WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
March of Dimes Birth Defects Foundation v. Modwalkamerica
Case No. D2003-0062
1. The Parties
The Complainant in this proceeding is March of Dimes Birth Defects Foundation ("March of Dimes"), a New York not-for-profit corporation having a place of business at 1275 Mamaroneck Avenue, White Plains, New York 10605, United States of America. The Respondent is Modwalkamerica, an entity of unknown status with a postal address at 58C Executive Parkway, Clayton, New Mexico 77984, United States of America.
2. The Domain Name and Registrar
This dispute concerns the domain name <modwalkamerica.org>. The registrar with whom the domain name is registered is BulkRegister, Inc. a/k/a BulkRegister.com ("BulkRegister"), of 10 East Baltimore Street, 15th Floor, Baltimore, MD 21202, United States of America.
3. Procedural History
March of Dimesí Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in electronic form on January 29, 2003, and in hardcopy on January 30, 2003. In response to a notification by the Center that the Complaint was administratively deficient, March of Dimes filed an Amendment to the Complaint in electronic form on January 31, 2003, and in hardcopy on February 4, 2003. The Center verified that the Complaint together with the Amendment for the Complaint (collectively, the "Complaint") satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On January 29, 2003, the Center notified the registrar, BulkRegister, that March of Dimes had filed its Complaint with the Center, and requested that BulkRegister verify certain details regarding March of Dimesí Complaint, as well as the registration and current status of the contested domain name. On January 29, 2003, BulkRegister notified the Center: (i) that BulkRegister received March of Dimesí Complaint, (ii) that BulkRegister is the Registrar for the contested domain name, (iii) that Modwalkamerica is the current listed registrant for <modwalkamerica.org> domain name, (iv) of the contact details for the contested domain name, (v) that the Policy applies to the contested domain name through BulkRegisterís Service Agreement in effect, and (vi) that the domain name registration for the <modwalkamerica.org> is in "Registrar Lock" status.
On February 4, 2003, the Center began the process to notify Respondent of the filing of March of Dimesí Complaint in accordance with paragraphs 2(a) and 4(a) of the Rules. In accordance with the Rules, paragraph 5(a), Respondent was given until February 24, 2003, to file a response. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on March 4, 2003. The panel finds that Respondent was properly notified of this administrative proceeding and deems that Respondent is in default.
In the Complaint, the March of Dimes elected to have this proceeding decided by a single member panel. On February 27, 2003, the Center contacted the undersigned to solicit interest in being the sole Panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on March 3, 2003, of the ability and availability to serve as the sole Panelist for this matter. Also, on March 3, 2003, the undersigned submitted to the Center a "Statement of Acceptance and Declaration of Impartiality and Independence," as required by the Center to ensure compliance with the Rules, paragraph 7. Thus, the panel for this administrative proceeding was properly constituted.
The Center appointed Jonathan Hudis as the sole Panelist in this matter on March 4, 2003. At that time, the Center also forwarded to the undersigned the case file for this administrative proceeding. Also on March 4, 2003, the Center notified the parties that the undersigned would be the sole Panelist to decide this matter.
4. Factual Background
March of Dimes owns U.S. Trademark Registration No. 2,318,762 for the mark WALKAMERICA, a service mark is for "charitable services, namely, fundraising for medical treatment." A copy of the registration was attached to the Complaint. March of Dimes asserts that WALKAMERICA, which began in 1979, is a large and well-known charitable walking event in the United States. The event has raised over $1 billion in charitable donations since its inception. Walkers ask family, friends, business associates and others to sponsor them by making a donation to March of Dimes. Others volunteer their time to register walkers, staff checkpoints, and offer refreshments.
March of Dimes also owns multiple trademark registrations for MARCH OF DIMES, including U.S. Trademark Registration No. 1,945,777 for MARCH OF DIMES. A copy of this registration also was attached to the Complaint. March of Dimes alleges that it is commonly known by the acronym "MOD" or "MoD." March of Dimes attached web page printouts to the Complaint showing this usage.
March of Dimes asserts that there is no proof suggesting that Respondent has any rights or legitimate interests in respect to the <modwalkamerica.org> domain name. As Respondent has not answered the Complaint, it has not come forward to dispute March of Dimesí assertions in this regard. As evidence of bad faith, March of Dimes attached to the Complaint examples of pornographic stories and photographs that either appear on the <modwalkamerica.org> website or are directly linked to the website.
5. Partiesí Contentions
March of Dimes asserts that the contested domain name is identical or confusingly similar to the WALKAMERICA trademark in which March of Dimes has rights; that Respondent has no rights or legitimate interests in respect of the domain name; and that the contested domain name was registered and is being used in bad faith.
Since Respondent failed to respond to March of Dimesí Complaint, the Panel does not have the benefit of Respondentís point of view.
6. Discussion and Findings
According to Paragraph 4(a) of the Policy, transfer of the domain name will be ordered if March of Dimes has shown that the following three elements are present:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules, and Supplemental Rules, the Complainant must prove that each of these three elements is present. ICANN Policy, Paragraph 4(a). Non-exclusive examples of registration and use of a domain name in bad faith may be found in the Policy, Paragraph 4(b). Conversely, non-exclusive examples of a domain name registrantís rights or legitimate interests in respect of a domain name may be found in the Policy, Paragraph 4(c).
A. Identical or Confusingly Similar.
The Panel finds that March of Dimesí rights in the mark WALKAMERICA and MARCH OF DIMES are demonstrated by their United States federal registrations for these marks. The Panel also finds that the contested domain name is confusingly similar to March of Dimesí WALKAMERICA mark. It fully incorporates the WALKAMERICA mark, with the minor addition of the March of Dimesí acronym "MOD." Indeed, the domain name was, until Respondent obtained it, used by March of Dimesí Southern California chapter to promote its charitable WALKAMERICA program. March of Dimes provided an archived copy of pages from a previous website maintained at the <modwalkamerica.org> domain name. Secondly, Internet users who search the Internet for March of Dimes by using the contested domain name mistakenly may be directed to Respondent, increasing the likelihood of confusion. Finally, Internet users seeing the domain name may believe that it is somehow related to or authorized by March of Dimes.
B. Rights or Legitimate Interests.
March of Dimes argues that Respondent has no rights or legitimate interests in the domain name. The Complaint alleges that MODWALKAMERICA is a fictitious business name; that MOD refers to March of Dimes; and that WALKAMERICA is March of Dimesí walking event. There is no evidence that Respondent is commonly known by the domain name, and there exists no relationship between March of Dimes and Respondent that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating March of Dimesí mark. Further, March of Dimes asserts that Respondent is not making a legitimate fair use of the domain name. March of Dimes argues that Respondent is attempting to misleadingly divert consumers to other, presumably for-profit, commercial sites by using March of Dimesí WALKAMERICA mark, and is presumably receiving revenue for diverting visitors to these other websites. Finally, March of Dimes asserts that Respondent is tarnishing its mark by associating it with pornographic stories and images.
Respondent had the opportunity to respond and present evidence that it has rights or legitimate interests in respect of the contested domain name. It chose not to do so. March of Dimes is not entitled to relief simply by default. However, the Panel can and does draw evidentiary inferences from the failure to respond. See Richard L. Kane v. Daniel Lewis, Wealth Wizards, WIPO Case No. D2001-0980 (November 1, 2001).
For example, Paragraph 14 of the Rules provides that:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate."
Since Respondent has not answered the Complaint, the Panel finds that Respondent does not have any demonstrable rights or legitimate interests in respect of the contested domain name.
C. Registered and Used in Bad Faith.
The Panel must now decide whether March of Dimes has come forward with sufficient evidence that the contested domain name has been registered and is being used in bad faith. March of Dimesí Complaint argues that, pursuant to Paragraph 4(b)(iv) of the Policy, Respondent has intentionally attempted to use the domain name, formerly owned and used by a chapter of March of Dimes, to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the March of Dimesí service mark.
As noted in VeuveCliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (May 1, 2000), the circumstances of bad faith are not limited to those detailed in Paragraph 4(b)(iv) of the Policy, but can occur when a domain name is "so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith."
The Panel finds that Respondentís bad faith is evidenced by the renown of the March of Dimes service mark; by the apparent commercial nature of Respondentís website; and by the obvious connection between Respondentís unauthorized <modwalkamerica.org> domain name and March of Dimesí service mark. See Yahoo! Inc. v. Casion Yahoo, Inc. & John Maranda, WIPO Case No. D2000-0660 (August 24, 2000), (The Panel in that case found that <casinoyahoo.com> was registered and used in bad faith, given Complainantís YAHOO mark and the <yahoo.com> domain name.)
Based on the foregoing, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <modwalkamerica.org> be transferred to the Complainant, March of Dimes Birth Defects Foundation.
Dated: March 11, 2003