SADD, Inc. v. Steven Weber, et al.
[Indexed as: SADD v. Weber]
[Indexed as: sadd.com]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0170
Commenced: March 24, 2000
Judgment: April 27, 2000
Presiding Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - Non-profit
corporation - U.S. Trademark - Substantial value - Goodwill - Identical
- Confusingly similar - Rights - Legitimate interest - Bad Faith registration
- Bad faith use - Prior Notice of dispute - Constructive Notice - Non-profit
corporation - Surnames - Proper names.
Complainant is non-profit corporation with six United States trademark
registrations in relation to educational services, educational goods such
as pamphlets, and paraphernalia such as key rings and novelty pins for
the word, SADD. Respondent registered the domain name sadd.com.
Upon receiving a cease and desist letter from Complainant, Respondent argued
that Sadd is a surname and he was developing a business offering genealogy
and other related services of benefit to individuals through use of domain
name containing their last name.
Prior to notice of dispute, Respondent did not make use of domain
name. Respondent regularly offered domain names containing famous
names or marks for sale and has regularly been a defendant in actions involving
domain names.
Complainant alleged that domain name is identical with and confusingly
similar to trademark, that Respondent had no rights or legitimate interest
in domain name, and that Respondent registered and is using domain name
in bad faith. Respondent did not contest that domain name is identical
with or confusingly similar to trademark. Respondent contended that
he does have rights or legitimate interest in domain name and that domain
name was registered and used in good faith.
Held, Name Transferred to Complainant
Since Respondent did not contest it, domain name was found to be
identical with and confusingly similar to trademark.
The Respondent has no rights or legitimate interest in the domain
name. The evidence demonstrates that Respondent has not used the
domain name or the website for its own purposes prior to the dispute arising
with Complainant. Respondent has not shown any demonstrable evidence
of an intent to use the domain name for its own purposes prior to the dispute
arising with Complainant.
Speculation in domain names can be a demonstration of bad faith.
This occurs when (1) the respondent has no demonstrable plan to use the
domain name for a bona fide purpose prior to registration or acquisition
of the domain name; (2) the respondent had constructive or actual notice
of another's rights in a trademark corresponding to the domain name prior
to registration or acquisition of the domain name; (3) the respondent engages
in a patter of conduct involving speculative registration of domain names;
and (4) the domain name registration pr4events the trademark holder from
having a domain name that corresponds to its registered mark.
Respondent's speculation was in bad faith. Respondent has no
demonstrable plan to use the domain name. The domain name was registered
after the registration of the trademark, thereby giving Respondent constructive
notice of Complainant's rights. Respondent has also engaged in a
pattern of conduct involving speculation and has offered such domain names
for sale.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Registration Agreements referred to
Cases referred to
Avery Dennison Corp. v. Sumption, 189 F.3d 868 (9th Cir. 1999)
Jaguar Cars Ltd. Et al. v. Steven Weber, Civil Action No. 98-70623
(US Dist. Ct.)
Franklin Mint Company v. Steven Weber, Civil Action No. 98-CV-3011
The Claridge At Park Plaza, Inc. v. Steven Weber, Civil Action No.
98-CV-3757
Panel Decisions referred to
J. Crew International, Inc. v. crew.com, ICANN D2000-0054
Page, Panelist: -
1. The Parties
Complainant is Sadd, Inc, a non-profit corporation duly authorized
and existing under the laws of the Commonwealth of Massachusetts, having
its principal place of business at 255 Main Street, Marlboro, Massachusetts
USA.
Respondent is Steven Weber d/b/a Weber Technologies and Domainsale,
P.O. Box 132, Harleysville, Pennsylvania 19438 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <sadd.com>. The registrar is Network
Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia
20170-5139 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Complainant on March 16, 2000 via email and on March 20, 2000
in hardcopy. The Complainant paid the required fee.
On March 21, 2000, the Center sent to the Registrar a request for verification
of registration data, and the Registrar confirmed, inter alia, that it
is the registrar of the domain name in dispute and that <sadd.com> is
registered in the Respondent's name. Also on March 21, 2000, the Center
sent an Acknowledgment of Receipt of Complaint to Complainant.
On March 23, 2000, the Center verified that the Complaint satisfies
the formal 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").
On March 24, 2000, the Center sent a Notification of Complaint and Commencement
of Administrative Proceeding to the Respondent together with copies of
the Complaint, with a copy to the Complainant. This notification was sent
by the methods required under paragraph 2(a) of the Rules.
On March 24 and April 4, 8 and 10, 2000, the Center exchanged email
with Respondent regarding the applicable procedures.
On April 10, 2000, the Center received the Response via email. On April
13, 2000, the Center received the Response in hardcopy. The Center sent
Acknowledgments of Receipt of the Response on both dates.
After the Center received a completed and signed Statement of Acceptance
and Declaration of Impartiality and Independence from Richard W. Page,
Esq. (the "Presiding Panelist"), the Center notified the parties of the
appointment of a single-arbitrator panel consisting of the Presiding Panelist.
4. Factual Background
Established in 1982, Sadd, Inc. ("SADD") is a non-profit corporation
which has for over 19 years dedicated itself to addressing the issues of
underage drinking, impaired driving, drug use and other destructive decisions
and killers of young people. SADD has numerous chapters across the United
States and abroad and thousands of members worldwide.
SADD's mission is to provide students with the best prevention and
intervention tools possible to deal with the serious issues young adults
are facing today. SADD promotes a no-use message of alcohol and other drugs
and encourages students not to participate in activities with destructive
consequences.
SADD is the owner of six United States trademark registrations for marks
which comprise or include the SADD mark, all of which are legally and validly
registered on the Principal Register of the United States Patent and Trademark
Office (the "SADD Marks"). The following chart lists SADD's federal trademark
registrations for the SADD Marks:
Mark Reg. No. Reg. Date Goods/Services
1. SADD 1,299,948 10/9/84 Educational Services - namely
organizing and conducting seminars concerning the dangers of drunk driving;
providing curriculum guidance in the teaching and instruction of anti-drunk
driving programs and seminars; organizing student chapters of students
against driving drunk.
2. SADD 1,550,726 8/8/89 Key rings; documentary and
educational cinematographic film, pre-recorded audio and video cassettes;
printed matter, publications and educational materials, namely books, pamphlets,
newsletters, brochures and curriculum guides and catalogs dealing with
current issues surrounding alcohol, drugs and attitudes, banners of paper
decals, window decals, bumper stickers and pens; bags namely book bags
and tote bags; clothing namely t-shirts and nightshirts; novelty pins and
buttons, ornamental lapel pins and badges.
3. SADD STUDENTS AGAINST DESTRUCTIVE DECISIONS 2,258,888
7/6/99 Stickers/decals, brochures, newsletters and printed forms
all dealing with teenage health and safety issues; tote bags; plastic key
rings; t-shirts, shirts, sweat tops, hats, caps; ornamental novelty pins;
flying disks; educational services - namely, organizing and conducting
seminars concerning issues related to teenage health and safety; providing
curriculum guidance in the teaching and instruction of programs and seminars
dealing with issues relating to teenage health and safety.
4. SADD STUDENTS AGAINST DRUNK DRIVING 1,299,947 10/9/84
Educational services - namely, organizing and conducting seminars concerning
the dangers of drunk driving; providing curriculum guidance in the teaching
and instruction of anti-drunk driving programs and seminars; organizing
student chapters of students against driving drunk.
5. SADD STUDENTS AGAINST DRUNK DRIVING 1,301,051 10/16/84
Indicating Membership in student organizations involved in campaign against
drunk driving.
6. SADD STUDENTS AGAINST DRUNK DRIVING 1,551,597 8/15/89
Key rings; documentary and educational cinematographic film, pre-recorded
audio and video cassettes; printed matter, publications and educational
materials, namely books, pamphlets, newsletters, brochures and curriculum
guides and catalogs dealing with current issues surrounding alcohol, drugs
and attitudes, banners of paper decals, window decals, bumper stickers
and pens; bags namely book bags and tote bags; clothing namely t-shirts
and nightshirts; novelty pins and buttons, ornamental lapel pins and badges.
Since at least as early as 1981, SADD has substantially, continuously
and exclusively used, in connection with its business, the trademark SADD
alone and as a component of composite marks incorporating the term "SADD."
As a result of substantial, continuous and exclusive use of the trademark
SADD alone, and composite marks incorporating the term "SADD," since at
least as early as 1981, SADD has built up substantial value and goodwill
in the SADD Marks. Such goodwill extends throughout the United States and
abroad. Based on Complainant's long and continuous use of the SADD Marks,
SADD is associated exclusively with Complainant and the SADD mark is famous
as defined in 15 U.S.C. § 1125(e).
On or about March 2, 1999, without the consent of Complainant, Respondent
registered the domain name <sadd.com> with the Registrar and began using
the domain name <sadd.com> to point to a website on the Internet. At
that time the website comprised a front page with the heading "WebComâ
-- This Site Is Under Construction." After learning of Respondent's registration
of the <sadd.com> domain name, Complainant sent a cease and desist letter
to Registrant notifying Registrant of its rights in the SADD Marks. As
of February 16, 2000, the site <sadd.com> still contained a notice that
the site was under construction.
On February 17, 2000, counsel for Respondent, Anthony J. DeGidio, Esq.,
responded to the notice of infringement. In such response, counsel for
Respondent states that:
SADD is a surname. My client is developing a business that will provide
email services, web hosting, genealogy, and other related services of benefit
to individuals through the use of domain names containing their last name.
In this respect, all of the Sadd's [sic] of the world will have access
to and use of the sadd.com domain name, as they should.
Later in the same correspondence, Mr. DeGidio argues that the case of
Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) contains
the "precise analysis that would be employed in determining whether or
not SADD is famous or distinctive under the statute."
A printout of the first fifty domain names registered by Respondent
discloses no domain names that might be characterized as "surnames." After
Respondent's February 17, 2000 correspondence, Respondent changed the <sadd.com>
website so that it now comprises a page entitled "Familogy.com" which allows
a user to "find what you are looking for" by entering a key word in a search
engine and clicking on search. This is not a site established to serve
the "Sadds" of the world. When the term SADD is entered into all five search
engines located on the www.sadd.com website, websites for Complainant's
SADD regional chapters or other of Complainant's sponsored organizations
appear, giving the false impression that Respondent's website is somehow
affiliated with or endorsed by Complainant.
The domain name <sadd.com> does not comprise the legal name of Respondent
or a name that is otherwise commonly used to identify Respondent. Complainant
has never authorized, licensed or otherwise permitted Respondent or anyone
else to use the SADD trademark or the SADD Marks or any variation thereof.
Respondent did not, prior to notice of this dispute, use the <sadd.com>
domain name or a name corresponding to the domain name in connection with
a bona fide offering of goods and services. Respondent regularly offers
domain names containing famous names or marks or minor variations of the
same for sale for approximately $8,500, such as the email response from
Steven Weber to Deborah Benson dated February 10, 2000. Respondent has
regularly been a Defendant in actions involving domain names in the United
States District Courts. For instance, in Jaguar Cars Ltd. et al v. Steven
Weber, Civil Action No. 98-70623, in the United States District Court for
the Eastern District of Michigan, Respondent was sued and enjoined for
the domain names <jaguar.com> and <jag.com>. Suit was also brought
against Respondent in the United States District Court for the Eastern
District of Pennsylvania by the Franklin Mint Company over Respondent's
unauthorized use of the domain name <franklinmint.com>, Franklin Mint
Company v. Steven Weber, Civil Action No. 98-CV-3011. Respondent ultimately
was required to transfer the disputed domain name to the Franklin Mint
Company. Additionally, suit was brought in the Federal District Court in
Pennsylvania by The Claridge At Park Plaza, Inc. arising out of Respondent's
registration of the domain name <claridge.com>. The Claridge At Park
Plaza, Inc. v. Steven Weber, Civil Action No. 98-CV-3757. This action was
settled upon Respondent's transfer of the domain name to Claridge.
5. Parties' Contentions
A. Complainant contends that the domain name <sadd.com> is identical
with and confusingly similar to the SADD trademark and related SADD Marks
pursuant to the Policy paragraph 4(a)(i).
B. Complainant contends that Respondent has no rights or legitimate
interest in the domain name <sadd.com> pursuant to the Policy paragraph
4(a)(ii).
C. Complainant contends that Respondent registered and is using the
domain name <sadd.com> in bad faith in violation of the Policy paragraph
4(a)(iii).
D. Respondent presented no evidence contesting that the domain name
<sadd.com> is identical with or confusingly similar to the trademark
SADD.
E. Respondent contends that he does have rights or legitimate interest
in <sadd.com> domain name.
F. Respondent contends that he has registered and used the <sadd.com>
domain name in good faith.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant is the sole and exclusive owner of the SADD trademark and
the SADD Marks. The domain name <sadd.com> contains the identical phrase
"sadd." Respondent does not contest that the phrase is identical. Therefore,
the Presiding Panelist finds that the domain name <sadd.com> is identical
with and confusingly similar to the trademark SADD and the SADD Marks pursuant
to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
The evidence demonstrates that Respondent has not used the domain name
<sadd.com> or the website www.sadd.com for its own purposes prior to
the dispute arising with Complainant. Respondent has not shown any demonstrable
evidence of an intent to use the domain name <sadd.com> or the website
www.sadd.com for its own purposes prior to the dispute arising with Complainant.
Therefore, the Presiding Panelist finds that Respondent has no rights or
legitimate interest in the domain name <sadd.com> pursuant to the Policy
paragraph 4(a)(ii).
Bad Faith
The Presiding Panelist has found that Respondent has not used or intended
to use the domain name <sadd.com> or the website www.sadd.com for its
own purposes prior to the dispute arising with Complainant. In addition,
Respondent has registered a large number of domain names, suggesting that
Respondent is speculating in domain names.
In the case, J. Crew International, Inc. v. crew.com, ICANN D2000-0054,
a definition was developed to identify when speculation in domain names
is in bad faith. Registration of domain names for speculative purposes
constitutes a bad faith registration when (1) the respondent has no demonstrable
plan to use the domain name for a bona fide purpose prior to registration
or acquisition of the domain name; (2) the respondent had constructive
or actual notice of another's rights in a trademark corresponding to the
domain name prior to registration or acquisition of the domain name; (3)
the respondent engages in a pattern of conduct involving speculative registration
of domain names; and (4) the domain name registration prevents the trademark
holder from having a domain name that corresponds to its registered mark.
The Presiding Panelist has found no demonstrable plan to use. The domain
name <sadd.com> was registered after the registration of the trademark
SADD and the SADD Marks, thereby giving Respondent constructive notice
of Complainant's rights.
Respondent appears to have engaged in a pattern of conduct involving
speculation such as the registration of the following famous names or trademarks
of others:
<mother-teresa.com>
<motherteresa.com>
<mother-teresa.org>
<motherteresa.net>
<jfkjunior.com>
<jfkjr.net>
<bill-gates.com>
<sultanofbrunei.com>
<sultanofbrunei.net>
<dawsoncreek.com>
<princejefri.com>
<toyoda.com>
Respondent has offered domain names for sale. Respondent's registration
of <sadd.com> prevents Complainant from registering the domain name
which corresponds to its trademark SADD.
Therefore, the Presiding Panelist finds that Respondent has registered
and used the domain name <sadd.com> in bad faith pursuant to the Policy
paragraph 4(a)(iii).
7. Decision
The Presiding Panelist concludes (a) that the domain name <sadd.com>
is identical with and confusingly similar to the trademark SADD and the
SADD Marks, (b) that Respondent has no rights or legitimate interest 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 <sadd.com>
be transferred to Complainant SADD, Inc.
Presiding Panelist:
Richard W. Page
Dated: April 27, 2000
Domain Name Transferred
Domain
Name Transferred
|
