WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing

Case No. D2001-0610

 

1. The Parties

Complainant is Women in Military Service for America Memorial Foundation, Inc., a not-for-profit corporation organised under the laws of the District of Columbia, United States of America (U.S.A.), with its principal place of business at 5510 Columbia Pike, Suite 302, Arlington, Virginia 22204, U.S.A.

Respondent is Russian Web Marketing, with an address at Bolshoy Golovin, Moscow 119832, Russia, according to information provided by the Registrar.

 

2. The Domain Name and Registrar

The domain name in dispute is <wimsa.org>. The Registrar is BulkRegister.com.

 

3. Procedural History

a) The Center received Complainant's Complaint by e-mail on April 27, 2001, and by hard copy on April 30, 2001. Payment in the required amount to the Center has been made by Complainant.

b) On April 30, 2001, a request for registrar verification was sent by the Center to the Registrar requesting confirmation that it had received a copy of the Complaint from Complainant, that the domain name was currently registered with it and that the policy was in effect, and requesting full details of the holder of the domain name and advice as to the current status of the domain name. Confirmation was received from the Registrar on April 30, 2001, that it had received a copy of the Complaint on April 30, 2001, that the domain name <wimsa.org> was registered with it, that Respondent was the current registrant and that the Uniform Domain Name Dispute Resolution Policy applied to the domain name. The Registrar also provided contact details for the domain name registrant, and the registrantís technical and administrative contacts.

c) On May 4, 2001, the Center forwarded Notification of Complaint and Commencement of Administrative Proceeding to Respondent, by e-mail sent to the e-mail address provided by the Registrar for Respondentís administrative and technical contacts, and also to the e-mail address "postmaster@wimsa.org".

The Center was advised that the address <postmaster@wimsa.org> had permanent fatal errors.

The Notification of Complaint and Commencement of Administrative Proceeding was also forwarded by FedEx to Russian Web Marketing, at the address provided by the Registrar, namely Bolshoy Golovin, Moscow 119832, Russia (R.U.). The document so forwarded by FedEx was returned by FedEx to the Center for failure to deliver, the name and address for Russian Web Marketing having been crossed out.

The same document, Notification of Complaint and Commencement of Administrative Proceeding, was attempted to be forwarded to Respondent at the facsimile address provided by the Registrar. This transmission failed as it could not be completed.

The Notification of Complaint and Commencement of Administrative Proceeding was also forwarded to Complainant at the e-mail address it had provided.

The Notification of Complaint and Commencement of Administrative Proceeding confirmed the date on which the Complaint had been received by the Center and that the formal requirements had been satisfied and advised that the formal date of the Commencement of Administrative Proceeding was May 4, 2001. The Notification of Complaint and Commencement of Administrative Proceeding further stated that Respondent had twenty calendar days from the date it received this Notification in which to submit a Response, the last day for sending its Response to Complainant and to the Center being May 23, 2001.

Furthermore, the Notification of Complaint and Commencement of Administrative Proceeding provided that, if the Response were not sent by the above date, Respondent would be considered in default, that an Administrative Panel would still be appointed to review the facts in the dispute and to decide the case, and that the Administrative Panel would have discretion to decide whether to consider a late filed Response and to draw such inferences from Respondentís default as it considered appropriate.

d) On May 29, 2001, as no Response from Respondent had been received by the Center, the Center attempted to forward Notification of Respondent Default to Respondent, at the e-mail address provided by the Registrar, and was advised that the message was undeliverable as the user account for said e-mail address provided by the Registrar had been disabled. Notification of Respondent Default was forwarded by the Center by e-mail to Complainant.

e) On June 14, 2001, Notification of Appointment of the Administrative Panel and Projected Decision Date ("the appointment notification") was sent to Complainant by e-mail and was attempted to be sent by e-mail to Respondentís e-mail address provided by the Registrar. The appointment notification informed the parties that the administrative Panel would consist of a single member, Joan Clark, who had signed and forwarded to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. The appointment notification also stated that the expected decision date was June 27, 2001. This date was later extended to July 11, 2001.

 

4. Factual Background and Partiesí Contentions

The Complaint

In its Complaint, Complainant Women in Military Service for America Memorial Foundation, Inc. (WIMSA) states that it was established as a not-for-profit corporation in 1986 after President Ronald Reagan signed legislation authorising a National Memorial to honour the 1.8 million women who have served in Americaís Armed Forces. The Complaint states that the initial purpose of WIMSA was to raise funds for the new Memorial to be erected at the entrance to Arlington National Cemetery in Arlington, Virginia, and that, after over $60 million had been raised from active fundraising, the WIMSA Womenís Memorial was completed and dedicated on October 18, 1997. The Complaint further states that WIMSA continues to raise money to upgrade and maintain the WIMSA Womenís Memorial and to conduct related activities honouring women in the military.

The Complaint states that the WIMSA Womenís Memorial attracts about 200,000 visitors annually and that it includes a bookstore, a theatre, an exhibit gallery that tells the story of womenís military service and a computer register containing photographs, military histories and memorable experiences of numerous women veterans.

The Complaint states that the term WIMSA is derived from Women in Military Service for America, and that for close to 15 years, Complainant and its supporters have used the term WIMSA to identify Complainant and its products and services related to the WIMSA Womenís Memorial.

The Complaint states that on November 17, 1997, WIMSA registered the domain name <wimsa.org> and established an Internet web site at that Internet address. The Complaint states that the wimsa.org web site quickly became a popular destination for WIMSA supporters. The Complaint states that WIMSA invested a great deal of resources in launching and maintaining its <wimsa.org> web site, including adding the domain name to its letterhead, brochures and advertisements. The Complaint states that Complainant has used and continues to use WIMSA as part of its e-mail address.

The Complaint states that in mid-2000, Complainant decided to emphasise further the importance of the WIMSA Womenís Memorial by adopting and marketing a new domain name: <womensmemorial.org> for its web site. The Complaint states that Complainant chose to let its registration for <wimsa.org>, which was due for renewal on November 18, 2000, lapse so that it might be available for a bona fide use by another legitimate entity.

The Complaint states that on March 15, 2001, Complainant learned that its former domain name, <wimsa.org>, was directing Internet users to a pornographic web site. The Complaint states that Complainant soon began to receive a large volume of complaints and enquiries from those who either had not yet learned of Complainantís new Internet address, <womensmemorial.org> or had been lead to the pornographic web site located at <wimsa.org> by an outdated link on a search engine, such as YAHOO, or a link on a third party web site.

The Complaint states that Respondentís domain name, <wimsa.org>, currently directs Internet users to a web page that simply says "Enter", that when the user clicks on "Enter", the user is taken to a site which features the phrase "Welcome" at the top of the page and pornographic pictures with three separate "Enter" links. The Complaint states that when the user clicks on these three links, the user is taken to (1) a site featuring the phrase "Best of XXX" and links to other pornography web sites, (2) a site which features pornographic material allegedly featuring celebrities and (3) a web site advertising a "natural penis enlargement solution".

The Complaint states that if the Internet user does not click on "Enter" at the enter page and tries to exit, the user is taken to other sites which feature pornographic material.

The Complaint states that the above situation has caused Complainant substantial harm in that its supporters and friends are exposed to pornography and WIMSA is associated with this tawdry material. The Complaint states this is particularly offensive, given Complainantís mission of promoting the image and history of women in the U.S. Military.

The Complaint states that Complainant is the owner of the common law trademark WIMSA which was first used in 1986 for non-profit fundraising services and related goods and services in connection with the Memorial for women who have served in the U.S. Military Services. Complainant is also the owner of two U.S. trademark registrations which include "WOMEN IN MILITARY SERVICE FOR AMERICA MEMORIAL" as a prime component. These marks were registered in 1990 and 1996.

The Complaint states that through its long-standing fundraising activities and its administration of the Womenís Memorial, Complainant has acquired tremendous recognition and goodwill in the WIMSA common law trademark. Complainant has provided a signed declaration by Brigadier General Wilma L. Vaught, U.S.A.F. retired, the President of Complainant, stating that the mark WIMSA has been in substantially exclusive and continuous use by Complainant from at least 1986 to the present for identifying its non-profit fundraising and administrative services in connection with the Memorial for women who have served in the U.S. Military Services, and related goods and services.

The Complaint states that the domain name in dispute which wholly appropriates Complainantís WIMSA mark is identical or at least very confusingly similar to Complainantís common law trademark.

Complainant submits that the disputed domain name is also confusingly similar to Complainantís registered trademarks which include as their prime feature Women in Military Service in America. The Complaint submits that recognized abbreviations of trademarks are entitled to the same protection as the original full trademarks.

The Complaint states that there is no evidence that Respondent has any rights or legitimate interests in the disputed domain name. The Complaint states that to the best of Complainantís knowledge, Respondent (a) has not used or engaged in any demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods and services; (b) is not commonly known by the domain name; and (c) is not making a legitimate non-commercial or fair use of the domain name (without intent to tarnish the trademark and to divert Internet users for commercial gain).

The Complaint states that Respondentís use of the domain name to direct Internet users to pornographic material does not give Respondent any rights or legitimate interests in <wimsa.org>. The Complaint states that Respondent registered and is using the <wimsa.org> domain name solely to drive Internet traffic from outdated links to WIMSAís former <wimsa.org> domain name and to capitalise on the publicís association of WIMSA with Complainant for commercial gain.

The Complaint states that bad faith use of the domain name is not bona fide use and thus does not establish rights or legitimate interest in the domain name. Complainant cites in support National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co. aka chargersgirls.net (WIPO Case No. D2000-0118).

The Complaint submits that the domain name in dispute was registered and is being used in bad faith. The Complaint states that even domain names that have lapsed must not be registered and used in bad faith and in support refers to the case of InTest Corporation v. Servicepoint (NAF Case No. 95291).

The Complaint states that Respondent registered and is using <wimsa.org> to link to pornographic material and that Respondentís choice of <wimsa.org> was no coincidence. According to the Complaint, Complainant has reason to believe that Respondent is in the business of registering recently expired domain names for the sole purpose of diverting Internet users to its pornographic web sites and to tarnish the former Registrantís goodwill by using a confusingly similar name to furnish pornography. The Complaint cites a number of situations which could give credence to this assertion.

The Complaint submits that Respondentís conduct appears to violate paragraph 4(b)(i) of the policy because, according to the April 26, 2001 Whois report for <wimsa.org>, Respondent is now offering the <wimsa.org> domain name for sale and will not even consider any offer less than $500. The Complaint asserts that this attempt to sell the domain name leads to an inference that Respondent has registered the domain name primarily for the purpose of selling it to Complainant or a third party far in excess of any out of pocket expenses and costs related to the domain name in violation of the policy.

As further evidence of bad faith, the Complaint states that it appears that Respondent has provided false and misleading contact information. The BulkRegister.com Registration Agreement states that its registrants must provide "the name of an authorized person for contact purposes" and a telephone number. The Complaint states that Respondent has not designated a personís name for contact purposes, and that Bolshoy Golovin, which would appear to be the name of a person, is in reality a street in Moscow. The Complaint states that it was not until April 6, 2001 that Respondent provided a telephone number. The Complaint states that Respondent has not provided a complete street address for the Registrantís address. The Complaint states that Complainantís representative commissioned an investigation of Respondentís contact information and determined that the administrative telephone and facsimile numbers provided by Respondent may be part of a system designed to make contact with Respondent difficult. The Complaint states that Complainantís representative has been unable to contact Respondent at the telephone and facsimile numbers provided by Respondent.

Complainant requests the administrative Panel to issue a decision that the domain name in dispute <wimsa.org> be transferred to Complainant.

The Response

No Response has been submitted to the Center.

 

5. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following in order that Respondent be required to submit to a mandatory administrative proceeding:

(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights, and

(ii) Respondent 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.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith but are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, without limitation, each of which, if proven, shall demonstrate Respondentís rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) above.

a) Identity or confusing similarity of the domain name to a trademark or service mark in which Complainant has rights

The Panel finds that Complainant has established that it is the owner of the trademark WIMSA and that the mark has been in substantially exclusive and continuous use by Complainant from at least as early as 1986 to the present.

Although Complainant allowed its registration made November 17, 1997, for <wimsa.org> to lapse, and in spite of the unusual statement that this was so it might be available for a bona fide use by another legitimate entity, in view of the statements in the Complaint and Brigadier General Vaughtís declaration, the Panel finds that Complainant had not abandoned and at the time of filing the Complaint was still the owner of common law rights in the trademark WIMSA.

The Panel is also of the view that the top level domain suffix ".org" should not be taken into consideration in considering the identity or confusing similarity of the domain name to a trademark.

The Panel concludes that the domain name in dispute is identical to the trademark WIMSA in which Complainant has common law rights.

In view of this finding, it is not necessary for the Panel to consider Complainantís additional submission that there is confusing similarity between the domain name in dispute and Complainantís full name, since the domain name is made up of the initial letters of words appearing in Complainantís full name.

b) Rights or legitimate interests of Respondent in the domain name

(i) Respondent has used the domain name to direct internet users to various pornographic web sites. The web page of <wimsa.org> contains only the word "welcome" in small print at the top left, the web site address for <wimsa.org> in small print at the top right, and the word "ENTER" in large bold print in the center of the page. When the user clicks on "ENTER", he or she is taken to a page containing pornographic material which has three "ENTER" links, each of which would lead the user to a different pornographic site. The use of a domain name to direct internet users to other web sites which may offer goods or services does not constitute use of the domain name for the bona fide offering of goods or services. (See Case No. D2000-0118: National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co. aka chargersgirls.net, where the domain name in dispute was used to direct internet users to a pornographic web site; and WIPO Case No. D2000-0186: Libro AG v. NA Global Link Limited, where the domain name was used to redirect visitors to a different web site.)

The pornographic web sites, to which Respondentís web site under its domain name refers internet users, may offer goods and services but this does not constitute a use of the disputed domain name itself for the bona fide offering of goods or services.

(ii) There is no evidence that Respondent has been commonly known by the disputed domain name. The Panel finds that there was no justification for Respondent to have adopted and used the domain name <wimsa.org>. Moreover, the Panel finds that WIMSA is an unusual word, obviously "made up" and that it is inconceivable that Respondent would have adopted this word as part of its domain name if Respondent had not been aware of Complainantís previously registered domain name and/or trademark. In addition, Respondent has not made a non-commercial or fair use of the domain name without intent to misleadingly divert customers or to tarnish Complainantís trademark.

(iii) No Response having been filed, Respondent has not refuted Complainantís contention that Respondent registered and is using the domain name in dispute solely to drive Internet traffic from outdated links to Complainantís former <wimsa.org> domain name and to capitalise on the publicís association of WIMSA with Complainant for commercial gain.

Not having filed a Response, or communicated in any way with the Center, Respondent has not challenged any of Complainantís assertions. The burden of rebutting Complainantís assertions has not been met. The Panel finds that there was no justification for Respondent to have adopted and used the domain name <wimsa.org>.

Based on its evaluation of all evidence presented, the Panel concludes that Respondent has no rights or legitimate interests in the domain name.

c) Registration and use of the domain name in bad faith

Not having filed a response, Respondent has not provided any explanation for the numerous circumstances which the Complaint has asserted lead to a conclusion of bad faith on the part of Respondent in registering and using the domain name. The Panel notes, as indicated above, that WIMSA is an unusual made-up word and no reason appears from the record as to why it would have been adopted by Respondent other than for its advantage to Respondent in attracting Internet users to be directed to pornographic sites with the result of tarnishing Complainantís reputation and goodwill by using the same domain name that is still associated with Complainant. The Complaint adds several other reasons, in addition to the Panelís observation that WIMSA is an unusual made-up word not likely to be adopted without special reason. The Complaint states that Complainant has reason to believe that Respondent is in the business of registering recently expired domain names for the sole purpose of diverting Internet users to pornographic web sites and cites several situations which would suggest such a conclusion.

The Panel finds that, by registering and using the domain name in dispute, Respondent has intentionally attempted to attract for commercial gain Internet users to its web site and, from there, to direct them to various pornographic web sites, by creating a likelihood of confusion with Complainantís WIMSA mark as to the source, sponsorship, affiliation or endorsement of Respondentís <wimsa.org> web site.

In addition, according to the April 26, 2001, BulkRegister.com report for <wimsa.org>, Respondent was offering the domain name in dispute for sale for a sum in excess of $50,000.

The Panel notes that it was impossible for the Center to communicate with Respondent by mail at the address appearing in the Registrarís records. Further, the Center and Complainant both experienced great difficulty in contacting respondent or its technical or administrative contacts by e-mail or by fax, and in fact it appears it was not possible to make such contacts. The Panel finds the failure of Respondent to provide the Registrar with complete contact information to be evidence of bad faith (see Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515).

In view of the foregoing, the Panel concludes that Respondent has registered and is using the domain name <wimsa.org> in bad faith.

 

6. Decision

Based upon its evaluation of the evidence and the inference the Panel is entitled to draw from the failure of Respondent to file a Response, the Panel finds:

(a) the domain name <wimsa.org> is identical to Complainantís common law trademark WIMSA;

(b) Respondent has no rights or legitimate interests in the domain name in dispute;

(c) The domain name in dispute was registered and is being used in bad faith.

The Panel directs that the domain name <wimsa.org> be transferred to Complainant.

 


 

Joan Clark
Sole Panelist

Dated: July 11, 2001