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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Case No. D2000-0295
1. The Parties
Complainant: North American Die Casting Association, an Illinois not-for-profit corporation with a principal place of business at 9701 West Higgins Road, Suite 880, Rosemont, Illinois.
Respondent: Genick Bar-Meir, having an address of 1107 16th Avenue, S.E., Minneapolis, MN 55414-2411.
2. The Domain Name(s) and Registrar(s)
Domain Name: nadca.org
Registrar: Domain Bank, Inc.
3. Procedural History
The procedural history of this proceeding can be summarized as follows:
-On April 14, 2000, Complainant initiated the proceeding by filing via e-mail a complaint against Respondent.
-The complaint was reviewed by the WIPO Arbitration and Mediation Center (the "Center") and found to have been filed in compliance with the requirements of the ICANN 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).
-The Complainant paid the requisite fee, and requested a single panelist.
-The panel agrees with the Center’s conclusions regarding compliance of the complaint with the requirements of the UDRP, the Rules and the Supplemental Rules.
-Also on April 14, 2000, the Complainant sent a copy of the complaint by electronic mail to Domain Bank, Inc., on the assumption that this entity was the registrar of the domain name. Subsequent to that communication, Complainant was advised by counsel to Domain Bank, Inc., that the registrar of the domain name was CORE-Internet Council of Registrars. The Center, by an electronic communication, confirmed that Core-Internet Council of Registrars was in fact the registrar of the domain name. On April 27, 2000, the CORE Internet Council of Registrars confirmed that it was the registrar of the domain name, and provided information concerning the registrant of the domain name.
-On April 27, 2000, notice was sent by email and by certified mail to the Respondent by the Center. The notice indicated that the present administrative proceeding had been commenced, and that Respondent would have twenty days from the date of commencement of the proceeding to file a response to the administrative complaint (i.e., until May 17, 2000).
-On May 2, 2000, the Respondent indicated by means of e-mail that he could not read the document(s) sent by the Center. In that communication, the Respondent requested that the Center send the notification again in one of a number of specific file formats (i.e., "Lyx, LaTeX, HTML, SHTML, XML, agr and epsi). On May 3, 2000, the Center communicated to the Respondent and provided to him electronic copies of the notification of the complaint and the complaint in HTML and ASCII formats. On May 5, 2000, the Respondent communicated again to the Center that he was still not able to read the email sent by the Center due to the fact that the attachments were encoded in "microsoft format" rather than "plain text" and requested that the Center re-send the attachments in plain text format. On May 10, 2000, the Center communicated the two documents again, in plain text format as attachments to the e-mail communication and embedded in the body of two email communications. The Center also indicated that it had previously sent by fax and by post the attachments to the email communication.
-The Center set May 23, 2000 as the deadline for response by the Respondent after the initial response by the Respondent indicating the Respondent’s inability to read the electronic communications. On this date, the Respondent filed its Response to the Complaint. Hard copies of the response were received by the Center on May 25, 2000.
-The panel concludes that the complaint was properly notified in accordance with Rules, paragraph 2(a).
-On June 14, 2000, the present administrative panel was notified to the parties, and a projected decision date of June 28, 2000 set for the panel to produce its decision. The sole panelist subsequently provided a Statement of Acceptance and Declaration of Impartiality and Independence to the Center. On June 15, the Respondent sent a communication inquiring whether the document contained in the email notification of the panel was a Microsoft Word document, and had contents identical to the body of the email communication sent by the Center. On this date, the Center replied to the Respondent in the affirmative.
-No further submissions were made by either of the parties.
4. Factual Background
The Complainant is a trade association for engineers working in the field of die-casting and operates under the name North American Die Casting Association as well as the acronym NADCA. The association owns two service marks related to the term NADCA, one in the term standing alone (Reg. No. 1,793,121), and one as used with a specified design (Reg. No. 1,793,122). Both marks relate to association services (Class 42), and in particular the promotion of interests of die casting engineers. Copies of the records of the United States Patent and Trademark Office trademark text and image database for Complainant’s registrations related to "NADCA" were provided as evidence in support of the Complainant’s service mark registrations.
The acronym that is the basis of the Federal Registration number 1,793,121 is identical to the domain name being contested save for the identification of the top level domain ".org".
The Respondent is the registrant of the domain name "nadca.org." Respondent operates a web site linked to the nadca.org domain name. The web site provides access to and allows users to purchase copies of documents concerning die casting, provides access to courses offered by the Respondent, and provides other information referring to the Complainant organization (see exhibit E of the complaint). The Respondent has also sent email communications advertising the availability of die casting educational materials and courses, and advertising opportunities on the "Die Casting Bulletin Board". The Respondent has provided an email address in these communications incorporating the contested domain name (i.e., "email@example.com").
5. Parties’ Contentions
The Complainant asserts that:
(i)the Domain Name is identical to a service mark in which the Complainant has rights;
(ii)the Respondent has no rights or legitimate interests in the respect of the domain name; and
(iii)the domain name was registered and is being used in bad faith.
With respect the first point, the Complainant asserts that the Domain Name is identical to the registered service mark "NADCA" with the exception of the incorporation of the top level domain ".org".
With respect to the second point, the Complainant asserts that the Respondent has no rights or legitimate interests in the domain name. It first asserts that the Respondent can have no legitimate trademark or intellectual property interest in a domain name incorporating the term "nadca" as a consequence of the Complainant’s two registered service marks. It then asserts that the Respondent is an individual named Genic Bar-Meir and that this individual has no business identity that utilizes the acronym NADCA. The Complainant further asserts that the name "Network Advance Die Casting Assistance" is a sham name that has never been used by the Respondent in connection with any bona fide business or activity. In relation to this point, the Complainant provides evidence of searches performed in a number of databases and data sources that would record legitimate business activities, state trademarks and trade names. The Complainant finally asserts that the Respondent can have no legitimate interest in the use of the term "nadca" in connection with the die-casting community.
With respect to the third element (bad faith), the Complainant argues that the Respondent’s registration and subsequent use of the domain name "nadca.org" meet the bad faith element set forth in Section 4(b)(iv) of the UDRP. First, the Complainant alleges that Respondent was well aware of the Complainant’s rights when he registered and began using the nadca.org domain name, noting in particular that the Respondent uses the term "nadca" to refer to the Complainant. The Complainant also cites the fact that the Respondent has been a member of the Complainant’s association for several years. Second, the Complainant asserts that the Respondent has used industry recognition and the fame of the NADCA trademarks in the field of die casting to pass himself off as the Complainant in order to attract traffic and attention to his website and course offerings. The Complainant cites as evidence email solicitations aimed at die casting professionals as evidence of this latter point. The Complainant also points to evidence showing that in relation to courses offered by the Respondent, the Respondent identifies himself exclusively through use of the service marks of the Complainant. In particular, the Complainant refers to an email solicitation for the Respondent’s course offering that (a) notes that other applicants for Respondent’s courses include those from companies that have a representative on Complainant’s Board of Governors, (b) that the email ends with the closing of "Cheers, NADCA" and (c) that there is nothing in the email that would distinguish and identify the Respondent in a way that would lead a reasonable person to appreciate that the message is not from the Complainant.
Further with respect to the third element, the Complainant has cited the misuse of its registered service marks in relation to the misleading and deceptive advertising of the Respondent via the Respondent’s website and email correspondence. The Complainant asserts that recipients of the Complainant’s advertising are likely to believe among other things (1) that the Complainant is offering free advertising on its website when it is not, (2) the Complainant is sending unsolicited e-mail to its members and others to build traffic on its website, when the Complainant’s policy is not to send any unsolicited email, (3) Complainant’s courses are closed when they are not, (4) Complainant sponsors or is otherwise affiliated with the "Die Casting Bulletin Board" on the nadca.org website when it does not and (5) Complainant sponsors or is otherwise affiliated with Respondent’s courses.
In light of these points, the Complainant asserts that the registration and use of the Domain Name "nadca.org" by the Respondent was done intentionally to attract Internet users to Respondent’s site by creating a likelihood of confusion as to source, sponsorship and affiliation of his website with the Respondent through use of the Respondent’s registered service mark within Complainant’s domain name. The Complainant asserts that the purpose for such actions by the Respondent were to divert consumers to his website, which promotes commercial activities, and to tarnish NADCA’s name and reputation. IN respect of the latter point, the Complainant notes that while the Respondent has the right to criticize the Complainant, he does not have the right to do so by trading on Complainant’s name and reputation to gain a forum for his views (citing Jews for Jesus v. Brodsky, 159 F.3d 1351 (3rd Cir. 1998) and Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430 (S.D.N.Y. 1997)).
The Respondent challenges the assertions of the Complainant, and raises numerous points regarding the relationship between him and certain officers of the Complainant association.
The Respondent first asserts that the Complainant’s actions in initiating that proceeding is one of many steps taken by the Complainant to intimidate the Respondent. The Respondent claims that the steps taken by the Complainant are in retaliation for the Respondent being a "whistle blower" and to conceal "the truth" about the Complainant’s teachings and practices.
The Respondent next asserts that the Complainant has no rights in the name NADCA. The Respondent appears to base this assertion on five points. First, the Complainant argues that other entities exist use the acronym NADCA (e.g., the National Air Duct Cleaner Association). The Respondent provides evidence of at least seven active websites that use the nadca acronym within the domain name of the website. In respect of this list, it should be noted that only three names incorporate the nadca acronym as a segregated term within the domain name (e.g., www.nadca.com.au) while the remaining domains seem to incorporate the letters nadca within larger words in the domain name (e.g., sunadca.com). Second, the Respondent argues that because other organizations and associations utilize an acronym that is identical to the Complainant’s registered service marks. In light of this and the Respondent’s assertion that the North American Die Casting Association is not famous, the Respondent concludes that the Complainant has no legitimate interest in the global domain name "nadca.org." Third, the Respondent argues that the "first come first served" principle should be applied. Fourth, the Respondent asserts that the Complainant never contested the "nadca.com" domain name that has been registered to the National Air Duct Cleaner Association, and as a result, the Complainant "waived" their right in the term "nadca" in the context of the web. Fifth, the Complainant has not attached any fame or secondary meaning to "nadca" because the website of the Complainant uses the domain name "diecasting.org" rather than a domain name incorporating the acronym "nadca."
The Respondent then challenges the Complainant’s assertion of confusion associated with the Respondent’s use of the Domain Name. The Respondent asserts that there is no possibility of confusion when an Internet visits the websites of the Complainant and the Respondent. The Respondent provides a copy of the home page of his website which incorporates a number of textual indications that the website is not run by the NADCA. The Respondent also refers to negotiations with the Complainant that resulted in changes to the content of the Respondent’s website to incorporate such indications. The Respondent also asserts that because other entities have used the "nadca" acronym in their domain names, and that those entities are not in the field of die casting, that there can be no confusion associated with a domain name that incorporates the acronym "nadca."
The Respondent then addresses the issue of his legitimate interests in the Domain Name. He asserts that he satisfies each of the criteria in the ICANN rules for demonstrating a legitimate interest in the Domain Name. First, he asserts that he offers a free book and free classes in a bona fide manner. Second, he asserts that his website is well known throughout the die casting community as nadca.org or nadca. Third, he provided a legitimate non-commercial and fair use of the domain name without any intention for commercial gain. To support these assertions, he refers to the active distribution of his book on die casting issues in electronic and physical form through the website. He also asserts that he is a "real" non-profit operation, and that the actual conflict with the Complainant is in relation to the validity of teaching and science and the saving of the die casting industry.
The Respondent then turns to the issue of "bad faith." The Respondent first asserts that his registration and use of the Domain Name was not done in bad faith because he has not and will not attempt to sell or rent the domain name. The Respondent then asserts that there can be no possibility of confusion of him or his website with the North American Die Casting Association. For example, he cites the email address firstname.lastname@example.org as a "well known name" that would be recognized by anyone on the mailing list to be the Respondent. The Respondent also notes that because of his prior emails criticizing the North American Die Casting Association and its President, the recipients of his emails would not have any possibility of believing that the emails originated from or were associated with the North American Die Casting Association. The Respondent then asserts that the Domain Name in this case is similar to the situation in a case involving the domain name "noamazon.com." In this respect, the Respondent appears to be alleging that the use of the Domain Name "nadca.org" is done to legitimately criticize the North American Die Casting Association and not to disrupt the operations of the association.
The Respondent then challenges certain points raised by the Complainant in its Complaint. The Respondent charges the Complainant with mischaracterizing the facts associated with the Respondent’s book. It asserts, for example, that Complainant mischaracterizes the nature of access to the book through a second website (i.e., www.dieperfect.com) linked to the Respondent’s web site. Apparently, the book is the same, and the argument of the Respondent is that the Complainant knew that it was the same book. The Respondent also challenges the relevance of the cases cited by the Complainant. The Respondent also attacks the Complainant for asserting that the book can be purchased when it "in fact" is available for free, whether by download or physical delivery.
Finally, the Respondent asserts that the present action in reality is an attempt at reverse hijacking of a domain name (i.e., under rule 15(e), a use of the policy in bad faith to attempt to deprive a registered domain-name holder of a domain name). The Respondent cites a number of points to support this assertion. First, the Respondent asserts that the Complainant has harassed him and that the present action is another attempt at doing so. Second, to discount the trademark assertion of rights, he notes that the Complainant never sent a cease and desist letter in relation to use of the registered service mark "NADCA". Third, the Respondent asserts that the Complainant has never had or sought rights in a domain name with the acronym "nadca" within the name, citing the existence of domain names in the .org, .com and .net top level domains. Fourth, the Respondent asserts that the Complainant never considered obtaining a domain name registration based on the nadca acronym until they began their present "legal maneuvering."
6.Discussion and Findings
To prevail on the merits of this proceeding, the Complainant must establish, with respect to the Domain Name in question, that:
(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 and registrant of the Domain Name 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.
Each of these elements will be taken up in sequence.A.The Domain Name is Identical to the Registered Service Mark of the Complainant
The Domain Name "nadca.org" is identical to the registered service mark of the Complainant except for the inclusion of the top level domain ".org." This conclusion is obvious on its face.B.The Respondent has no rights or legitimate interests in the Domain Name
The Complainant has asserted that the Respondent has no rights and no legitimate interests in the Domain Name "nadca.org." The panel finds the arguments presented by the Complainant persuasive, notwithstanding the numerous assertions of the Respondent to the contrary.
The three principle arguments that Respondent raises to contest the assertions of the Complainant in respect of legitimate interests in the Domain Name can be summarized as follows:
-the Respondent has been operating a web site, through which he has provided goods and services in a bona fide manner;
-the web site operated by the Respondent and linked to the Domain Name "nadca.org" is well known in the die casting industry community; and
-the web site is being run by the Respondent as a non-commercial enterprise, for which there is no intent for commercial gain.
In addition to these specifically articulated arguments, the Respondent makes numerous assertions throughout his response that seem to address the issue of entitlement of the Respondent to the Domain Name 1. These additional assertions do not alter the conclusions of the panel in relation to the three main assertions of the Respondent.
The first and second assertions of the Respondent ultimately are linked to the question of entitlement to use the acronym "nadca" in relation to marketing or other activities aimed at the die casting industry or die casting professionals. To address both assertions, one must evaluate the trademark rights of the Complainant in the mark "nadca".
The Complainant has set forth a clear factual basis for its assertion that it enjoys strong trademark rights in the term "nadca" as that term is used in among die-casting professionals and within the die-casting industry. The Complainant is an association that represents the interests of die-casting professionals, and carries on an extensive range of educational and other activities relating to the die-casting industry. The Complainant’s assertion of its trademark interest in the term "nadca" has not been directly challenged by the Respondent.
The Respondent has instead asserted that a number of other entities aside from the Complainant have a legitimate interest in use of the acronym "nadca" and, presumably as a consequence of this fact, such entities are entitled to use this term as part of their domain name. The Respondent cites other organizations that use domain names that incorporate the "nadca" acronym. None of these organizations uses the acronym "nadca" in relation to the die-casting industry. Whether any of these organizations enjoy trademark rights in the term "nadca" as it pertains to their field of activities is unclear. Moreover, the question of whether other organizations may have an independent legitimate interest in a domain name that incorporates the "nadca" acronym is irrelevant to the question of whether the Respondent has a legitimate interest in the domain name "nadca.org."
The Respondent has also asserted that he independently has established a right to use the acronym as a consequence of the name of his enterprise, namely, "Network Advance Die Casting Assistance." The Complainant has asserted that the selection of this name is a sham designed to create an excuse to use the acronym "nadca". The Complainant notes that there is no listing in Minneapolis or the surrounding region for an entity with this name, that there is no Minnesota corporation that uses this name, and that there is no trademark registration at the State or Federal level for an organization having this name. The panel also notes that evidence supplied by the Complainant shows that the registration of the domain name "nadca.org" was made in the personal name of the Respondent, and includes no information regarding an entity labeled "Network Advance Die Casting Assistance." The panel further notes that in a number of instances (e.g., email solicitations cited by the Complainant) that there is no effort by the Respondent to use this name in conjunction with the acronym "nadca" (i.e., only the acronym was used to identify the source of the email). The panel thus concludes that the name "Network Advance Die Casting Assistance" has no bearing on the question of whether the Respondent has a legitimate interest in the Domain Name that incorporates the acronym "nadca".
The Respondent further asserts that he has developed an identity within the die-casting community through operation of his web site, and that this shows another legitimate grounds of entitlement to the Domain Name. The Respondent cites as evidence the fact that a book authored by him that is accessible through his website has been downloaded over 5000 times, while only two "hard copies" of that book have been delivered. The Respondent also cites as evidence of his legitimate interest the fact that third parties have made links to his web site.
The panel finds unpersuasive the assertions of a legitimate interest in the domain name that are based on the Respondent’s use of the domain name or on the volume of traffic to or activity on the Respondent’s web site. The Respondent cannot support a claim of legitimate interest simply by showing that he used the domain name to generate a discernable volume of traffic to or activity on his web site, particularly when this is done in a manner that incorporates a previously registered trademark and targets the community that is most likely to associate the trademark with the Complainant. If a party could establish a legitimate interest in a domain name by doing so, it would render meaningless the concept of bad faith articulated in section (4)(b)(iv) of the UDRP.
In this respect, the panel notes that the evidence shows that the Respondent has operated his web site and used the Domain Name to specifically attract individuals from the die-casting community. The materials on the Respondent’s web site and the email-based marketing efforts of the Respondent using the domain name also are tailored to this audience. The Respondent makes references in his web site and in the marketing email sent by him to the Complainant’s organization, which suggests that there is a clear intention to focus on the same community that would associate the acronym "nadca" with the Complainant. All of these activities directly or indirectly use the fame of the Complainant’s registered trademark within the die casting community to generate traffic for the Respondent’s web site. From this evidence, the panel can ascertain no independent claim in favor of the Respondent to use of the acronym "nadca" or to a Domain Name that incorporates that acronym. Moreover, all of the actions described in the Complain took place several years after the Complainant registered the mark "nadca" in relation to provision of services in the die casting community. Thus, there is no evidence to suggest that the Respondent has an earlier claim to use of the term "nadca" in relation to services offered to the die casting community.
The third reason offered up by the Respondent for establishing a legitimate interest in the domain name is that he is a non-profit operation and is not designed to deliver a commercial benefit to him. The tax status or motivation of an entity in registering and operating a web site linked to a domain name is not relevant to the determination of the question of whether a party has a legitimate interest in the domain name.
In view of these points, the panel finds that the Respondent has no legitimate interest in the Domain Name "nadca.org."C.The Domain Name has been registered and is being used in bad faith by the
Complainant asserts that there is evidence of bad faith as defined in paragraph (4)(b)(iv) of the UDRP, namely, that the Respondent, in using the Domain Name, has intentionally attempted to attract for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as tot he source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on his web site or location.
The evidence provided by the Complainant supports its assertion that the standard in paragraph (4))(b)(iv) of the UDRP has been satisfied. In this regard, the panel notes that the Complainant has shown that the Respondent has targeted the same community of individuals that would associate the acronym "nadca" with the Complainant (i.e., professionals in the die-casting community). Moreover, the Complainant has shown that the Respondent has used the Domain Name to market a book, courses and free advertising services to this same community of individuals and in doing so has used the fame of the Complainant’s mark within the die-casting community to attract visitors to his web site for this purpose. The fact that the Respondent makes his book available for free via his web site does not in any way render that act "non-commercial" within the meaning of paragraph (4))(b)(iv) of the UDRP.
The Respondent attempts to rebut the assertions of the Complainant in sections 4 and 6 of his response. Many of the points raised in paragraph 6 of the response address grounds not at issue in the present proceeding (i.e., grounds noted in paragraphs (I), (ii) and (iii) of paragraph (4)(b) of the UDRP). In respect to the assertion of the Complainant that the Domain Name has been used in a manner likely to result in confusion, the Respondent asserts that there is no possibility for confusion due to the small size of the die casting community, their familiarity with both the Complainant and the Respondent and the manner in which the two entities are described in the materials on the Respondent’s web site.
The panel finds these arguments unpersuasive. The identity of the mark with the Domain Name, and the evidence of how the Respondent has used the Domain Name clearly fit within the definition of "bad faith" defined by paragraph (4))(b)(iv) of the UDRP. Moreover, the Respondent has marketed its web site and its course offerings in a manner that is very likely to lead to confusion in the average member of the die casting community. The email advertisements sent by the Respondent do not carry any of the information contained on the Respondent’s web site. The nature of these communication also reveals no independent identity of the Respondent from the Complainant from the form of the communication (e.g., it is "signed" simply "NADCA"). The suggestion that a person in the die casting community would be able to discern that the communication did not originate from NADCA from an inspection of the identity of the sender of the email is not persuasive.
Thus, the panel finds that the Complainant has met its burden of establishing that the registration and use of the Domain Name by the Respondent has been in bad faith as that term is defined in the UDRP.D.Reverse Domain Name Hijacking
The Respondent has asserted that the present action by the Complainant amounts to an attempt to hijack the Domain Name registration. To support such a claim, the Respondent must demonstrate that the present proceeding was commenced in bad faith (e.g., in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder).
The Complainant has adequately presented a case that meets the standard for relief under this proceeding. Accordingly, the Respondent’s assertion that the present proceeding amounts to an attempted reverse domain name hijacking is not persuasive to the panel.
Pursuant to the authority of Article 4(i) of the UDRP, the Panel requires that the registration of the Domain Name ("nadca.org") be transferred to the Complainant.
Jeffrey P. Kushan
Dated: July 6, 2000
1. See, e.g., page 3 of Response, where the Respondent asserts that the "first come first served" principle suggests that he is more entitled to the domain name registration than the Complainant.