Domain name- Domain name dispute resolution policy- Trademark- Bad faith use- Bad faith registration- Legitimate interest- Nickname- Confusingly similar- Federally- registered trademark- Personal use- Generic marks.

Complainant was registrant of two United States trademarks involving "muggles" and a stylized version of the same.  The trademark had been used in connection with the sale of dolls and accessories since the mid-1970's.  Respondent registered the domain name, muggles.org. Respondent contends that he registered the domain name for personal use and to maintain a personal Web Site thereon because he has personally been commonly known by the nickname "muggles" by his family and friends since childhood.

Held, Name Transferred to Complainant.

There can be no doubt that the "muggles" trademark of Complainant is identical to the "muggles.com" domain name.  The Lanham Act provides that Respondent had constructive notice prior to his registration of his domain name utilizing the same name and mark. 

Respondent has submitted no documents, affidavits or other evidence in support of his contention that he has been commonly known by the nickname "muggles".  The only evidence on these points is his Response itself that is certified to by Counsel for Respondent. This Arbitrator finds that a certification signed only by Counsel of record in support of these facts insufficient.  If Respondent demonstrates that he has been commonly known by the domain name, even if he has acquired no trademark or service rights, this Arbitrator, based on evaluation of all the evidence, could find that he has rights to or legitimate interests in the domain name. 

While there is no credible, relevant evidence of record to establish that Respondent has done anything in connection with the domain name other than to register it, this is strong and persuasive evidence of registration and use in bad faith.  Mere registration of name by Respondent prevents Complainant from registering this domain name.  Without any support for Respondent's reasoning for his registration and/or his "use", there is no choice but to find that Respondent's domain name had been registered and is being used in bad faith.

Policies referred to

Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999

Registration Agreements referred to

Network Solutions Service Agreement Version 4.0, effective October 24, 1998

Statutes Referred to

Lanham Act

Tilley, Esq., Panelist: -

1. The Parties
The Complainant is Muggles Magical Toys, Inc., of St. Paul, Minnesota, United States of America.  Complainant contends that it, or its predecessor, has used the "muggles" trademarks in connection with the sale of goods since the mid-1970's.

Respondent is muggles.org, / Mark Garey of Dallas, Texas, United States of America.  Respondent contends that he registered the domain for personal use, that he has personally been known by the nickname "muggles" by his family and friends since childhood.

2. Registrar and Disputed Domain Name 
The domain name at issue is "MUGGLES.ORG", registered with Network Solutions Inc. ("NSI").

3. Factual Background
Complainant has provided evidence of the registration of the following marks:
A. Trademark- "muggles" Dolls and Accessories
B. Trademark- "muggles"- stylized version 

Complainant submitted a complaint to the National Arbitration Forum ("The 
Forum") electronically on 05/10/2000, The Forum received a hard copy of the Complaint on 05/10/2000.  

On 05/17/2000, NSI confirmed by e-mail to The Forum that the domain name "MUGGLES.ORG" is registered with NSI and that Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy ("Policy").  

On 05/15/2000, a Notification of Complaint and Commencement of Administrative Proceeding ("Commencement Notification"), setting a deadline of 06/05/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by e-mail. Respondent requested an extension, setting a deadline of 06/26/2000. 

On June 10, 2000, pursuant to Complainant's request to have the dispute decided by a Single Member Panel, The Forum appointed M. Kelly Tillery, Esquire as Panelist.

4. Parties' Contentions
A. Complainant 
Complainant contends that it, or its predecessor, has used the "muggles" trademarks in connection with the sale of goods since the mid-1970's and has also registered and utilized the "muggles.com" (registered 2/10/2000) domain name by which it operates a Web Site and advertises and sells products.  Complainant contends that Respondent is not presently making use of the domain name "muggles.org" as it does not resolve into a Web Site or other on-line presence. It contends that absence of activity of Respondent demonstrates that Respondent has no legitimate interest in the domain name and that Respondent registered the domain name in bad faith. 
B.  Respondent
Respondent acknowledges that he has not and is not presently making use of this domain name and that it does not resolve into Web Sire or other online presence.  Respondent contends that the registered the domain name for personal use and to maintain a personal Web Site thereon because he has personally been commonly known by the nickname "muggles" by his family and friends since childhood and he has simply not had the time to construct such a site as of the date of the response, June 26, 2000.  Respondent had submitted no documents, affidavits or other evidence in support of his contention that he had been commonly known by the nickname "muggles" or that he intended to maintain a personal Web Site at this domain name and/or that he had simply not had the time to construct such a site in the 18 months since he registered same.  Indeed, the only evidence on these points is his Response itself that is certified to by Counsel for Respondent, Zack Georgopolous, Esquire, signing same as Respondent's "Authorized Representative."  This Arbitrator finds that a certification signed only by Counsel of record in support of these facts is insufficient to establish same.  However, even if Mr. Garey himself had taken an affidavit or certification in support of these facts, this Arbitrator does not believe that would be sufficient to establish that he had rights or legitimate interests in and to this domain name.  More substantial and credible evidence would be required. 

Rule 4(c) sets forth at least three (3) ways by which Respondent might demonstrate his rights to and legitimate interests in the domain name. Only 
Subsection (ii) of Rule 4(c) is possibly applicable here. If Respondent demonstrates that he has been commonly known by the domain name, even if has acquired no trademark or service rights, this Arbitrator, based on evaluation of all the evidence, could find that he has rights to or legitimate interests in the domain name.  Although Respondent has alleged in his Response that he has been commonly known as "muggles" by family and friends, this Arbitrator cannot find, based on this record, that same is true and thus finds that Respondent has no legitimate interests and/or rights in and to that domain name. 
 

5. Discussion and Findings
Complainant has sustained its burden of proof as to the First Element necessary to establish a claim for domain name transfer, that is, Complainant, Muggles 
Magical Toys, Inc., has proven by a preponderance of the credible, relevant, admissible evidence that Respondent's domain name, "muggles.org", is identical or confusingly similar to the valid registered trademark of Complainant - "muggles." Rule 4(a)(i).  Complainant has also sustained its burden of proof as to the Second Element necessary to establish a claim for domain name transfer, that is, Complainant has proven by a preponderance of the credible, relevant, admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name "muggles.org." Rule 4(a)(ii).  Complainant has also sustained its burden of proof as to the Third and last Element necessary to establish a claim for domain name transfer, that is, Complainant has proven by a preponderance of the credible, relevant, admissible evidence that Respondent's domain name has been registered and is being used in bad faith. Rule 4(a)(iii).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that Complainant must prove each of the following three elements to support a claim that a domain name should be cancelled or transferred: the domain name registered by Respondent is idenntical or confusingly similar to a trademark or service mark in which Complainant has rights; Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.

A. Identical and/or Confusingly Similar
Complainant owns two (2) valid Federally registered trademarks: "muggles" and a stylized version of the same. Although Complainant contends that Complainant or its predecessor in interest, President Margaret Lynden, "has used the "muggles" trademarks in connection with the sale of goods since the mid-1970's", the 
United States Patent and Trademark Registrations attached as Exhibits "A" to 
Complainant's Complaint indicate that the first use of the "muggles" mark 
(Registration No. 1,918,898) was June 7, 1993 and the first use of the "muggles" mark (stylized version) (Registration No. 2,296,336) was June 25, 1996. The evidence submitted does not permit this Arbitrator to resolve this apparent discrepancy, but the documentation in evidence from the Registrar, Network Solutions, Inc., indicates that Respondent registered its domain name "muggles.com" on October 24, 1998 over five (5) years after the alleged first use of the "muggles" trademark (Registration No. 1,918,898) and almost three (3) years after the date that it was issued by the U.S. Patent and Trademark Office. 

There can be no doubt that the "muggles" trademark of Complainant (No. 
1,918,898) is identical to the "muggles.com" domain name. The suffix ".com" is, of course, irrelevant for the purposes of this analysis. Thus, whether Respondent had actual notice of the trademark rights and registered trademarks of Complainant, the Lanham Act provides that he had constructive notice thereof at least as of September12, 1995, almost three (3) years prior to his registration of his domain name utilizing the same name and mark. Thus, Complainant is clearly a subsequent user of an identical mark.  Under these circumstances, Complainant has sustained its burden of proof of proving by a preponderance of the credible, relevant, admissible evidence that Respondent's domain name "muggles.org" is identical to a trademark in which Complainant has rights. 

B. Rights or Legitimate Interests
The domain name in question "muggles.org" was registered with Network Solutions, Inc. on October 24, 1998. Respondent acknowledges that he has not and is not presently making use of this domain name and that it does not resolve into Web Site or other online presence. Respondent contends that he registered the domain name for personal use and to maintain a personal Web Site thereon because he has personally been commonly known by the nickname "muggles" by his family and friends since childhood and he has simply not had the time to construct such a site as of the date of the response, June 26, 2000.  Respondent has submitted no documents, affidavits or other evidence in support of his contention that he has been commonly known by the nickname "muggles" or that he intended to maintain a personal Web Site at this domain name and/or that he has simply not had the time to construct such a site in the 18 months since he registered same. Indeed, the only evidence on these points is his Response itself that is certified to by Counsel for Respondent, Zack Georgopolous, Esquire, signing same as Respondent's "Authorized Representative." This Arbitrator finds that a certification signed only by Counsel of record in support of these facts insufficient to establish same. However, even if Mr. Garey himself had taken an affidavit or certification in support of these facts, this Arbitrator does not believe that would be sufficient to establish that he had rights or legitimate interests in and to this domain name. More substantial and credible evidence would be required.

Rule 4(c) sets forth at least three (3) ways by which Respondent might demonstrate his rights to and legitimate interests in the domain name. Only Subsection (ii) of Rule 4(c) is possibly applicable here. If Respondent demonstrates that he has been commonly known by the domain name, even if he has acquired no trademark or service rights, this Arbitrator, based on evaluation of all the evidence, could find that he has rights to or legitimate interests in the domain name. Although Respondent has alleged in his Response that he has been commonly known as "muggles" by family and friends, this Arbitrator cannot find, based on this record, that same is true and thus finds that Respondent has no legitimate interests and/or rights in and to that domain name. 

C. Registration and Use in Bad Faith
There is no credible, relevant, admissible evidence of record to establish that 
Respondent has done anything in connection with the domain name other than register it on October 24, 1998. Respondent's explanation that he "has simply not had the personal time to construct a site as of the date of the response" is insufficient to explain this inactivity. While inactivity in regard to a domain name for a period of 18 months should not per se establish that a Respondent has "no legitimate interest in respect to the domain name" or that "the domain name has been registered and is being used in bad faith," it is strong and persuasive evidence of both. It is well to note that the mere registration of this name by Respondent for the last 18 months and through the present prevents Complainant, the owner of at least two (2) Federally-registered trademarks identical or similar to the domain name, from registering this domain name. Although registration may be viewed as passive, its mere presence constitutes "use" for purposes of Rule 4(a)(iii). Without any support for Respondent's reasoning for his registration and/or his "use", this Arbitrator has no choice but to find that Respondent's domain name has been registered and is being used in bad faith.

6. Decision
The domain name "muggles.org" should be immediately transferred to Complainant. 
M. Kelly Tillery, Esquire, Arbitrator