WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Moe Ginsburg, Inc. v. Medisys

Case No. D2001-0021

 

1. The Parties

The Complainant is Moe Ginsburg, Inc., a New York corporation with a principal place of business at 162 Fifth Avenue, 6th Floor, New York, New York 10010, USA.

The Respondent is Medisys, with an address at 2733 Route 209, Kingston, New York 12401, USA.

 

2. The Domain Name and Registrar

The dispute concerns the domain name: "moeginsburg.com", hereinafter the Disputed Domain Name. The Registrar with which this Disputed Domain Name is registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

 

3. Procedural History

On January 4, 2001, and January 9, 2001, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the Center) received a Complaint electronically and by hard copy for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).

On January 9, 2001, the Center acknowledged receipt of the said Complaint.

On January 10, 2001, the Center sent a Request for Registrar Verification to the Registrar. On January 12, 2001, the Registrar confirmed to the Center that it was the Registrar of the said Domain Name and also that the current registrant of the said Disputed Domain Name was Respondent.

On February 1, 2001, having found that the Amended Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as February 1, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification, failing which the Respondent would be considered to be in default.

The Respondent filed a Response with the Center by February 18, 2001. On February 19, 2001, the Center sent an acknowledgment of Respondent's Response by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On March 6, 2001, the Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the Center sent a Transmission of Case File to the Panel.

The Panel finds that the Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Response, the Policy, the Rules, and the Supplemental Rules.

 

4. Factual Background

This Complaint is based on the following grounds:

A. Complainant's Rights in the MOE GINSBURG Mark.

(1) The Complainant owns the well-known trademark and servicemark MOE GINSBURG, which is the name of the companyís founder, Moe Ginsburg. Complainant has used the famous MOE GINSBURG mark in connection with retail clothing store services as well as with clothing items and accessories. Since at least as early as 1969, Complainant has used the MOE GINSBURG mark and name and through the years the name Moe Ginsburg has become famous.

(2) The Complainant invests substantial sums in promoting and developing the MOE GINSBURG mark and name through television, radio, print media, and the like. Through its widespread, extensive use in connection with the clothing field, the MOE GINSBURG mark and name have become uniquely associated with the Complainant and its products and services.

(3) Moe Ginsburg has thus developed substantial good will in the MOE GINSBURG mark and name in the clothing field through longstanding, extensive use. The Complainant is the owner of the long-held common law trademark MOE GINSBURG in connection with wearing apparel and associated store services.

(4) Complainant has not licensed Respondent to use its trademark and Respondent does not have any relationship with Complainant that would entitle it to use Complainantís mark and name.

B. Factual Background.

(1) Complainant previously owned the "moeginsburg.com" domain name and it inadvertently lapsed due solely to the fact that it was not renewed because of an oversight. In or about April 1999, Complainant became aware that Respondent had registered with NSI the domain name "moeginsburg.com". The Complainant through its Internet consultant left a voicemail message and sent an email to Respondent on May 5, 1999, stating that the "moeginsburg.com" domain name belonged to Complainant.

(2) Complainant received an email from Respondent's representative, Robert Carroll, dated May 5, 1999, in which Mr. Carroll attempted to explain trademark law and his basis for claiming his rights to the Disputed Domain Name.

(3) On April 5th and 6th, 2000, Complainant and Respondent exchanged a number of emails and Respondent maintained its position that Complainant's only option would be to pay a hosting and leasing fee to Respondent. Respondent sought an initial payment of $350.00 plus a $24.95 monthly cost, payable to Respondent.

(4) On May 22, 2000, and July 5, 2000, Complainant, through its attorneys once again wrote to Respondent, reiterating that Respondent's registration and use of the "moeginsburg.com" domain name infringed Complainant's valuable rights in the MOE GINSBURG mark and name. Thus far, Complainant has not heard from Respondent. Furthermore, in or about the first week of December 2000, Complainantís attorney was unable to complete a call to the Respondent using the telephone number identified in the Whois records. After an initial ring or two, there was a click and the call ended. This was repeated in at least two attempts to call the Respondent.

C. Respondent has undertaken a rambling dissertation on how he plucked the Moe Ginsburg name out of the air, such as:

(1) There are many Moes and many Ginsburgs in New York;

(2) Respondent's friend Maureen goes by "Moe";

(3) Respondent likes Moe and the Three Stooges;

(4) The New York Yankees played against a catcher named Myron or Joe Ginsburg that fans called Moe; and

(5) All of these explanations come against the backdrop of Respondent having registered two domain names utilizing The New York Yankees (".net" and ".org") on the grounds that these ". . . domain names show his pride in his home town's baseball team, the New York Yankees."

D. The Disputed Domain Name

(1) In April 2000, Respondent registered the Disputed Domain Name just after Complainant had inadvertently failed to pay its renewal registration fee for that name.

(2) The Disputed Domain Name is identical to the common law trademark of Complainant.

(3) Since Respondent registered the Disputed Domain Name, Respondent has made no legitimate or commercial use of the Disputed Domain Name.

(4) Respondent has never used the Disputed Domain Name in connection with the bona fide offering of any goods or services.

 

5. Partiesí Contentions

A. Complainant

Essentially, the contentions of the Complainant are as follows:

(1) Moe Ginsburg, Inc. has valid, subsisting rights in its trademark, MOE GINSBURG.

(2) Respondent has no rights or legitimate interests to the "moeginsburg.com" domain name.

(3) The Disputed Domain Name was registered and is being used in bad faith.

B. Respondent

(1) Contends the mark MOE GINSBURG is generic and not qualified for protection under trademark law;

2) Contends it simply picked the name Moe Ginsburg at random; and

3) contends it acted in good faith.

 

6. Discussion and Findings

6.1 Elements to be proven

Paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:

(i) the Respondentís Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Respondentís Domain Name has been registered and is being used in bad faith.

The panel in Cortefiel, S.A. v. Miguel Garcia Quintas, WIPO Case No. D2000-0140 notes that under the Policy, even if the respondent is in default,

"Öthe complainant must prove that each of these three elements are present."

6.2 Identical or Confusingly Similar

The Complainant claims and has established first use and ownership of the MOE GINSBURG mark. It has also shown substantial use. Ownership of this mark is clearly in the Complainant. Under the Policy, all that is required of the Complainant is to establish its rights in the mark, and the extent of the geographical area in which the rights accrue does not matter. The Panel has compared the Disputed Domain Name with the Complainantís MOE GINSBURG mark and finds that the second level domain thereof is substantially identical to the Complainantís mark. The Panel finds that there is such similarity in sound, appearance, and connotation between the MOE GINSBURG mark and the said Disputed Domain Name as to render said Disputed Domain Name confusingly similar to Complainantís mark.

6.3 Respondentís Rights or Legitimate Interests in the Disputed Domain Name

Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name by showing:

(i) Its use of, or demonstrable preparations to use, the said Disputed Domain Name or a name corresponding to the said Disputed Domain Name in connection with a bona fide offering of goods or services before any notice to him of the dispute; or

(ii) He (as an individual, business, or other organization) has been commonly known by the said Disputed Domain Name, even if he has acquired no trademark or service mark rights; or

(iii) He is making a legitimate noncommercial or fair use of the said Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence presented by Respondent in demonstrating any of the foregoing factors. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name by Respondent. Neither is there any evidence for any of the other two foregoing requirements. To the extent that arguments have been presented by Respondent, the Panel finds these arguments fail for lack of credibility.

Furthermore, in the absence of any license or permission from Complainant to use its MOE GINSBURG name and mark or to apply for or use any domain name incorporating that mark, it is clear that no actual or contemplated bona fide or legitimate use of the contested domain name could be claimed by Respondent. Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055.

6.4 Registration and Use in Bad Faith

As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No.D1999-0001 in order for the Complainant to succeed:

"... the name must not only be registered in bad faith, but it must also be used in bad faith."

The Complainant must prove that the Respondent registered and also used the said Disputed Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.

Complainant has averred and the Panel finds that the Disputed Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration back to Complainant for valuable consideration in excess of the domain name registrantís out-of-pocket costs directly related to the Disputed Domain Name.

Before any notice to the Respondent of this dispute, there has been absolutely no evidence of the Respondentís use of, or demonstrable preparations to use, the Disputed Domain Name or name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Such inaction, in view of the facts and circumstances of this case, further constitutes evidence of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003.

Respondent clearly knew or should have known of Moe Ginsburg's prior adoption, usage, and rights in the MOE GINSBURG mark. Since Moe Ginsburg is a well-known name, it cannot credibly be argued that Respondent arrived at this name and mark independently.

In paragraph 7 of the said decision, the Administrative Panel stated that the question of whether a domain name is being used in bad faith "can only be answered in terms of the particular facts of a specified case", and that "it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith". Accord Mondich v. Brown, WIPO Case No. D2000-0004 ("possible to infer from this failure of use that the domain name was registered without a bona fide intent to make good faith use"). That decision should be applied here. In that case, as here, the Complainantís trademark had a strong reputation and was widely known and there was no evidence of any actual or contemplated good faith use of the domain name by the Respondent.

The purpose of registration of a domain name may be discerned from subsequent use made of it. Respondentís failure to make commercial use of the Disputed Domain Name in connection with an active website in dispute and offer to lease the Disputed Domain Name back to the Complainant, coupled with Respondentís lack of any legitimate rights or claim of any kind in the MOE GINSBURG mark, compels the conclusion that Respondent registered and has used the Disputed Domain Name in bad faith.

Based on the alleged facts, which have not been controverted, the Panel finds that the Respondent has engaged in the practices defined in Paragraph 4(b)(i) and 4(b)(ii) of the Policy as evidencing the registration and use of the said Disputed Domain Name in bad faith.

 

7. Decision

For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Name, namely, "moeginsburg.com", be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.

 


 

Terrell C. Birch
Sole Panelist

Dated: March 27, 2001