United Service Organizations, Inc. v. TTA Panama
Claim Number: FA0508000543473
Complainant is United Service Organizations, Inc. (“Complainant”), represented by Keith A. Barritt, of Fish & Richardson P.C., 1425 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is TTA Panama (“Respondent”), Rua C.de de Bomfim, Tijuca, RJ 20520053, PA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usosandiego.com>, registered with Tucows Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 19, 2005.
On August 19, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <usosandiego.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 22, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 12, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 16, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Trademark/Service Mark Information:
The United Service Organizations (“USO”) owns the mark USO, one of the most widely recognized and respected marks in the United States, if not the world. By virtue of its favorable publicity in war and in peace, the USO mark has gained tremendous goodwill among both the American public and the American military.
The USO has obtained numerous U.S. federal trademark registrations for the mark “USO,” which are now incontestable under Section 15 of the U.S. Trademark Act, 15 U.S.C. 1065, for the following services:
supplying welfare and social needs of members of the armed forces of the United States (Reg. No. 0703,682 issued August 30, 1960)
providing support services to U.S. armed forces personnel in the continental United States and overseas; namely, providing travelers’ information, aid and tours to military personnel and their families (Reg. No. 1,731,688 issued November 10, 1992)
providing support services to U.S. armed forces personnel in the continental United States and overseas; namely, providing general information about local communities to military personnel and their families (Reg. No. 1,731,529 issued November 10, 1992)
providing support services to U.S. armed forces personnel in the continental United States and overseas; namely, providing restaurant and snack bar services for military personnel and their families (Reg. No. 1,731,854 issued November 10, 1992)
providing support services to U.S. armed forces personnel in the continental United States and overseas; namely, entertainment services – specifically, producing live and recorded performances by celebrities to entertain military personnel and their families; recreational facilities services for military personnel and their families; and educational services – specifically, conducting seminars about the language, history and culture of localities where military personnel are stationed (Reg. No. 1,733,685 issued November 17, 1992)
Moreover, in recognition of the USO’s unique status, the USO has been given the exclusive right to use the USO mark by a special Act of Congress, 36 U.S.C. 220106, regardless of the goods and services offered under the mark.
This Complaint is based on the following factual and legal grounds:
Background and Services Offered by the USO
The United Service Organizations, Inc. “(USO”) is a congressionally chartered non-profit private organization. Although each President has been the Honorary Chairman of the USO since its inception, the USO is not part of the U.S. Government. Rather, the USO relies on the generosity of individuals, organizations, and corporations to support its activities. For over 60 years, the USO has been providing comfort and assistance to military personnel and their families. In times of peace and war, the USO has consistently delivered its special brand of comfort, morale, and recreational services.
The USO currently operates 121 centers around the world, including six mobile canteens, with 72 centers located in the continental United States and 49 overseas. Overseas centers are located in Europe (including Italy, France, Germany, and Bosnia), Asia (including Japan and Korea) and the Middle East (including the United Arab Emirates, Bahrain, Qatar, and Kuwait). American military service members and their families visit USO centers more than 5 million times each year.
Respondent’s Relationship With The USO
Respondent’s alter ego (and the administrative contact for the Domain Name), Mr. Joseph Walker, is a former employee of the USO. From approximately June 15, 2000 to May 26, 2004, Mr. Walker worked as a paid employee for the USO in Europe. Mr. Walker served as the director of USO operations in both Rome and Naples, Italy. Thus, Mr. Walker became intimately familiar with the USO mark and the USO’s operations in serving the recreational needs of U.S. military personnel. Mr. Walker was eventually released by the USO, primarily due to the conflict of interest caused by his running a separate competitive business from which he stood to gain personally -- using USO time and equipment -- at the same time as he was the Director for USO Naples/Rome.
As explained in detail below, Respondent registered the Domain Name in bad faith to capitalize on the goodwill associated with the well-known and incontestably registered USO mark. In fact, Mr. Walker now uses very similar domain names for websites that are focused on serving the recreational travel needs of U.S. armed forces personnel stationed overseas. Such websites are in direct competition with similar services offered by the USO. The USO is concurrently herewith filing a separate UDRP action against Mr. Walker regarding his ownership of the usorome.com, usonaples.com, usoparis.com, and usodubai.com domain names. Based on this history, and despite the fact that the usosandiego.com Domain Name does not currently resolve to an active website, it is clear that Respondent’s intended use for the Domain Name is also for a similar service designed to take advantage of the confusion caused by the Domain Name.
[a.] The Domain Name Registered By Respondent Is Confusingly Similar To A Mark In Which The USO Has Rights
As noted above, the USO is the owner of the federally registered mark USO for a wide range of goods and services. Under U.S. trademark law, such incontestable registrations serve as “conclusive evidence of the validity of the registered mark and of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. § 1115 (b) (emphasis added). See also Reed Elsevier Inc. v. Domain Deluxe, FA 234414 (NAF March 18, 2004) (citing Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985) (finding that incontestable registrations are conclusive evidence of the registrant’s exclusive right to use the mark); FDNY Fire Safety Education Fund, Inc. v. Roger Miller, FA 145235 (NAF March 26, 2003) (“[T]he FDNY’s successful registration of its mark on the Principal Register is evidence of its rights in the mark”).
The USO currently provides support services to American military personnel and their families in San Diego. In particular, through its local affiliate the USO owns the Internet domain name usosandiego.org. This domain was first registered on October 23, 2001. Respondent’s usosandiego.com domain name -- registered in 2004 -- is virtually identical to the USO’s prior domain name.
Respondent has registered the Domain Name, which consists of nothing more than the mark USO plus a geographic designation. The Domain Name itself immediately conveys the impression that any associated website would be affiliated with the USO in the San Diego, California area. The impression of an affiliation between the USO and Respondent’s Domain Name is especially strong considering the USO’s prior ownership of the identical domain name in the .org generic top level domain.
The geographically descriptive and non-distinctive term appended to the USO mark in the Domain Name does not distinguish the Domain Name from the USO’s federally registered and incontestable mark. As stated by the panel in Volvo Trademark Holding AB v. SC-RAD, Inc., D2003-0601 (WIPO October 9, 2003), “[i]t has previously been held in very many other proceedings before WIPO Panelists that a domain name created by appending a geographic term to another’s trademark or service mark does not change the domain name from being confusingly similar to the trademark.”
In sum, there can be no question that Respondent’s Domain Name is confusingly similar to the USO mark and the USO’s related domain name. Accordingly, Section 4(a)(i) of the UDRP requiring that the domain names at issue be “identical or confusingly similar to a trademark or service mark in which the complainant has rights” is plainly satisfied.
[b.] Respondent Has No Rights Or Legitimate Interests In The Domain Name
Respondent is not making a noncommercial fair use of the Domain Name, nor has Respondent ever been known as or referred to as the name reflected in the Domain Name. The Whois record for the Domain Name lists Respondent’s name as TTA Panama. Failure of the Whois record to imply that Respondent is commonly known by the name reflected in the Domain Name supports the conclusion that Respondent is not known by any such designation. See Tercent Inc. v. Yi, FA 139720 (NAF Feb. 10, 2003).
Furthermore, “[t]he passive holding of a domain name confusingly similar to Complainant’s mark is not a bona fide offering of goods under 4(c)(i) nor is it a legitimate noncommercial or fair use under 4(c)(iii).” Bronco Wine Co. v. Midnight Wine Cellars a/k/a/ Joe Thrift, FA 97740 (NAF Aug. 2, 2001). See also Minnesota State Lottery v. Bryan Mendes, FA 96701 (NAF April 2, 2001) (“Complainant has shown that Respondent has passively held on to the domain name. Such evidence demonstrates that Respondent has not established rights or legitimate interest in the domain names”).
Given the foregoing, it is apparent that Respondent has no legitimate interests in the Domain Name, as legitimate interests are defined in Sections 4(c)(i)-(iii) of the UDRP. As such, the USO has satisfied the second element of its complaint under the Policy Section 4(a)(ii).
[c.] Respondent Registered and Is Using The Domain Name In Bad Faith
The third and final element that the USO must show is Respondent’s bad faith registration and use of the Domain Name. As explained below, there are multiple grounds for finding such bad faith, any one of which is sufficient to justify such a finding and transferring the Domain Name to the USO.
1. Respondent’s Alter Ego Has Engaged In A Pattern Of Registering Domain Names Containing The USO Trademark In Order To Profit From The Mark And To Prevent The USO From Reflecting Its Mark In Domain Names
Registering multiple domain names containing the trademarks of others constitutes bad faith registration and use. In Big Dog Holdings, Inc. v. Frank Day, FA 93554 (NAF March 9, 2000), the panel found bad faith because “Respondents have a pattern of registering multiple domain names which are the registered trademarks of others”). Similarly, in FDNY Fire Safety Education Fund, Inc. v. Roger Miller, supra, it was found that the “Respondent’s pattern of registering infringing domain names while preventing them from reflecting their marks in a domain name constitutes bad faith pursuant to Policy ¶ 4(b)(ii)”). See also Gamesville.com, Inc. v. Zuccarini, FA 95294 (NAF Aug. 30, 2000) (“Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. This is evidence of registration and use in bad faith”).
Respondent’s alter ego, Mr. Joseph Walker, has registered at least four other domain names containing the USO trademark for his own commercial benefit. In particular, and as noted above, Mr. Walker owns usorome.com, usonaples.com, usoparis.com, and usodubai.com. These sites are being used to offer travel agency services in direct competition with the services offered by the USO using virtually identical domain names, the only difference being that Mr. Walker registered his domains in the .com rather than the .org generic top level domain.
Because Respondent and Mr. Walker appear to be so intimately related, Respondent should be held accountable for Mr. Walker’s pattern of registering multiple domain names based on the USO trademark, depriving the USO of the opportunity to register in the .com generic top level domain, which alone establishes bad faith registration and use under Policy Section 4(b)(ii). Furthermore, Respondent’s conduct in registering the Domain Name has also prevented the USO from reflecting its USO mark in a .com domain name, the most sought after top level domain name extension.
2. Respondent Intends To Offer Directly Competitive Services Using A Domain Name That Is Likely To Cause Confusion With Complainant’s Mark
Use of a domain name to offer goods and services in competition with a mark owner can be evidence of bad faith. For example, in Irish Institute of Purchasing Materials Management v. Association, D2001-0472 (WIPO May 30, 2001), the panel found that Respondent had engaged in bad faith registration and use of a domain name used to offer services in competition with the Complainant. Similarly, in Tuxedos By Rose v. Hector Nunez, FA0007000095248 (NAF August 17, 2000), the panel held that Respondent’s registration of domain names that were confusingly similar to Complainant’s marks was in bad faith, as the Respondent and Complainant were direct competitors in the tuxedo sales and rental market. See also SGS Societe Generale de Surveillance S.A. v. Inspectorate, D2000-0025, (WIPO March 17, 2000) (bad faith found where the Respondent and Complainant were direct competitors).
As is evidenced by websites operated by Respondent’s alter ego, Mr. Joseph Walker, Respondent registered the Domain Name based on the USO trademark for the purpose of offering services virtually identical to those offered by the USO. Such an intended use of the Domain Name is clear evidence of Respondent’s bad faith.
3. Respondent Intends To Attract Internet Users To Advertisements On Its Website For Commercial Gain By Creating A Likelihood Of Confusion
Using a domain name comprised of another’s mark for the purpose of exposing Internet users to advertisements constitutes bad faith. As the panel found in Phillip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003), “[t]he disputed domain name links to a website . . . created for the sole purpose of displaying banners and advertisements. . . . Clearly, the disputed domain name is being used intentionally to attract users to these other sites, and thus is evidence of bad faith”.
Similarly, in Level 3 Communications, Inc. v. Domain Deluxe, FA0312000220051 (NAF Feb. 3, 2004), the panel found that Respondent’s use of the wwwlevel3.com domain name to expose Internet users to advertising amounts to bad faith, stating that “[b]y using its domain name as a platform to expose misdirected Internet users to advertising, Respondent is using the disputed domain name in bad faith”. Likewise, in Reed Elsevier Inc. v. Domain Deluxe, supra, the panel found that Respondent registered and used the disputed domain name in bad faith under Policy Section 4(b)(iv) “[b]y using the disputed domain name to host links that offer services that compete with Complainant’s business.” See also Elsevier B.V. v. Domain Deluxe, FA 237520 (NAF March 24, 2004) (“As Respondent is capitalizing on this likelihood of confusion with Complainant and its mark for commercial gain (via the use of revenue-generating advertisements) Respondent’s activities evidence bad faith use and registration of the domain name pursuant to Policy ¶ 4(b)(iv)”).
Respondent’s alter ego, Mr. Joseph Walker, in addition to offering travel services directly competitive with those offered by the USO, also uses the usorome.com, usonaples.com, and usoparis.com domain names to display links to commercial services offered by others, such as “Travel Easy” products and “Auto Europe” car rental services. Thus, Respondent will likely seek to generate advertising and click-through revenue by capitalizing on the likelihood of confusion with the USO trademark that is inevitable with the usosandiego.com Domain Name, providing further evidence of bad faith.
4. Respondent Had Knowledge Of The USO’s Rights Prior To Registering the Domain Name
Respondent’s alter ego, Mr. Joseph Walker, was an employee of the USO from June 15, 2000 to May 26, 2004. As a former employee, Mr. Walker was keenly aware of the marketing power of the USO mark, and of the USO’s internal operations. This case is therefore similar to William Hill Org. Ltd. v. Fulfillment Management Services, Ltd., D2000-0826 (WIPO Sept. 17, 2000), where the panel found that the respondent, a former employee of complainant “must have had the Complainant’s trademarks in mind when choosing the disputed domain name and that the Respondent’s interest was to deprive the Complainant of the opportunity to reflect its mark in that name until the registration expired.” See also Arab Bank for Investment and Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where Respondent was a former employee of Complainant); Irish Institute of Purchasing Materials Management v. Association for Purchasing and Supply, Owen O’Neill, supra (former employee’s registration of domain names found to be in bad faith).
Given the pattern of registering domain names containing the trademarks of the USO and the USO’s prominence in the field of serving the needs of American military personnel and their families, it is beyond doubt that Respondent intentionally registered the Domain Name containing the USO’s well-known USO mark. As the panel found in Hugh Jackman v. Peter Sun, FA 0403000248716 (NAF May 10,2004), “Registration of a domain name that is confusingly similar to a mark, despite knowledge of the mark holder’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii)”. See also Digi Int’l v. DDI Sys., FA 124506 (NAF Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Eastman Kodak Co. v. Dionne Lamb, FA 97644 (NAF July 17, 2001) (“Registering a domain name that the registrant knows belongs to someone else and that the registrant knows will confuse the users about the source or sponsorship of the domain name is bad faith”).
Furthermore, as has been held by numerous UDRP panels, even the passive holding or “parking” of a domain name with the knowledge that it infringes the trademark of another is evidence of bad faith registration and use. See e.g., Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Minnesota State Lottery v. Bryan Mendes, supra (“Passive holding of a domain name permits an inference of registration and use in bad faith”); The Caravan Club v. Mrgsale, FA 95314 (NAF August 30, 2000) (“The Respondent has made no use of the domain name or website that connects with the domain name. Passive holding of domain name permits an inference of registration and use in bad faith”). Accordingly, in light of Respondent’s constructive knowledge of the USO mark, Respondent’s passive holding of the Domain Name is further evidence of Respondent’s bad faith.
5. Respondent Registered The Domain Name Immediately After Complainant’s Good Faith Efforts To Resolve A Similar Dispute
Promptly after learning of the ownership by Respondent’s alter ego, Mr. Joseph Walker, of the domain names usorome.com, usonaples.com, and usodubai.com, the USO sent a letter to Mr. Walker at his address of record in the Whois database. No response was ever received to this letter, nor was it returned by the U.S. Post Office as undeliverable. Accordingly, the letter was evidently received and ignored by Mr. Walker. Indeed, rather than discontinue use of the offending domain names, Mr. Walker evidently rushed out and registered the usosandiego.com Domain Name instead (albeit in the name of Respondent), providing further evidence of Respondent’s bad faith in registering the Domain Name.
Complainant, United Service Organization, is a congressionally chartered non-profit private organization that has provided comfort and assistance to military personnel through its 121 international locations for over sixty years. In connection with these operations, Complainant has registered the USO mark (Reg. No. 703,682 issued August 30, 1960) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <usosandiego.com> domain name on November 18, 2004. Respondent’s domain name does not currently resolve to an active website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the USO mark through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <usosandiego.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name features Complainant’s entire “USO” mark and adds the geographic term “San Diego.” Panels have found that the addition of geographic terms to a registered mark fails to sufficiently distinguish a disputed domain name pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Company v. Alvaro Collazo, Claim Number: FA0302000144628 (March 5, 2003), Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000), VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion creates a prima facie case under Policy ¶ 4(a)(ii) and, thus, shifts the burden of proof onto Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (stating that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Because Respondent failed to respond, the Panel infers that no rights or legitimate interests exist pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Respondent has failed to make use of the <usosandiego.com> domain name since its registration. Panels have held that failing to make use of a domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
Furthermore, no affirmative evidence has been set forth showing that Respondent is commonly known by the <usosandiego.com> domain name. As a result, Respondent has failed to show evidence of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s domain name does not resolve to an active website. In cases of passive holding, panels have found that, where the registrant is not commonly known by and fails to make use of the disputed domain name, bad faith registration and use can be inferred pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Respondent registered the <usosandiego.com> domain name with actual knowledge of Complainant’s rights in the USO mark (as the alter ego of a former USO employee, who did not have permission to register the domain name).
Even if Respondent did not have actual notice of the USO trademark, Complainant’s registration of the USO mark with the USPTO confers constructive knowledge of Complainant’s rights in the mark upon Respondent. See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072). Respondent’s registration of a confusingly similar domain name with actual or constructive knowledge of Complainant’s rights constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usosandiego.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: September 29, 2005