WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Mensa, Ltd. v. Access NOW!
Case No. D2000-1031
1. The Parties
The Complainant in this administrative proceeding is American Mensa, Ltd., a corporation having a principal place of business at 1229 Corporate Drive West, Arlington, Texas 76006 USA.
The Respondent in this Administrative Proceeding is Access NOW!, whose address is listed as 4067 Beltway, Unit 126, Addison, TX 75224, USA.
2. The Domain Name and Registrar
Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, Virginia 20170
3. Procedural History
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on August 11, 2000, by email and on August 15, 2000 with one original and four hard copies with annexes. An Acknowledgement of Receipt dated August 18, 2000, was sent by e-mail by the Center to the Complainant. The Center dispatched to the Registrar a Request for a Registrar Verification on August 28, 2000. On September 21, 2000, having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the Center formally commenced this proceeding and notified the Respondent that its Response would be due by October 10, 2000. The Respondent did not file a response by the due date. A Notification of Respondent Default was sent to the Respondent on October 14, 2000.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The Complainant has used the MENSA mark in commerce since at least as early as October, 1967. It owns a United States service mark registration on the Principal Register for the MENSA mark for "conducting meetings, administering intelligence tests, engaging in educational, sociological, psychological, and scientific research, in order to ascertain the correlation and relationship between intelligence quotient to personality traits, educational background, family background, economic background, personal goals, occupational backgrounds, and the like" in Class 42 (Reg. No. 837,288, registered October 17, 1967).
The Complainant also owns a United States collective membership mark registration on the Principal Register for the MENSA mark for "indicating membership in a society in which the sole requirement for qualification for membership is a score at or above the 98th percentile on any of a number of standard IQ tests" in Class 200 (Reg. No. 1,405,382, registered August 12, 1986).
In addition, the Complainant owns a United States trademark registration on the Principal Register for the MENSA mark for "magazines and books concerning the organization's activities, puzzles and other intellectual pursuits, and human intelligence" in Class 16 (Reg. No. 1,492,188, registered June 14, 1988). The Complainant's MENSA trademark, service mark, and collective membership mark registrations are valid, subsisting, and in full force and effect.
MENSA is derived from the Latin word "mensa," meaning "table." The international affiliate of the Complainant, now named Mensa International, Ltd., was founded in England in 1946 and has been in existence and has used the MENSA mark continuously since then. The Complainant, the national affiliate of Mensa International, Ltd. in the United States, was founded in 1960, and has been in existence and has used the MENSA mark continuously since then. Mensa International, Ltd. currently has over 100,000 members, and has national affiliates in more than thirty countries; the Complainant currently has more than 40,000 members throughout the United States and has more than 130 local groups that together encompass all fifty states. MENSA is a famous mark as defined by 15 U.S.C. ß 1125(c)(1).
The Complainant owns the domain name <mensa.org>. The Complainant maintains the web site www.us.mensa.org itself and licenses the site to its international affiliate, Mensa International, Ltd.
The Respondent registered the subject domain name, <mensa.net>, on or about March 18, 1996. It offered to sell the subject domain name to the Complainant in exchange for the Complainant contracting for the provision of web services. By letter dated September 25, 1997 to the Respondent from the Complainant's former attorney, the offer was rejected and the Respondent was informed that the Complainant asserted that it has superior rights to the MENSA mark and that the subject domain name should be transferred to it forthwith. The Respondent did not reply.
In 1999, Respondent linked the subject domain name to the web site for Nova Internet Services, Inc. By letter dated May 6, 1999 the Complainant objected to this link.
By letter dated July 29, 1999, the Respondent was informed by the Complainant that it planned to file a Domain Name Dispute regarding the subject domain name if the Respondent did not transfer the subject domain name to the Complainant voluntarily.
On November 18, 1999, the Complainant filed a Domain Name Dispute with Network Solutions, Inc., but before the Dispute was resolved the procedure was terminated in favour of the ICANN procedure.
On May 9, 2000, the Complainant's present attorney wrote a letter to the Respondent requesting immediate transfer of the subject domain name and stating that proceedings against the Respondent would be initiated if the transfer were not to occur within two weeks. After the Complainant's attorney spoke with the Respondentís representative by telephone to verify the fax number to which the letter was to be sent, it was mailed and faxed to the Respondent. The Respondent did not respond.
The Complainant's Actions Still In Effect (standing orders), which all members are bound to follow, state that anyone seeking to use the MENSA mark must obtain permission for such use from Mensa's Name and Logo Committee.
The Respondentís representative, Mr. Thompson, is a member of the Complainant, but the Respondent has not sought permission to use and Complainant has not authorized the Respondent to use the Complainantís name and mark.
5. Partiesí Contentions
The Complainant contends that it has rights to the name and mark, MENSA. It asserts that the Respondentís use of the subject domain name "creates a likelihood of confusion" because it may be perceived that "Mr. Thompson is an official of [the Complainant], or is otherwise using the MENSA mark with permission" or that the mark can be used without permission by members or others.
The Complainant says that the Respondent does not have an interest in the subject domain name. It is not being used for any commercial purpose.
Bad faith is said to be evident from a number of facts. The Respondent knows the concerns of the Complainant, but has neglected to react positively to them. Transfer of the subject domain name was offered for the consideration of a commitment to give business to the Respondent. The related web site is inactive, but it will attract users who will be diverted from the Complainant.
The Respondent has asserted no position.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) a domain name is identical or confusingly similar to a service mark to which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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 Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site 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 the web site or location or of a product or service on the web or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant has referred to a number of domestic court decisions. While these often are of considerable assistance, they are not controlling in an ICANN domain name proceeding.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has used its mark and has obtained rights in it.
Its assertion that others may be confused whether the Respondentís representative is authorized or whether the authorization is required for the use of its name or mark, are not matters that are relevant to a determination under paragraph 4(a)(i). The question is whether the domain name under review is confusingly similar to a trademark or service mark in which the Complainant has rights.
The subject domain name essentially is identical to the Complainantís name and mark. On this basis, the Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondentís Legitimate Interest
The Respondent has made no use of the subject domain name other than to seek business from the Complainant as consideration for its transfer to the Complainant. That fact alone suggests that the Respondent has no legitimate interest in the subject domain name.
Although the Complainant has communicated with the Respondent, it has offered no evidence of any legitimate interest. The Respondent apparently temporarily linked the subject domain name to its business website, but this action followed notice of a dispute from the Complainant and does not support a finding of legitimate interest even if the Administrative Panel otherwise were to consider such use a possible bona fide offering of services.
The Administrative Panel is satisfied that the Complainant has established the requirements of paragraph 4(a)(ii).
C. Bad Faith
The Respondent offered to transfer the subject domain name to the Complainant in exchange for the Complainantís agreement to purchase internet services. The Respondentís refusal to transfer the subject domain name, coupled with a demand for commercial remuneration, supports an inference that it sought valuable consideration in excess of its out-of-pocket expenses in connection with the name. The Respondent has done nothing to displace that inference which leads to an implication of evidence of bad faith.
The Administrative Panel is satisfied that the Complainant has established the requirements of paragraph 4(a)(iii).
Based on the evidence and the findings expressed herein, the Administrative Panel concludes that the Complainant has proven its case. The Complainant asks that the subject domain name be transferred to it.
The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Ms. Sally M. Abel
Professor Frederick M. Abbott
Dated: January 3, 2001