registered the Domain Name. Complainant has alleged, without refutation, that Respondent had actual knowledge of the Mark.

In addition, Respondent had substantial constructive notice of the Mark, as a trademark search on the date of the registration of the Domain Name would have revealed Complainant’s registrations in the United States. Actual or constructive knowledge of the Complainant’s rights in the Mark is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith).

A second such factor is a course of conduct by Respondent suggesting bad faith. Complainant alleges that Respondent bears a grudge for having been terminated as webmaster of the official <mnmensa.org> website. The email chains included in this file support this finding. Respondent clearly believes that the replacement webmaster is incompetent and deleterious to the Mensa image in Minnesota. The Panel has found that Respondent has no legal rights to publicize himself as the true and official website. Given the palpable animus displayed by Respondent, the course of conduct engaged in by Respondent suggests bad faith.

A third factor is the use of Complainant’s entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, the WIPO panel agreed with complainant, that the registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the panel inferred bad faith use of <cellularonechina.com>, because the domain name included complainant’s entire trademark. In light of Cellular One’s trademark registrations and applications, “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name.” See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, paragraph 7.

Respondent’s Domain Name uses the entirety of Complainant’s Mark, namely the phrase “Mensa.” No plausible explanation exists as to why Respondent selected the name Mensa as part of the Domain Name other than to declare Respondent’s website to be the official Mensa website and to create confusion among Internet users.

The evidence establishes: (i) actual and constructive knowledge by Respondent of Complainant’s rights in the MENSA Mark upon the registration of the Domain Name; (ii) a course of conduct demonstrating actual ill will for having been terminated as webmaster; and (iii) the use of Complainant’s entire Mark creating an absence of any plausible use of the Domain Names that would constitute good faith.

Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Name <minnesotamensa.org> is confusingly similar to Complainant’s MENSA Mark, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <minnesotamensa.org> be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: April 24, 2005