WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Museum of Science v. Asia Ventures, Inc.
Case No. D2003-0691
1. The Parties
The Complainant is Museum of Science, Boston, Massachusetts, of United States of America, represented by Hale and Dorr, LLP, United States of America.
The Respondent is Asia Ventures, Inc, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <museumofscienceboston.com> is registered with IARegistry.com, South Carolina, United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 2, 2003. On September 3, 2003, the Center transmitted by email to IARegistry.com a request for registrar verification in connection with the domain name at issue. On September 5, 2003, IARegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 8, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 29, 2003.
The Center appointed the undersigned as the sole panelist in this matter on October 6, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is the well-known Museum of Science located in Boston, Massachusetts, United States of America, which has been in operation continuously since its establishment in 1830. The Museum has an educational mission to stimulate interest and further the understanding of science and technology. Each year the Museum has more than 1.6 million visitors. The Museum is known as "Museum of Science", the "Boston Museum of Science", the "Museum of Science, Boston" and the "Museum of Science in Boston". The Complainant operates website at several domain names, including <museumofscience.org>, <museumofscience.net>, and <bostonmuseumofscience.org>.
The Complainant requested the transfer of the disputed domain name from the Respondent in a letter of June 4, 2003. The Complainant received no response to this letter.
5. Partiesí Contentions
The Respondent registered and is using a domain name that is confusingly similar to Complainant's trade name and marks. According to the information in WhoIs database, the Respondent registered domain name <museumofscienceboston.com> on or about December 25, 2001. According to the Complainant, the Respondent is using the disputed domain to direct users to search engine RocketSearch.
The Complainantís marks and its trade name are well known marks, and have been used by the Complainant in connection with the educational services offered by the Museum for at least 50 years, when the Museum changed its name from the Boston Society of Natural History to Boston Museum of Science, and consequently to Museum of Science.
The Respondent could not have been unaware of the Complainantís long-standing rights in its marks and trade name, which are recognized throughout the United States and worldwide. The disputed domain name is confusingly similar to the Complainantís marks and trade name. The Respondent registered and is using the domain name in bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Is the domain name Identical or Confusingly Similar to a Trademark in which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
As to the first question, the wording of the Paragraph 4(a) (i) to "trademark or service mark" has been interpreted by numerous Panels in the past to include both registered marks and the common law marks. See inter alia The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfersí Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218; Brooklyn Institute of Arts and Sciences v Fantastic Sites, Inc. National Arbitration Forum No. : FA0009000095560. With respect to the latter, the Complaint must show that the mark has been in continuous use (See United Artists Theatre Circuit, Inc. v. Domains for Sale Inc, already cited; Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168) and that the mark achieved secondary meaning ("distinctive character") in association with the Complainant. (See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; (1) Galatasaray Spor Kulubu Dernegi (2) Galatasaray Pazarlama A.S. (3) Galatasaray Sportif Sinai Ve Ticari Yatirimlar A.S. v. Maksimum Iletisim A.S., WIPO Case No. D2002-0726). This general rule was also applied with respect to museums. See Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, WIPO Case No. D2001-0879, and San Francisco Museum of Modern Art v. Joshua S. Drapiewski, WIPO Case No. D2000-1751.
The record confirms that Complainant has been continuously using the mark since the end of World War II. The Complainant has extensively promoted its services, both nationally and internationally, and the record confirms that the mark is undoubtedly associated with the Complainant. Therefore, the Panels finds that the Complainant has rights in the mark BOSTON MUSEUM OF SCIENCE and related marks.
As to the second question, the Panel finds that the domain name is confusingly similar to the Complainantís marks. The disputed domain name <museumofscienceboston.com> incorporates the Complainant mark "Museum of Science", the geographical identifier "Boston" and the generic top-level domain reference ".com". As a rule, when a domain name wholly incorporates a complainantís mark and adds a generic word, or a geographical identifier, that is sufficient to establish confusing similarity for purposes of the Policy. See Experian Information Solutions, Inc. v. BPB Prumerica Travel (a/k/a SFXB a/k/a H. Bousquet a/k/a Brian Evans) WIPO Case No. D2002-0367, CMGI, Inc. v. Reyes, WIPO Case No. D2000-0572). Confusion is only heightened when the generic word added by Respondent is the very location of the Complainant, whose marks and services has been strongly associated with the location. See The Field Museum of Natural History v. John Barry d/b/a Buy This Domain, National Arbitration Forum No. FA0205000114354; Am. Online, Inc. v. Asian On-Line This Domain For Sale, National Arbitration Forum No. 94636. The addition of the generic top-level domain (gTLD) reference ".com", which is necessary for a domain name to be operational, does not alter the mark, and is sufficient to establish functional identity to the complainantís mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760.
B. Does the Respondent Have Rights or Legitimate Interests in the domain name?
The Complainants submits that the Respondent has no rights or legitimate interests in the domain name based on Complainant's prior use of the "Museum of Science" in Boston mark. The Respondent, whom did not file a Response, did not dispute this contention nor provide information as to its interests to use the domain name.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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."
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the domain name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Was the domain name Registered and Used in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product.
There is evidence of the situation described in paragraph (iv) and some evidence of a pattern as contemplated in paragraph (ii). The relevant facts are mentioned below.
The Respondent registered the domain name in bad faith. Apart from the famous nature of the Complainantís marks, the domain name is composed of the Complainantís mark "Museum of Science" and the geographic identifier "Boston". It is reasonable to conclude that only someone who was familiar with the Complainantís mark would have registered the identical domain name. A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g. Article 16(2) and (3) of the TRIPS Agreement), the person who registers a confusingly similar domain name should be willing to show an intention to express himself or herself by responding to communications and indicating good faith use of the domain name. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopaedia Britannica, Inc. v. Zuccarini and the Cupcake Patrol aka Country Walk aka Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. This general rules with respect to famous marks has also been confirmed with respect to museums in particular. See Brooklyn Institute of Arts and Sciences v Fantastic Sites, Inc., National Arbitration Forum Case No. FA0009000095560, Dr. Karl Albrecht v. Eric Natale, National Arbitration Forum Case No. FA 95465; Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, already cited; Museum of Science v. Pro-Life Domains Inc. WIPO Case No. D2003-0424. The Respondent did not respond to any communication from the Center and did not indicate good faith use of the disputed domain name in by any means.
It is inconceivable that Respondent chose to register domain name <museumofsceinceboston> by accident. In fact, it is fairly difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing or the Complainantís marks.
In addition, the Respondent is using the disputed domain name for commercial purposes creating likelihood of confusion with the Complainantís marks. Users who visit the disputed domain name are automatically forwarded to a search engine "RocketSearch" which offers a number of subsequent links to various commercial services.
As to paragraph 4(b)(ii), although it is questionable whether the Respondent registered the domain name solely for the purpose of selling it to the Complainant, the Respondent is known to have registered in the past the domain names that correspond to well-known marks. The Panel does not express an opinion as to whether this ground alone would be sufficient for a finding of bad faith in this case but notes that it clearly reinforces the elements of bad faith use already mentioned
The Panel finds for the Complainant on this third element of the test.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <museumofscienceboston>, be transferred to the Complainant.
Daniel J. Gervais
Dated: October 20, 2003.