Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Women in Military Service for America Memorial Foundation, Inc.

v. Russian Web Marketing

Case No. D2001-0610

1. The Parties

Complainant is Women in Military

Service for America Memorial Foundation, Inc., a not-for-profit corporation organised

under the laws of the District of Columbia, United States of America (U.S.A.),

with its principal place of business at 5510 Columbia Pike, Suite 302, Arlington,

Virginia 22204, U.S.A.

Respondent is Russian Web Marketing, with an address

at Bolshoy Golovin, Moscow 119832, Russia, according to information provided by

the Registrar.

2. The Domain Name and Registrar

The

domain name in dispute is <wimsa.org>. The Registrar is BulkRegister.com.

3.

Procedural History

a) The Center received Complainant's Complaint by e-mail on April 27,

2001, and by hard copy on April 30, 2001. Payment in the required amount

to the Center has been made by Complainant.

b) On April 30, 2001, a request for registrar verification was sent by

the Center to the Registrar requesting confirmation that it had received a copy

of the Complaint from Complainant, that the domain name was currently registered

with it and that the policy was in effect, and requesting full details of the

holder of the domain name and advice as to the current status of the domain

name. Confirmation was received from the Registrar on April 30, 2001, that

it had received a copy of the Complaint on April 30, 2001, that the domain

name <wimsa.org> was registered with it, that Respondent was the

current registrant and that the Uniform Domain Name Dispute Resolution Policy

applied to the domain name. The Registrar also provided contact details for

the domain name registrant, and the registrant’s technical and administrative

contacts.

c) On May 4, 2001,

the Center forwarded Notification of Complaint and Commencement of Administrative

Proceeding to Respondent, by e-mail sent to the e-mail address provided by the

Registrar for Respondent’s administrative and technical contacts, and also to

the e-mail address "postmaster@wimsa.org".

The Center was advised

that the address <postmaster@wimsa.org> had permanent fatal errors.

The

Notification of Complaint and Commencement of Administrative Proceeding was also

forwarded by FedEx to Russian Web Marketing, at the address provided by the Registrar,

namely Bolshoy Golovin, Moscow 119832, Russia (R.U.). The document so forwarded

by FedEx was returned by FedEx to the Center for failure to deliver, the name

and address for Russian Web Marketing having been crossed out.

The same

document, Notification of Complaint and Commencement of Administrative Proceeding,

was attempted to be forwarded to Respondent at the facsimile address provided

by the Registrar. This transmission failed as it could not be completed.

The

Notification of Complaint and Commencement of Administrative Proceeding was also

forwarded to Complainant at the e-mail address it had provided.

The Notification

of Complaint and Commencement of Administrative Proceeding confirmed the date

on which the Complaint had been received by the Center and that the formal requirements

had been satisfied and advised that the formal date of the Commencement of Administrative

Proceeding was May 4, 2001. The Notification of Complaint and Commencement

of Administrative Proceeding further stated that Respondent had twenty calendar

days from the date it received this Notification in which to submit a Response,

the last day for sending its Response to Complainant and to the Center being May 23,

2001.

Furthermore, the Notification of Complaint and Commencement of Administrative

Proceeding provided that, if the Response were not sent by the above date, Respondent

would be considered in default, that an Administrative Panel would still be appointed

to review the facts in the dispute and to decide the case, and that the Administrative

Panel would have discretion to decide whether to consider a late filed Response

and to draw such inferences from Respondent’s default as it considered appropriate.

d)

On May 29, 2001, as no Response from Respondent had been received by the

Center, the Center attempted to forward Notification of Respondent Default to

Respondent, at the e-mail address provided by the Registrar, and was advised that

the message was undeliverable as the user account for said e-mail address provided

by the Registrar had been disabled. Notification of Respondent Default was forwarded

by the Center by e-mail to Complainant.

e) On June 14, 2001, Notification

of Appointment of the Administrative Panel and Projected Decision Date ("the

appointment notification") was sent to Complainant by e-mail and was attempted

to be sent by e-mail to Respondent’s e-mail address provided by the Registrar.

The appointment notification informed the parties that the administrative Panel

would consist of a single member, Joan Clark, who had signed and forwarded to

the Center a Statement of Acceptance and Declaration of Impartiality and Independence.

The appointment notification also stated that the expected decision date was June 27,

2001. This date was later extended to July 11, 2001.

4. Factual

Background and Parties’ Contentions

The Complaint

In its Complaint, Complainant Women in Military Service for America Memorial

Foundation, Inc. (WIMSA) states that it was established as a not-for-profit

corporation in 1986 after President Ronald Reagan signed legislation authorising

a National Memorial to honour the 1.8 million women who have served in America’s

Armed Forces. The Complaint states that the initial purpose of WIMSA was to

raise funds for the new Memorial to be erected at the entrance to Arlington

National Cemetery in Arlington, Virginia, and that, after over $60 million had

been raised from active fundraising, the WIMSA Women’s Memorial was completed

and dedicated on October 18, 1997. The Complaint further states that WIMSA

continues to raise money to upgrade and maintain the WIMSA Women’s Memorial

and to conduct related activities honouring women in the military.

The Complaint states that the WIMSA Women’s Memorial

attracts about 200,000 visitors annually and that it includes a bookstore, a theatre,

an exhibit gallery that tells the story of women’s military service and a computer

register containing photographs, military histories and memorable experiences

of numerous women veterans.

The Complaint states that the term WIMSA is

derived from Women in Military Service for America, and that for close to 15 years,

Complainant and its supporters have used the term WIMSA to identify Complainant

and its products and services related to the WIMSA Women’s Memorial.

The

Complaint states that on November 17, 1997, WIMSA registered the domain name

<wimsa.org> and established an Internet web site at that Internet

address. The Complaint states that the wimsa.org web site quickly became a popular

destination for WIMSA supporters. The Complaint states that WIMSA invested a great

deal of resources in launching and maintaining its <wimsa.org> web

site, including adding the domain name to its letterhead, brochures and advertisements.

The Complaint states that Complainant has used and continues to use WIMSA as part

of its e-mail address.

The Complaint states that in mid-2000, Complainant

decided to emphasise further the importance of the WIMSA Women’s Memorial by adopting

and marketing a new domain name: <womensmemorial.org> for its web site.

The Complaint states that Complainant chose to let its registration for <wimsa.org>,

which was due for renewal on November 18, 2000, lapse so that it might be

available for a bona fide use by another legitimate entity.

The Complaint

states that on March 15, 2001, Complainant learned that its former domain

name, <wimsa.org>, was directing Internet users to a pornographic

web site. The Complaint states that Complainant soon began to receive a large

volume of complaints and enquiries from those who either had not yet learned of

Complainant’s new Internet address, <womensmemorial.org> or had been lead

to the pornographic web site located at <wimsa.org> by an outdated

link on a search engine, such as YAHOO, or a link on a third party web site.

The

Complaint states that Respondent’s domain name, <wimsa.org>, currently directs

Internet users to a web page that simply says "Enter", that when the

user clicks on "Enter", the user is taken to a site which features the

phrase "Welcome" at the top of the page and pornographic pictures with

three separate "Enter" links. The Complaint states that when the user

clicks on these three links, the user is taken to (1) a site featuring the

phrase "Best of XXX" and links to other pornography web sites, (2) a

site which features pornographic material allegedly featuring celebrities and

(3) a web site advertising a "natural penis enlargement solution".

The

Complaint states that if the Internet user does not click on "Enter"

at the enter page and tries to exit, the user is taken to other sites which feature

pornographic material.

The Complaint states that the above situation has

caused Complainant substantial harm in that its supporters and friends are exposed

to pornography and WIMSA is associated with this tawdry material. The Complaint

states this is particularly offensive, given Complainant’s mission of promoting

the image and history of women in the U.S. Military.

The Complaint states

that Complainant is the owner of the common law trademark WIMSA which was first

used in 1986 for non-profit fundraising services and related goods and services

in connection with the Memorial for women who have served in the U.S. Military

Services. Complainant is also the owner of two U.S. trademark registrations which

include "WOMEN IN MILITARY SERVICE FOR AMERICA MEMORIAL" as a prime

component. These marks were registered in 1990 and 1996.

The Complaint states

that through its long-standing fundraising activities and its administration of

the Women’s Memorial, Complainant has acquired tremendous recognition and goodwill

in the WIMSA common law trademark. Complainant has provided a signed declaration

by Brigadier General Wilma L. Vaught, U.S.A.F. retired, the President of Complainant,

stating that the mark WIMSA has been in substantially exclusive and continuous

use by Complainant from at least 1986 to the present for identifying its non-profit

fundraising and administrative services in connection with the Memorial for women

who have served in the U.S. Military Services, and related goods and services.

The

Complaint states that the domain name in dispute which wholly appropriates Complainant’s

WIMSA mark is identical or at least very confusingly similar to Complainant’s

common law trademark.

Complainant submits that the disputed domain name

is also confusingly similar to Complainant’s registered trademarks which include

as their prime feature Women in Military Service in America. The Complaint submits

that recognized abbreviations of trademarks are entitled to the same protection

as the original full trademarks.

The Complaint states that there is no evidence that Respondent has any rights

or legitimate interests in the disputed domain name. The Complaint states that

to the best of Complainant’s knowledge, Respondent (a) has not used or

engaged in any demonstrable preparations to use the domain name or a name corresponding

to the domain name in connection with the bona fide offering of goods

and services; (b) is not commonly known by the domain name; and (c) is

not making a legitimate non-commercial or fair use of the domain name (without

intent to tarnish the trademark and to divert Internet users for commercial

gain).

The Complaint states that Respondent’s

use of the domain name to direct Internet users to pornographic material does

not give Respondent any rights or legitimate interests in <wimsa.org>. The

Complaint states that Respondent registered and is using the <wimsa.org>

domain name solely to drive Internet traffic from outdated links to WIMSA’s former

<wimsa.org> domain name and to capitalise on the public’s association of

WIMSA with Complainant for commercial gain.

The Complaint states that bad faith use of the domain name is not bona fide

use and thus does not establish rights or legitimate interest in the domain

name. Complainant cites in support National Football League Properties, Inc.

and Chargers Football Company v. One Sex Entertainment Co. aka chargersgirls.net

(WIPO Case No. D2000-0118).

The

Complaint submits that the domain name in dispute was registered and is being

used in bad faith. The Complaint states that even domain names that have lapsed

must not be registered and used in bad faith and in support refers to the case

of InTest Corporation v. Servicepoint (NAF Case No. 95291).

The

Complaint states that Respondent registered and is using <wimsa.org> to

link to pornographic material and that Respondent’s choice of <wimsa.org>

was no coincidence. According to the Complaint, Complainant has reason to believe

that Respondent is in the business of registering recently expired domain names

for the sole purpose of diverting Internet users to its pornographic web sites

and to tarnish the former Registrant’s goodwill by using a confusingly similar

name to furnish pornography. The Complaint cites a number of situations which

could give credence to this assertion.

The Complaint submits that Respondent’s

conduct appears to violate paragraph 4(b)(i) of the policy because, according

to the April 26, 2001 Whois report for <wimsa.org>, Respondent is now

offering the <wimsa.org> domain name for sale and will not even consider

any offer less than $500. The Complaint asserts that this attempt to sell the

domain name leads to an inference that Respondent has registered the domain name

primarily for the purpose of selling it to Complainant or a third party far in

excess of any out of pocket expenses and costs related to the domain name in violation

of the policy.

As further evidence of bad faith, the Complaint states that

it appears that Respondent has provided false and misleading contact information.

The BulkRegister.com Registration Agreement states that its registrants must provide

"the name of an authorized person for contact purposes" and a telephone

number. The Complaint states that Respondent has not designated a person’s name

for contact purposes, and that Bolshoy Golovin, which would appear to be the name

of a person, is in reality a street in Moscow. The Complaint states that it was

not until April 6, 2001 that Respondent provided a telephone number. The

Complaint states that Respondent has not provided a complete street address for

the Registrant’s address. The Complaint states that Complainant’s representative

commissioned an investigation of Respondent’s contact information and determined

that the administrative telephone and facsimile numbers provided by Respondent

may be part of a system designed to make contact with Respondent difficult. The

Complaint states that Complainant’s representative has been unable to contact

Respondent at the telephone and facsimile numbers provided by Respondent.

Complainant

requests the administrative Panel to issue a decision that the domain name in

dispute <wimsa.org> be transferred to Complainant.

The Response

No Response has been submitted to the Center.

5. Discussion

and Findings

Pursuant to paragraph 4(a) of the Policy, Complainant

must prove each of the following in order that Respondent be required to submit

to a mandatory administrative proceeding:

(i) The domain name in issue is

identical or confusingly similar to a trademark or service mark in which Complainant

has rights, and

(ii) Respondent has no rights or legitimate interests in

respect of the domain name, and

(iii) The domain name has been registered

and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four

illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above,

shall be evidence of the registration and use of a domain name in bad faith but

are not limitative.

Paragraph 4(c) of the Policy sets out three illustrative

circumstances, without limitation, each of which, if proven, shall demonstrate

Respondent’s rights or legitimate interests in the domain name for purposes of

paragraph 4(a)(ii) above.

a) Identity or confusing similarity

of the domain name to a trademark or service mark in which Complainant has rights

The Panel finds that Complainant has established that it is the owner of the

trademark WIMSA and that the mark has been in substantially exclusive and continuous

use by Complainant from at least as early as 1986 to the present.

Although Complainant allowed its registration made November 17, 1997,

for <wimsa.org> to lapse, and in spite of the unusual statement that this

was so it might be available for a bona fide use by another legitimate

entity, in view of the statements in the Complaint and Brigadier General Vaught’s

declaration, the Panel finds that Complainant had not abandoned and at the time

of filing the Complaint was still the owner of common law rights in the trademark

WIMSA.

The Panel is also

of the view that the top level domain suffix ".org" should not be taken

into consideration in considering the identity or confusing similarity of the

domain name to a trademark.

The Panel concludes that the domain name in

dispute is identical to the trademark WIMSA in which Complainant has common law

rights.

In view of this finding, it is not necessary for the Panel to consider

Complainant’s additional submission that there is confusing similarity between

the domain name in dispute and Complainant’s full name, since the domain name

is made up of the initial letters of words appearing in Complainant’s full name.

b)

Rights or legitimate interests of Respondent in the domain name

(i) Respondent has used the domain name to direct internet users to various

pornographic web sites. The web page of <wimsa.org> contains only the

word "welcome" in small print at the top left, the web site address

for <wimsa.org> in small print at the top right, and the word "ENTER"

in large bold print in the center of the page. When the user clicks on "ENTER",

he or she is taken to a page containing pornographic material which has three

"ENTER" links, each of which would lead the user to a different pornographic

site. The use of a domain name to direct internet users to other web sites which

may offer goods or services does not constitute use of the domain name for the

bona fide offering of goods or services. (See Case

No. D2000-0118: National Football League Properties, Inc. and Chargers

Football Company v. One Sex Entertainment Co. aka chargersgirls.net,

where the domain name in dispute was used to direct internet users to a

pornographic web site; and WIPO Case No. D2000-0186:

Libro AG v. NA Global Link Limited, where the domain name was

used to redirect visitors to a different web site.)

The pornographic web sites,

to which Respondent’s web site under its domain name refers internet users, may

offer goods and services but this does not constitute a use of the disputed domain

name itself for the bona fide offering of goods or services.

(ii)

There is no evidence that Respondent has been commonly known by the disputed domain

name. The Panel finds that there was no justification for Respondent to have adopted

and used the domain name <wimsa.org>. Moreover, the Panel finds that WIMSA

is an unusual word, obviously "made up" and that it is inconceivable

that Respondent would have adopted this word as part of its domain name if Respondent

had not been aware of Complainant’s previously registered domain name and/or trademark.

In addition, Respondent has not made a non-commercial or fair use of the domain

name without intent to misleadingly divert customers or to tarnish Complainant’s

trademark.

(iii) No Response having been filed, Respondent has not refuted

Complainant’s contention that Respondent registered and is using the domain name

in dispute solely to drive Internet traffic from outdated links to Complainant’s

former <wimsa.org> domain name and to capitalise on the public’s association

of WIMSA with Complainant for commercial gain.

Not having filed a Response,

or communicated in any way with the Center, Respondent has not challenged any

of Complainant’s assertions. The burden of rebutting Complainant’s assertions

has not been met. The Panel finds that there was no justification for Respondent

to have adopted and used the domain name <wimsa.org>.

Based on its

evaluation of all evidence presented, the Panel concludes that Respondent has

no rights or legitimate interests in the domain name.

c) Registration

and use of the domain name in bad faith

Not having filed a response,

Respondent has not provided any explanation for the numerous circumstances which

the Complaint has asserted lead to a conclusion of bad faith on the part of Respondent

in registering and using the domain name. The Panel notes, as indicated above,

that WIMSA is an unusual made-up word and no reason appears from the record as

to why it would have been adopted by Respondent other than for its advantage to

Respondent in attracting Internet users to be directed to pornographic sites with

the result of tarnishing Complainant’s reputation and goodwill by using the same

domain name that is still associated with Complainant. The Complaint adds several

other reasons, in addition to the Panel’s observation that WIMSA is an unusual

made-up word not likely to be adopted without special reason. The Complaint states

that Complainant has reason to believe that Respondent is in the business of registering

recently expired domain names for the sole purpose of diverting Internet users

to pornographic web sites and cites several situations which would suggest such

a conclusion.

The Panel finds that, by registering and using the domain

name in dispute, Respondent has intentionally attempted to attract for commercial

gain Internet users to its web site and, from there, to direct them to various

pornographic web sites, by creating a likelihood of confusion with Complainant’s

WIMSA mark as to the source, sponsorship, affiliation or endorsement of Respondent’s

<wimsa.org> web site.

In addition, according to the April 26, 2001, BulkRegister.com report

for <wimsa.org>, Respondent was offering the domain name in dispute for

sale for a sum in excess of $50,000.

The Panel notes that it was impossible for the Center to communicate with Respondent

by mail at the address appearing in the Registrar’s records. Further, the Center

and Complainant both experienced great difficulty in contacting respondent or

its technical or administrative contacts by e-mail or by fax, and in fact it

appears it was not possible to make such contacts. The Panel finds the failure

of Respondent to provide the Registrar with complete contact information to

be evidence of bad faith (see Advanced Micro Devices, Inc. v.

[No Name], WIPO Case No. D2000-0515).

In view of the foregoing, the Panel concludes that

Respondent has registered and is using the domain name <wimsa.org> in bad

faith.

6. Decision

Based upon its evaluation of the

evidence and the inference the Panel is entitled to draw from the failure of Respondent

to file a Response, the Panel finds:

(a) the domain name <wimsa.org>

is identical to Complainant’s common law trademark WIMSA;

(b) Respondent

has no rights or legitimate interests in the domain name in dispute;

(c)

The domain name in dispute was registered and is being used in bad faith.

The

Panel directs that the domain name <wimsa.org> be transferred to Complainant.

Joan Clark

Sole

Panelist

Dated: July 11, 2001