MacDonald Communications Corp. v. Westchester Women in Business Network

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MacDonald Communications Corporation v. Westchester Women in

Business Network

Case No. D2001-0547

1. The Parties

The Complainant in this administrative proceeding is MacDonald Communications

Corporation, a New York corporation, with a principal place of business at 135

W. 50th Street, New York, New York 10019, USA ("Complainant").

The Respondent is Westchester Women in Business Network, the registrant of

the domain name in issue, a New York non-profit corporation with a listed mailing

address of 7512 Topton Street, New Carrollton, Maryland 20784, USA ("Respondent").

2. The Domain Name and Registrar

The domain name in issue is <mynafe.com>.

The registrar of the domain name in issue is Network Solutions, Inc. ("Registrar"),

located at 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

3. Procedural History

On April 16, 2001, the Complainant filed a Complaint with the WIPO Arbitration

and Mediation Center ("Center") concerning the domain name <mynafe.com>

and paid the required filing fee for appointing a single member Panel. On April

18, 2001, the Center sent an "Acknowledgement of Receipt of Complaint"

to the Complainant.

On April 19, 2001, a "Request for Verification" concerning the domain

name was sent to the Registrar. On April 25, 2001, the Registrar provided a

Verification Response to the Center stating, in pertinent part, that: (i) it

is the registrar of the domain name <mynafe.com>; (ii) "Westchester

Women in Business Network" is the current registrant of the domain name

registration with a listed mailing address of 7512 Topton Street, New Carrollton,

Maryland 20784, USA; (iii) the Registrar’s 5.0 Service Agreement is in effect;

and (iv) the status of the domain name registration is "Active."

On April 25, 2001, the Center found the Complaint to be in compliance with

the formal requirements of ICANN’s Uniform Domain Name Dispute Resolution Policy

("Policy"), ICANN’s Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules") and WIPO’s Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy ("Supplemental Rules").

On May 7, 2001, the Center sent a "Notification of Complaint and Commencement

of Administrative Proceeding" and a copy of the Complaint to the Respondent

at the e-mail addresses provided for that purpose and to the postal address

and facsimile number listed for the Respondent in the domain name registration.

Copies of the Notification and Complaint were also sent to ICANN, the

Registrar and the Complainant. The Center did not receive error messages

or notices of non-delivery when the Notification and the Complaint were sent

to the appropriate e-mail addresses, fax number and postal address listed in

the registration for the Respondent.

On May 25, 2001, the Center received a Response from the Respondent by mail

within the prescribed time period for filing a response. On May 28, 2001, the

Center sent an "Acknowledgement of Receipt of Response" to the parties

by e-mail.

On June 13, 2001, the Center sent a "Notification of Appointment of Administrative

Panel and Projected Decision Date" ("Panel Appointment Notification")

by e-mail to the parties notifying them that an Administrative Panel consisting

of a single Panelist had been appointed in the proceeding.

Upon receiving the Panel Appointment Notification from the Center, the Complainant's

representative sent an e-mail message on June 13, 2001 to the Center indicating

a possible conflict with respect to the appointed Panelist but also indicating

that the Complainant had no objection to the Panelist presiding over this proceeding.

On June 18, 2001, the Center forwarded a copy of this message to the Respondent

requesting that it inform the Center on or before June 20, 2001, whether or

not it objected to the appointed Panelist. On June 22, 2001, the Center notified

the parties by e-mail that the Respondent had not communicated an objection

to the Center concerning the appointed Panelist and that the proceeding would

continue with the appointed Panelist.

Having reviewed the entire record submitted for this proceeding, the Panelist

concurs with the Center's finding that the Complaint is in compliance with the

Policy, Rules and Supplemental Rules and finds that the panel was properly constituted

and appointed. The Panelist also reconfirms her declaration of impartiality

and independence with respect to this proceeding. The Panelist shall thus issue

a decision based on the Complaint, the Response, the Policy, the Rules and the

Supplemental Rules.

4. Factual Background

The Complaint is based on two U.S. federal registrations, namely, Reg. No.

1,250,721 for the mark NAFE for "association services, namely, promoting

the interests of female executives," which issued September 6, 1983, and

Reg. No. 2,186,446 for the mark NAFE for "providing access to an on-line

interactive computer service providing articles, features, access to products

and services and other information of interest to female executives," which

issued September 1, 1998. Copies of the registration certificates for these

marks and the corresponding assignment records were attached as Annex C to the

Complaint.

A search from a query of the Registrar's Whois database shows that the domain

name <nafe.com> was registered on October 24, 1995 to the Complainant

and that there is a corresponding Web site located at this domain name. A copy

of the Complainant’s home page was attached as Annex D to the Complaint.

The domain name in issue was registered on October 16, 2000, to the Respondent

and resolves to the home page of Respondent’s Web site, which displays the scrolling

message "Welcome to The Networking Association for Female Entrepreneur’s

Online City," above a photograph of New York City. A copy of the Whois

record for the domain name in issue was attached as Annex A to the Complaint

and a copy of the Web pages corresponding to Respondent’s newsletter was attached

as Annex F.

5. Parties’ Contentions

Complainant

The Complainant, MacDonald Communications Corporation, asserts that it is the

owner of two federal registrations for the mark NAFE. Copies of the registration

certificates and assignment records were attached to the Complaint as Annex

C.

The Complainant further asserts that it and its predecessor and now division,

the National Association for Female Executives, Inc. ("NAFE"), have used the

mark NAFE continuously since 1977, to identify association services, including

maintaining a directory of independent local business networking organizations

in cities throughout the United States. (Excerpts from the NAFE local network

directory attached as Annex E) The Complainant asserts that it and NAFE have

also used the mark NAFE continuously since 1996 for Internet services, namely,

operating a Web site at the domain name <www.nafe.com> and included a

copy of its home page as Annex D. The Complainant asserts that as a result of

its continuous use of the NAFE mark for more than 20 years, the mark has become

well and favorably known among the relevant public.

The Complainant asserts that the domain name in issue is confusingly similar

to its mark NAFE, in that it comprises the identical NAFE mark together with

the merely descriptive term "my." The Complainant asserts that the

mark NAFE is the dominant portion of the domain name and that the addition of

the descriptive term "my" does not decrease confusing similarity but

rather increases confusing similarity because it leads the relevant public to

believe that the domain name is related to the Complainant and its services,

which the Complainant provides in association with the mark NAFE. The Complainant

further asserts that, as shown by the Respondent’s March 2001 Internet newsletter,

attached to the Complaint as Annex F, the Respondent targets its Web site to

female executives and entrepreneurs, which is the same class of individuals

as the membership of the Complainant’s NAFE Association and its local business

networks, and those who access the NAFE Web site. The Complainant asserts that

this also increases confusing similarity between the domain name and the NAFE

mark.

The Complainant asserts that the Respondent has no rights or legitimate interests

in the domain name in issue. The Complainant asserts that at the time it registered

the domain name in issue, the Respondent was a local business network for NAFE,

doing business under the name Working Women in Business ("WWIB").

The Complainant attached excerpts from NAFE’s local network directory as Annex

E. The Complainant asserts that WWIB did not have or seek the permission of

NAFE to use the domain name in connection with WWIB’s local activity, it did

not seek or obtain approval for the content of its Web site, and it did not

advise NAFE of its intent to use the domain name. The Complainant further asserts

that WWIB could have no other interest in the domain name other than to benefit

from the goodwill that the Complainant has cultivated in the NAFE mark and that

such interest is not a legitimate one.

The Complainant asserts that, on or about December 7, 2000, it learned that

WWIB had announced the introduction of its Web site at <mynafe.com> and

was conducting its own business through that site. A copy of correspondence

from WWIB addressed to "NAFE Members" announcing the site was attached

as Annex G to the Complaint. The Complainant asserts that on December 8, 2000,

it asked Ms. Evelyn Beasley, President of WWIB, to cease using the domain name,

and stated that several members of NAFE were confused as to why the communication

originated from an individual (Ms. Beasley), and not from the Association’s

headquarters. The Complainant asserts that Ms. Beasley responded to the Complainant’s

request but did not agree to stop using the domain name. Copies of the Complainant’s

correspondence and the Respondent’s reply were attached as Annex H.

The Complainant asserts that on January 3, 2001, counsel for the Complainant

sent a letter to WWIB, in which the Complainant advised WWIB of its rights in

the mark NAFE and of the guidelines that local networks must follow for using

the NAFE mark, and asked WWIB to stop using the domain name in issue. A copy

of the letter was attached to the Complaint as Annex I. The Complainant asserts

that on February 16, 2001, having received no response to its January 3, 2001,

letter, counsel for the Complainant sent a follow-up letter by certified mail

to WWIB, requesting that it transfer the domain name to the Complainant. The

Complainant further asserts that the certified letter was returned to its counsel

unclaimed. A copy of the follow-up letter was attached to the Complaint as Annex

J.

The Complainant asserts that on March 14, 2001, WWIB formally removed itself

from any affiliation with NAFE. A copy of correspondence from the Respondent

was attached as Annex K to the Complaint. Referring to the Respondent’s April

2001 Internet newsletter (attached to the Complaint as Annex F), the Complainant

asserts that at about the same time that WWIB removed itself from affiliation

with NAFE, WWIB changed its name to "The Networking Association for Female

Entrepreneurs," which also has the acronym "NAFE." The Complainant

asserts that WWIB continues to operate a Web site accessible at the domain name

in issue and that by changing its name, WWIB has not established a legitimate

interest in the domain name, particularly since it already has been asked by

the Complainant and its counsel to stop using the domain name.

The Complainant asserts that the Respondent has registered and has been using

the domain name in issue in bad faith, for the purpose of trading on the goodwill

that the Complainant has cultivated in the mark NAFE, because: (1) the Respondent

adopted the domain name in issue without permission; (2) the Respondent refused

the Complainant’s requests to stop using the domain name; (3) the Respondent

refused delivery of a letter from the Complainant’s counsel; (4) the Respondent

changed its name to one which shares the NAFE acronym after terminating its

affiliation with NAFE; and (5) the Respondent continues to use the domain name

in issue.

The Complainant further asserts that as a result of the Respondent’s registration

and use of the domain name in issue, the Respondent has disrupted the Complainant’s

business, confused its members and potential members into believing that the

Respondent’s Web site is a site sponsored by, endorsed by, or affiliated with

the Complainant, and has created a likelihood of confusion with the NAFE mark

as to the Respondent’s affiliation with NAFE, all with no countervailing justification.

The Complainant asserts that the Respondent’s intention when it first adopted

the domain name obviously was to indicate its association with the Complainant.

However, the Complainant asserts that had the Respondent adopted the name in

good faith, it would have sought the Complainant’s permission and stopped using

the domain name in response to the Complainant’s first request. The Complainant

asserts that at the very least, the Respondent would have discontinued use of

the domain name after disaffiliating itself from NAFE and would not have changed

its name to one that also incorporates the NAFE acronym. The Complainant asserts

that the Respondent’s conduct confirms that it adopted and continues to use

the domain name in issue in bad faith.

Respondent

In its Response, the Respondent asserts that Westchester Women in Business

Network, Inc., was established in April 1992 as a 503(c)(6) non-profit corporation

in the state of New York and is designed and dedicated to: (a) providing networking

forums for businesspersons; (b) promoting mentorship and apprentice programs

for high school students; and (c) providing educational business workshops for

minorities and economically disadvantaged people. The Respondent asserts that

in May 1998, Westchester Women in Business Network established a local chapter

in the state of Maryland called Working Women in Business Network, whose objectives

are identical to those of its parent company.

The Respondent asserts that in October 2000 the Maryland chapter formerly known

as Working Women in Business Network changed its name to the "Networking Association

for Female Executives" [sic], at which time the parent company registered the

domain name <mynafe.com> with Network Solutions, Inc., to promote the

Maryland chapter’s organizational goals.

The Respondent asserts that its <mynafe.com> Web site clearly displays

on its default home page the name of the organization "Networking Association

for Female Entrepreneurs" so there can be no confusion as to whom the site belongs

to and there are no links associated with the <nafe.com> Web site or references

to the National Association for Female Executives embedded in the site.

Finally, the Respondent asserts that, in its opinion, "mynafe is not a

registered trademark in the state of New York." Alternatively, the Respondent

has asked whether the domain names <ournafe.com>, <ournafe.biz>,

<mynafe.org>, <mynafe.biz> and <ournafe.org> would be available

to the Respondent for registration [1].

6. Discussion and Findings

The Proceeding Three Elements

Paragraph 4(a) of the Policy states that the domain name holder is to submit

to a mandatory administrative proceeding in the event that a third party complainant

asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name holder’s domain name is identical or confusingly similar

to a trademark or service mark in which the complainant has rights ("Element

(i)"); and

(ii) the domain name holder has no rights or legitimate interests in respect

of the domain name ("Element (ii)"); and

(iii) the domain name of the domain name holder has been registered and is

being used in bad faith ("Element (iii)").

The Panelist can only rule in a complainant’s favor after the complainant has

proven that the above-listed elements are present.

Element (i) Domain Name Identical or Confusingly Similar to the Mark

A complainant in a proceeding brought under the Policy must have rights in

the mark cited in that proceeding. In this proceeding, the Complainant asserts

ownership in the mark NAFE and has provided the pertinent documentation to support

its showing of ownership thereof. The Panelist finds such evidence to be sufficient

to conclude that the Complainant has rights in the mark NAFE.

A review of the second-level domain "mynafe" of the domain name in

issue shows that the domain comprises the possessive pronoun "my" and the Complainant's

mark NAFE. The Panelist does not find that the addition of the possessive pronoun

"my" is enough to prevent the domain name in issue from being confusingly similar

to the Complainant’s registered marks. Indeed, the idea suggested by this domain

name in view of the Complainant's registered marks and long-time use thereof

is that any possible goods or services offered in association with this domain

name are authorized by the Complainant and that any possible site associated

with this domain name is a site authorized by the Complainant. The fact that

the exact wording "mynafe" is not a registered trademark as noted

by the Respondent does not change such a finding. The Panelist therefore concludes

that Element (i) has been satisfied.

Element (ii) Rights or Legitimate Interests in the Domain Name

Paragraph 4(c) of the Policy sets out circumstances, in particular but without

limitation, which, if found by the Panelist to be proven based on the evaluation

of all of the evidence presented, can demonstrate the domain name holder’s rights

to or legitimate interests in the domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’s 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) the holder (as an individual, business, or other organization) has been

commonly known by the domain name, even if the holder has acquired no trademark

or service mark rights; or

(iii) the domain name holder is 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.

The record does not demonstrate nor has any evidence been presented that the

mark NAFE was ever assigned, granted, licensed, sold, or transferred to the

Respondent, or that the Respondent was ever in any way authorized to register

or use the mark in any manner or form. Nor has the Respondent provided any evidence

of circumstances such as those set out in Paragraph 4(c) of the Policy, above,

or of any other circumstance which might give rise to a right to or legitimate

interest in the domain name. Rather based upon the uncontested evidence submitted,

it is apparent that the Respondent had notice of and was at least aware of the

Complainant’s rights in the mark NAFE when it registered the domain name in

issue based upon the Respondent having been a local chapter of NAFE. In addition,

the Panelist finds that the Respondent did not establish rights to or a legitimate

interest in the domain name in issue by continuing with its preparations to

use, and proceeding to use, the domain name in issue for its Web site, while

it had notice of both the Complainant’s rights in its marks and of the dispute

with respect to the domain name in issue.

Nor has any evidence been presented that the Respondent has been known, as

an individual, business or otherwise, by the domain name in issue. Although

the Respondent was a local chapter of NAFE for several years, based upon the

evidence submitted, the Respondent operated under the names "Working Women

in Business Network" or "Westchester Women in Business Network"

- not under the name NAFE. Furthermore, based upon the uncontested evidence

submitted, it appears that operating as a local NAFE chapter does not give the

Respondent rights in the NAFE mark or the domain name in issue. Nor does the

Respondent’s subsequent renaming of its Maryland chapter's name to "Networking

Association for Female Entrepreneurs" (which also results in the acronym "NAFE")

and the corresponding changes to its home page at the domain name in issue help

to establish or create any rights to or legitimate interests in the domain name

in issue.

The Panelist also cannot find that the Respondent is making a legitimate noncommercial

or fair use of the domain name in issue. Rather the evidence submitted suggests

that the Respondent has been and is using the domain name in issue to divert

NAFE members to its site. Such a finding is supported by the Respondent’s own

Web site announcement addressed to NAFE members describing the Respondent’s

site as "a website community and home site for NAFE members' Webpages"

and offering banner advertisements and Web page design. The Panelist therefore

concludes that the Respondent has not established rights to or legitimate interests

in the domain name in issue and that Element (ii) has been satisfied.

Element (iii) Domain Name Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in

bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder 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 that complainant, for

valuable consideration in excess of the holder’s documented out-of-pocket costs

directly related to the domain name; or

(ii) the holder 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 the holder has engaged in a pattern of such conduct;

or

(iii) the holder has registered the domain name primarily for the purpose of

disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract,

for commercial gain, Internet users to the holder’s website or other online

location, by creating a likelihood of confusion with the complainant's mark

as to the source, sponsorship, affiliation, or endorsement of your website or

location or of a product or service on the holder’s website or location.

Based upon the parties’ assertions and the evidence submitted, the Panelist

finds that the Respondent had knowledge of the Complainant's mark NAFE when

registering the domain name in issue. This finding is predicated on the fact

that the Respondent operated as a local chapter of NAFE for several years and

that the Respondent’s president has been a Network Director of NAFE for eleven

years. Moreover, as discussed above, despite receiving requests from the Complainant

to discontinue use of the mark NAFE in connection with the Respondent’s services

and Web site, the Respondent continued preparing to use and is using the domain

name in issue with knowledge of the Complainant’s rights in the mark. In view

of the evidence submitted, together with the above findings that the domain

name in issue is confusingly similar to the Complainant’s mark NAFE and that

the Respondent has no rights to or legitimate interests in the domain name in

issue, the Panelist finds that the Respondent registered the domain name in

issue in bad faith.

The Complainant asserts that the Respondent registered and is using the domain

name in issue in bad faith based upon the Respondent having: (i) adopted the

domain name in issue without permission; (ii) refused the Complainant’s requests

to stop using the domain name; (iii) refused delivery of a letter from the Complainant’s

counsel; (iv) changed its name to one which results in the acronym "NAFE"

after terminating its affiliation with NAFE; and (v) continued to use the domain

name in issue for the purpose of trading on the goodwill of the Complainant’s

mark. The Complainant further asserts that as a result, the Respondent has disrupted

NAFE’s business, confused NAFE’s members and potential members into believing

that the Respondent’s site is a NAFE Web site and has created a likelihood of

confusion with the NAFE mark as to the Respondent’s affiliation with NAFE.

Based upon the findings and uncontested evidence submitted, the Panelist concludes

that the Respondent’s registration and use of a domain name, confusingly similar

to the Complainant’s mark along with a Web site accessible at the domain name

offering similar services and information as that of the Complainant, is an

attempt by the Respondent to attract Internet users, particularly NAFE members

and potential members, to its site. When viewed in conjunction with the uncontested

evidence submitted of the Respondent’s statements offering similar services,

including banner advertisements and Web page design, to the same audience as

that of the Complainant, such statements further support a finding that the

Respondent registered and is using the domain name in issue to create initial

interest confusion among users who visit the Respondent’s site as to the source,

sponsorship, affiliation or endorsement of its site and the services and information

offered thereon. The Panelist also finds that the Respondent disassociating

itself from the Complainant after receiving repeated requests to cease use of

the mark NAFE and renaming its organization to the "Networking Association

for Female Entrepreneurs" or "NAFE" in an attempt to legitimize

its continued use of the domain name in issue does not now somehow negate or

lessen its prior use of the Complainant’s NAFE mark.

The Panelist therefore concludes that the Respondent has intentionally attempted

to attract Internet users, particularly NAFE members and potential members,

to its site by creating a likelihood of confusion with the Complainant’s mark

NAFE, as to the source, sponsorship, affiliation or endorsement of its site

or of the services thereon. Element (iii) has therefore been satisfied.

7. Decision

The Panelist requires that the registration of the domain name <mynafe.com>

be transferred to the Complainant.

Marylee Jenkins

Sole Panelist

Dated: August 10, 2001

Footnotes:

1. In the present proceeding, the Panelist

can only consider the domain name in issue and cannot provide guidance as to

the possibility of registering these other domain names cited by the Respondent.