WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Judith Martin v. John Doe (alias "Miss Manners")

Case No. D2000-1583

 

1. The Parties

The Complainant is Judith Martin ("Complainant"), an individual with a business address c/o DH Literary, Inc., P.O. Box 990, Nyack, NY, 10960, USA.

The Respondent in this proceeding is John Doe (alias "Miss Manners") ("Respondent"). "Miss Manners" is listed as the registrant of the domain name in issue with a mailing address of P.O. Box 9572, Abilene, Texas, 79607-0571, USA. The Administrative/Technical/Billing Contact for the domain name registration is listed as "Website Administrator" with the same postal address as the registrant and an e-mail address of MissManners@POBOXES.COM.

 

2. The Domain Name and Registrar

The domain name in issue is <missmanners.com>.

The registrar of the domain name in issue is Network Solutions, Inc. ("NSI") located at 505 Huntmar Park Drive, Herndon, Virginia, USA.

 

3. Procedural History

On November 16, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <missmanners.com> and paid the required filing fee for appointing a single member Panel. On November 22, 2000, the Center sent an "Acknowledgement of Receipt of Complaint" by e-mail to the Complainant and a copy of the Acknowledgement by e-mail to the Respondent.

On November 24, 2000, a "Request for Verification" concerning the domain name was sent to NSI. On November 30, 2000, NSI provided a Verification Response to the Center stating, in pertinent part, that: (i) it had received the Complaint from the Complainant as required by the Policy; (ii) it is the registrar of the domain name <missmanners.com>; (iii) "Miss Manners" is the current registrant of the domain name registration with a listed mailing address of P.O. Box 9572, Abilene, TX 79607-0571, USA; (iv) "Website Administrator" is the Administrative/Technical/Billing Contact for the domain name registration having the same postal address as the registrant and a listed e-mail address of MissManners@POBOXES.COM; (v) NSI's 5.0 Service Agreement is in effect; and (vi) the domain name is currently in "active" status.

On December 1, 2000, the Center found the Complaint to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPOís Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").

On December 1, 2000, the Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the e-mail address, postmaster@missmanners.com, and to the postal address, e-mail address and facsimile number listed in the domain name registration. Copies of the Notification and Complaint were also sent to NSI and the Complainant. When the Notification and Complaint were sent to the Respondentís listed postal address, the delivery was unsuccessful and was returned to the Center. The facsimile and e-mail transmissions to the listed facsimile number and e-mail address, postmaster@missmanners.com, respectively, could also not be completed or delivered. The Center, however, did not receive a notice of non-delivery when the Notification and Complaint were sent to the e-mail address listed in the registration.

On December 22, 2000, after the twenty day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.

On January 15, 2001, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. On January 17, 2001, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and on January 19, 2001, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.

Based upon a review of the record for this proceeding, the Panelist concurs with the Center's finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. Further, the Panelist finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a Response. The Panelist shall accordingly draw such inferences from the Respondent's default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.

 

4. Factual Background

The Complaint is based on the mark MISS MANNERS registered with the U.S. Patent and Trademark Office. In support of the Complaint, the Complainant relies on the following U.S. trademark and service mark registrations:

MISS MANNERS, Reg. No. 1,176,134 (first use 1/2/78; first use in commerce 1/2/78; issued 11/3/81) for syndicated newspaper column dealing with etiquette

MISS MANNERS, Reg. No. 2,121,259 (first use 1/1/94; first use in commerce 1/1/94; issued 12/16/97) for computer services, namely, providing an on-line syndicated newspaper feature on the subject of etiquette

Copies of the certified copies of these registrations were attached as Annexes 4 and 5 to the Complaint showing the Complainantís ownership of these registrations.

A search result from a query of NSIís Whois database shows that the domain name <missmanners.com> was registered on June 12, 1998 to the Respondent and that there is no corresponding Web site accessible at this domain name.

 

5. Partiesí Contentions

Complainant

The Complainant asserts that she is the owner of two trade/service mark registrations for the mark MISS MANNERS and has used the trademark MISS MANNERS for a syndicated newspaper column dealing with etiquette and has used the service mark MISS MANNERS for computer services, namely, providing an on-line syndicated newspaper feature on the subject of etiquette. Copies of the certified copies of these registrations were attached as Annexes 4 and 5.

The Complainant asserts that the MISS MANNERS mark has become well known and enjoys a strong reputation and that since 1978, the MISS MANNERS newspaper column has been published throughout the United States, appearing three times weekly in more than two hundred newspapers as well as in many of the online editions of these publications. The Complainant asserts that she has authored eleven books with major publishers using the mark MISS MANNERS with at least three of the books becoming bestsellers. The Complainant further asserts that since as early as 1978, she has made one hundred or more appearances per year on radio and television, including appearances on Good Morning America, Oprah, Late Night with Conan 0ĎBrien and The Tonight Show, and in magazines using the name MISS MANNERS. The Complainant asserts that for the past four years, she has been a regular contributor to Microsoft Networkís Underwire online magazine and has been a monthly columnist for Time Inc.ís ECompany Now! Magazine and its online edition. The Complainant asserts from 1989 through mid-1993, she was heard under the name MISS MANNERS on a regular basis on National Public Radio, appeared from 1982 through 1983 as MISS MANNERS as a regular feature on the Today Show and has appeared as MISS MANNERS in a series of nationally syndicated ninety-second television segments that aired on more than one hundred stations throughout the United States.

The Complainant asserts that the domain name <missmanners.com> is identical and confusingly similar to the Complainantís trade/service marks because MISS MANNERS is the primary, and indeed only, component of each of these marks and the domain name.

The Complainant asserts that there is no evidence to indicate that the Respondent: (i) has, at any time, used or made demonstrable preparations to use, the domain name or any name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) has been known, commonly or otherwise, by the domain name or any name corresponding to the domain name; (iii) has acquired any legitimate rights whatsoever (including trade/service mark rights) in the domain name or any name corresponding to the domain name; or (iv) has made any legitimate noncommercial or fair use of the domain name.

The Complainant asserts that the Respondent entered a false address and telephone number in the domain register and that the address listed in NSIís database is that of Curtis Davis, owner of Henry Service, Inc., located on Dyess Airforce Base and that neither he nor his company knows anything about the domain name. In addition, the Complainant asserts that the telephone number that the Respondent entered into the database (915-695-9600) is that of the Marriott Courtyard in Abiline, Texas.

The Complainant asserts that through letters and e-mails from her counsel, she has provided explicit written notice to Respondent that: (a) the Complainant has exclusive rights in the MISS MANNERS trade/service mark; (b) the Respondentís registration and use of the domain name is likely to cause confusion as to source or sponsorship of the mark and to dilute the distinctiveness of such mark; and (c) the Respondentís registration and use of the domain name is in violation of United States federal law (copies of the letters and e-mails were attached as Annex 6). The Complainant asserts that since the Respondent has provided a false address, the letters were received by Curtis Davis, an individual with no knowledge of the above-stated matter. The Complainant further asserts that there was no response to the e-mails to the Respondentís listed e-mail address.

The Complainant asserts the Respondent has, by using the domain name <missmanners.com>, intentionally attempted to attract, for commercial gain, Internet users to the Respondentís web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site and that the evidence submitted strongly indicates that the Respondent registered the domain name primarily for the purpose of using and benefiting from the goodwill associated with the MISS MANNERS trade/service mark.

Respondent

No response was received from the Respondent with respect to this proceeding.

 

6. Discussion and Findings

The Proceeding - Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:

(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").

However, the Panelist can only rule in the complainantís favor after the complainant has proven that the above-listed elements are present.

Element (i) - Domain Name Identical or Confusingly Similar to the Mark

The Complainant has provided sufficient evidence showing that it is the owner of the mark MISS MANNERS. Comparing the domain name in issue with the Complainantís mark MISS MANNERS, the Panelist finds that the domain name is identical to the mark. Accordingly, the Panelist finds that Element (i) has been satisfied.

Element (ii) - Rights or Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holderís rights to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holderís 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder is 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.

No evidence has been presented that the Complainant has ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the mark MISS MANNERS. The Panelist therefore finds that the Respondent, prior to any notice of this dispute, has not used the domain name in connection with any type of bona fide offering of goods or services. Nor has any evidence been presented that the Respondent has been commonly known by the domain name, other than possibly the listing of the registrant of the domain name as "Miss Manners" in the registration. The Panelist does not find that such a listing is persuasive as showing that the Respondent has been "commonly known by the domain name." Further, no evidence has been presented to show that the Respondent is making any legitimate noncommercial or fair use of the domain name. The Panelist thus concludes that the Respondent has no rights or legitimate interests in the domain name in issue and that Element (ii) has been satisfied.

Element (iii) - Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online 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 or service on the holderís web site or location.

Though the Complainant asserts that "the Respondent has, by using the domain name <missmanners.com>, intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the web site," no evidence has been submitted to support this contention. The Panelistís review has found that the <missmanners.com> domain name does not resolve to any Web site and the Complainant has not shown or provided any evidence that such a Web site has been accessible at any time. Furthermore, the Complainant has not asserted or provided evidence of any other online location to which the Respondent has intentionally attempted to attract Internet users. Therefore, the Complainant may not rely on Paragraph 4(b)(iv) of the Policy in her attempt to prove bad faith.

The Complainant also asserts that the false contact information provided by the Respondent in the domain name registration is evidence of registration and use of the domain name in issue in bad faith. The failure of the Complainantís and the Centerís numerous and varied attempts to contact the Respondent and the evidence presented of such failed attempts show that the Respondent has indeed provided false contact information in its domain name registration and has made no attempt to correct this information. In addition, providing such inaccurate and unreliable information and failing to update such information in the domain name registration is a breach of the Respondent's registration agreement with NSI. Accordingly, viewing the submitted evidence (Footnote 1) in its entirety, the Panelist therefore finds that the Respondent registered and is using the domain name in issue in bad faith and that element (iii) has been satisfied.

 

7. Decision

The Panelist concludes: (i) that the domain name in issue is identical to the Complainantís mark; (ii) that the Respondent has no rights or legitimate interests in the domain name; and (iii) that the Respondent has registered and is using the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name in issue be transferred to the Complainant.

 


 

Marylee Jenkins
Sole Panelist

Dated: February 5, 2001

 


 

Footnote:

1. It should be noted that while the proceeding was pending, the Panelist found the domain name in issue apparently being offered for sale for $10,000 at <http://www.virtualplots.com/domains/m.html>. Although this evidence may be relevant to this proceeding, since it was not presented or asserted by the Complainant in the Complaint, it will not be considered in determining whether or not the Respondent registered and is using the domain name in bad faith.