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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sporting Goods Manufacturers Association v. InterAD Group, Inc.
Case No. D2000-0202
1. The Parties
The Complainant is Sporting Goods Manufacturers Association, a Illinois not-for-profit corporation, with its principal place of business at 200 Castelwood Road, North Palm Beach, Florida 33408. Complainant’s authorized representatives are Jonathan T. Howe and Nathan J. Breen of Howe & Hutton, Ltd., located at 20 N. Wacker Drive, Suite 4200, Chicago, IL 60606. The Respondent is InterAD Group, Inc., located at 10050 Montgomery Rd., Suite #340, Cincinnati, OH 45251, the registrant of the domain name <sgma.com>.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <sgma.com>, which domain name is registered with Network Solutions, Inc. ("NSI"), Herndon, Virginia, United States of America.
3. Procedural History
A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on April 5, 2000.
On April 5, 2000, a Verification Response was received from the registrar, NSI which served to: (1) confirm that Network Solutions was in receipt of the Complaint submitted by Complainant; (2) confirm Network Solutions is the registrar of the domain name registration; (3) confirm that InterAD Group is the current registrant of the SGMA.COM domain name registration; (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es) available in the registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (5) confirm that Network Solutions’ 4.0 Service Agreement was in effect at the time of the original registration of the domain name; (6) confirm that the domain name registration SGMA.COM is in "Active" status.
NSI advised that the policy in effect at the time of the original registration of the domain name at issue provided that:
NETWORK SOLUTIONS, INC.
DOMAIN NAME REGISTRATION AGREEMENT
A. Introduction. This domain name registration agreement ("Registration Agreement") is submitted to NETWORK SOLUTIONS, INC. ("NSI") for the purpose of applying for and registering a domain name on the Internet. If this Registration Agreement is accepted by NSI, and a domain name is registered in NSI’s domain name database and assigned to the Registrant, Registrant ("Registration") agrees to be bound by the terms of this Registration Agreement and the terms of NSI’s Domain Name Dispute Policy ("Dispute Policy") which is incorporated herein by reference and made a part of this Registration Agreement. This Registration Agreement shall be accepted at the offices of NSI.
* * * * *
C. Dispute Policy. Registrant agrees, as a condition to submitting this Registration Agreement, and if the Registration Agreement is accepted by NSI, that the Registrant shall be found by NSI’s current Dispute Policy. The current version of the Dispute Policy may be found at the InterNIC Registration Services web site: "http://www.netsol.com/rs/dispute-policy.html."
D. Dispute Policy Changes or Modifications. Registrant agrees that NSI, in its sole discretion, may change or modify the Dispute Policy, incorporated by reference herein, at any time. Registrant agrees that Registrant’s maintaining the registration of a domain name after changes or modifications to the Dispute Policy become effective constitutes Registrant’s continued acceptance of these changes or modifications. Registrant agrees that if Registrant considers any such changes or modifications to be unacceptable, Registrant may request that the domain name be deleted from the domain name database.
E. Disputes. Registrant agrees that, if the registration of its domain name is challenged by any third party, the Registrant will be subject to the provisions specified in the Dispute Policy.
* * * * *
Q. This is Domain Name Registration Agreement Version Number 4.0. This Registration Agreement is only for registrations under top-level domains: COM, ORG, NET, and EDU. By completing and submitting this Registration Agreement for consideration and acceptance by NSI, the Registrant agrees that he/she has read and agrees to be bound by A through D above.
Domain Version Number: 4.0 [URL ftp://rs.internic.net/templates/ domain-template.txt] [01/98]
A Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the complainant.
No formal deficiencies having been recorded and on April 6, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent (with copies to the complainant, NSI and ICANN), setting a deadline of April 25, 2000, by which the respondent could make a Response to the Complaint. The Commencement Notification was transmitted to the respondent by e-mail to the e-mail address indicated in the Complaint and specified in NSI’s Response Verification. In addition, the Commencement Notification was sent by e-mail to the addresses listed in the Complaint and confirmed by NSI. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
On May 2, 2000, having received no Response from the designated Respondent, the WIPO Center transmitted to the parties by e-mail a Notification of Respondent Default. No Response or other document has been received by the WIPO Center or the Administrative Panel from Respondent since the Notification of Default.
On May 15, 2000, in view of Complainant’s designation of a single panelist, the WIPO Center invited Roderick Thompson to serve as a panelist in Case No. D2000-0202, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.
Having received Roderick Thompson’s Statement of Acceptance and Declaration of Impartiality and Independence, on May 15, 2000, the WIPO Center sent to the parties a Notification of Panelist Appointment, in which Roderick Thompson was formally appointed as the Sole Panelist. The Projected Decision Date as determined by the WIPO Center Transmission of Case file to Administrative Panel, transmitted to the parties on May 15, 2000, was May 29, 2000. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and WIPO Supplemental Rules.
Respondent has not made a Response to the Complaint. This Panelist finds that Respondent received Notice of the Complaint and failed to submit a Response as required by Rule 5. Respondent is, therefore, in Default and, under Rule 14(a), this Panelist shall "proceed to a decision on the complaint." Accordingly, this Panelist shall proceed to a decision based on the allegations in the Complaint and shall draw such inferences as are appropriate from the other documents submitted to WIPO.
4. Factual Background
Complainant has provided evidence of the registration of the following mark:
1. Service Mark – SGMA, for services involving promoting the interests of sporting goods manufacturers. Class 42, registered for a term of 10 years from October 8, 1991.
Complaint, Exhibit A.
The trademark claims a first use of February 1990. Id. Complainant uses the mark, SGMA, for services involving promoting the interests of sporting goods manufacturers. Complaint ¶ 8.
Respondent is the current registrant of the domain name <sgma.com>. E-mail dated April 5, 2000, from NSI to the WIPO Center Case Administrator. The WHOIS database shows that Respondent is also the Administrative Contact, Technical Contact and Zone Contact for the domain name <sgma.com>. Complaint, Attachment.
5. Parties’ Contentions
Complainant alleges; 1) that Respondent has registered as a domain name a mark which is confusingly similar to the service mark registered and used by Complainant; 2) that Respondent has no rights or legitimate interests in respect to the domain name and is not authorized or licensed to use Complainant’s mark, SGMA; and 3) that the domain name was registered and was being used in bad faith and, specifically, that Respondent has offered to sell the domain name to Complainant for $50,000.00. Complainant cites federal trademark law involving domain name disputes, the Anticybersquatting Consumer Protection Act (15 U.S.C. Section 1125(d)1(A), and Section 43(c) of the Lanham Act to bolster the argument that Complainant’s above-referenced allegations are supported by applicable United States law.
Respondent has not contested the allegations of the Complaint and is in Default.
6. Discussion and Findings
A. Applicable Rules and Principles of Law.
Paragraph 15(a) of the Rules instructs this Panelist as to the principles the Panelist is to use in rendering its decision: "A Panelist 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." Here, Complainant, Respondent, and the registrar are all domiciled in the United States. United States’ courts have recent experience with similar disputes. The Final Report of the WIPO Internet Domain Name Process (April 30, 1999 [http://ecommerce.wipo.int/domains/ process/ eng/processhome.html]) envisaged the very situation before this Panelist, stating "if the parties to the procedure were resident in one country, the domain was registered through a registrar in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition" of what became paragraph 4(a) of the Policy. Accordingly, this Panelist may look to rules and principles of law set out in decisions of the courts of the United States in determining whether the complainant has met its burden.
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 in which the complainant has rights; and,
(ii) that the respondent has no legitimate interests in respect of the domain name; and,
(iii) the domain name has been registered and used in bad faith.
B. Application of Paragraph 4(a)(iii) to the Facts.
Respondent’s domain name <sgma.com> is nearly identical to the service mark registered and used by Complainant, SGMA. See Complaint ¶ ¶ 6 through 9. The domain name and the service mark are, indeed, confusingly similar. As Complainant has submitted (1) a Certificate of Registration No. 1,660,207 for the service mark SGMA registered with the U.S. Patent and Trademark Principal Register (Complaint, Exhibit A) and, (2) an NSI WHOIS database search showing respondent as the <sgma.com> domain name registrant (Complaint, Attachment), and the allegations of the Complaint are undisputed, Complainant has satisfied its burden under Paragraph 4 (a)(i). It is also uncontested that Respondent has no rights or legitimate interests in respect of the domain name, satisfying the requirement of Paragraph 4 (a)(ii). See Complaint ¶ ¶ 9, 9.10, 9.11, 9.12, 9.14, 9.15, 9.16, 9.17 and 9.18. This Panelist concludes that the name has been registered and used in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
The Complaint also alleges that "Respondent contacted Petitioner and offered to sell the sgma.com domain name to Petitioner for $50,000.00. Through its authorized representative, Petitioner responded that Respondent’s use of the mark was unlawful, that Respondent (sic) [Petitioner] was not willing to pay for its right to use its Service Mark in the form of a domain name, and that Respondent should immediately transfer the domain name to Petitioner." Complaint, ¶ 9.6. $50,000 is greatly in excess of Respondent’s out-of-pocket costs incurred in registering the domain name. The fact that Respondent has not provided a Response or otherwise contested the allegations, leads this Panelist to conclude that Respondent is using <sgma.com> as a website or domain name address "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...for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name," thus satisfying the evidence requirement of Paragraph 4 (b)(i) to establish bad faith registration and use.
This Panelist therefore concludes that the circumstances presented in this Default proceeding qualify as sufficient evidence of registration and use in bad faith within the meaning of paragraph 4 of the Policy and applicable legal principles.
For all of the foregoing reasons, this Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4i of the Policy, this Panelist requires that the registration of the domain name <sgma.com> be transferred to the Complainant.
Dated: May 22, 2000