WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Mensa, Ltd. v. Millennium Energy Niche Studies Associative
Case No. D2000-1030
1. Introduction
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of three members was appointed on December 19, 2000 by WIPO.
Jurisdiction and Related Matters
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the Policy and Rules.
2. 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 Millennium Energy Niche Studies Associative, whose address is listed as 381 Iron King, Durango, Colorado 81301, USA.
The Domain Name and Registrar
Registrar:
Network Solutions, Inc.
505 Huntmar park Drive
Herndon, Virginia 20170
3. Procedural History
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 by 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 25, 2000. On September 14, 2000, the Center sent an email to the Complainant requesting it to amend the Complaint. The Amendment to the Complaint was received by email on September 14, 2000 and on September 18, 2000 by one original and four hard copies. 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. A Response was received on October 6, 2000 by e-mail and on October 9, 2000 by one original and four hard copies. An Acknowledgement of Receipt dated October 12, 2000 was sent by the Center.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
The Complainant asked to deliver a Reply. A majority of the Administrative Panel directed that it could do so on or before December 31, 2000 and this was done. The Respondent objected, but requested the opportunity to deliver a response. The Administrative Panel concurred with the admonition that the response should address matters raised in the Reply and should not repeat evidence or submissions made previously. No response was received by the due date, January 12, 2001.
The time for delivery of the Administrative Panel�s decision was extended to January 16, 2001.
4. Factual Background
The following facts are extracted from the Complaint.
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. � 1125(c)(1).
The Complainant owns the domain name . It maintains the web site www.us. and licenses the site to its international affiliate, Mensa International, Ltd.
The Respondent's predecessor-in-interest, Domain Name Service Bank ("DNS Bank"), registered the subject domain name on or about August 8, 1998. It is alleged that DNS Bank is a trader in domain names and it offered to sell the subject domain name to the Complainant. The offer was rejected and DNS Bank was informed that the Complainant asserted superior rights to the MENSA mark and associated rights.
The Complainant also noted that it had purchased the subject domain name in November 1997, but the transfer was never recorded and the registration expired. An attempt to resolve the matter through Internic was not successful.
In November and December 1998, there were further communications between DNS Bank and the Complainant in which the Complainant objected to information posted on the internet by DNS Bank, again stated the basis for its assertion of rights and sought transfer of the subject domain name to the Complainant.
DNS Bank transferred the subject domain name to Respondent between November 12, 1998 and January 23, 1999. It was registered by the Respondent on or about January 23, 1999.
A July 28, 2000 WHOIS database printout gives the Respondent�s Administrative Contact as Mr. Randy Ambrose and an address as 381 Iron King, Durango, CO 81301, USA. Mr. Ambrose is listed in the July 28, 2000 WHOIS listing with the address 2919 S. Patricio, Mesango, AZ 85212; fax number (970) 382-0271. A previous WHOIS listing, from March 28, 2000, showed Mr. Ambrose at the same address as the registrant and also with the fax number (970) 382-0271.
On March 17, 1999, a letter was sent to the Respondent by the Complainant asserting its rights to the MENSA mark and demanding immediate transfer of the subject domain name to it. There was no response.
On March 30, 1999, the Complainant filed a Domain Name Dispute regarding subject domain name with the registrar Network Solutions, Inc. On May 26, 1999, an attorney representing Mr. Ambrose "�the registered owner of the [subject] domain name�." wrote to Network Solutions, Inc. stating that it wished to place the subject domain name on-hold.
The subject domain name was placed on-hold, but when the Network Solutions, Inc. Domain Name Dispute program was terminated, the subject domain name was taken off the on-hold status and returned to active status under the registration of the Respondent.
Sometime in 2000, the Respondent linked the web site to a pornography site known as "Fetish Time" and, on May 25, 2000, representatives of the Complainant spoke to Mr. Ambrose. He was asked to delink the web site from pornography and this was done.
In the May 25, 2000 discussion, Mr. Ambrose also stated that he was looking for an attorney to represent him and that he was not seeking a profit for transferring the subject domain name, but merely wanted to recover the expenses that were incurred purchasing the subject domain name. In an e-mail confirming the contents of the discussion, the Complainant�s representative also asked: "Please, indicate if the $2,000 offer to transfer the [subject domain name] still stands. There is no other reference to the offer in the material filed by the Complainant in support of its application.
Subsequent to delinking the subject domain name from the pornography site, coupled with an assertion that close to $5,000 had been invested in the site, it displayed a message, stating that the subject domain name was for sale to whomever bid closest to or above $5,000., which was asserted to be the amount "invested" in the location.
The following information is taken from the Respondent�s response.
Mr. Ambrose used the subject domain name "�in connection with �providing advertising services under the trade name Ambrose Entertainment" and in connection with his employment as a network engineer, apparently as an e-mail address and for the purpose of transferring files.
Shortly after receiving a demand from the Complainant, through an attorney, Mr. Ambrose offered to sell the subject domain to the Complainant for $1,000, the "exact amount�paid for the [subject domain name]".
At some point the subject domain name, which in the German language relates to food, resolved to a site which provides information concerning German restaurants. It is related to a site operated by Mr. Ambrose entitled "germanfood@
In its Reply, the Complainant asserts that the Respondent "�linked the [subject] domain name�to pornography in an effort to extort money from the Complainant."
5. Parties� Contentions
A. Complainant
The Complainant relies on its use of and registration of the mark MENSA and asserts that the subject domain name is identical. It contends that the use by Mr. Ambrose of the site for e-mail and other limited business related matters does not give to him a right or legitimate interest in the subject domain name.
As to bad faith, the Complainant points to the fact that the subject domain name was under dispute before it was acquired by the Respondent, that it was linked by the Respondent to a pornographic site, that it was offered for sale generally and specifically to the Complainant.
B. Respondent
The Respondent concedes that the subject domain name is identical with the Complainant�s registered mark.
It is asserted that the Respondent has long used the subject domain name personally and professionally and in connection with German restaurants. It is denied that the Complainant is entitled to the exclusive use of the word "mensa" because it has different meanings in different languages.
Bad faith is not only denied, but the Respondent contends that the Complainant is harassing the Respondent and has done so for several years. The Respondent states an offer was made to transfer the subject domain name to the Complainant for its cost to the Respondent and that this was an act of good faith not bad faith.
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 rights or legitimate interests 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 Respondent�s 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 Respondent�s 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 it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
Reference is made to decisions of domestic courts. While these often are very helpful, they are not controlling in an ICANN domain name dispute. It also is important to note that this is not a forum in which ownership of intellectual property rights can be resolved finally.
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 established its right to its name and mark, MENSA. The Respondent concedes that the subject domain name is identical.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondent�s Legitimate Interests
The Respondent asserts that the subject domain name has been used in connection with Mr. Ambrose�s e-mail address: ambrose@. This fact alone would not give to the Respondent or to Mr. Ambrose a right or legitimate interest in the subject domain name. Although, the use constitutes some prima facie evidence to support the Respondent�s position, it is necessary to look at the full context.
Prior to January 23, 1999, the Respondent and Mr. Ambrose were not using the subject domain name. The Respondent�s full name � Millenium Energy Niche Studies Associative � is alleged by the Complainant to be an attempt to give legitimacy to the use of the word "mensa", which contains all of the first letters of the words in the Respondent�s name. The Respondent makes no comment on this. It does not appear to carry on any business activity under its name or to use the subject domain name.
When acquired, the subject domain name was under challenge. After its acquisition, the Respondent was prepared to have it put on hold. It has been used as a link to a pornography site, as an advertisement for sale and to link to a site dealing with German restaurants. The latter occurring after this proceeding was initiated.
While these may be proper, they do not establish a right or legitimate interest in the subject domain name which is identical to the Complainant�s existing rights.
The Administrative Panel is satisfied that the Complainant has met the requirement of paragraph 4(a)(ii).
C. Bad Faith
Mr. Ambrose asserts that an attorney acting for him wrote to the Complainant and offered to transfer the subject domain name "�for the exact amount Mr. Ambrose paid for domain. $1,800." No copy of this letter is provided, but the specific assertion is not denied by the Complainant, although it does say that it "�at no time received a firm price for the [subject] domain name from Mr. Ambrose. The only amount noted specifically in the Complainant�s material are $2,000 in an e-mail purporting to record a telephone discussion and $5,000 taken from a web page.
This evidence is not sufficient to support an implication of evidence of bad faith against the Respondent, but it can be taken into account in assessing the evidence overall.
The Respondent offers no explanation for the acquisition of the subject domain name. Although the Policy refers to "registration," for the purposes of the resolution of a domain name dispute, acquisition by purchase is the equivalent. Mr. Ambrose is experienced in the registration, acquisition and use of domain names. The subject domain name had been challenged. The Complainant had acquired the name and had taken the necessary steps to have it registered. The Respondent does not suggest that he was unaware of these facts and based on his knowledge and experience it is a reasonable inference that he knew them.
Mr. Ambrose alleges that he paid $1,800 for it, but provides no support for this contention. He asserts that he offered to sell the subject domain name for what he paid, but provides no support for this assertion. The documented evidence is that Mr. Ambrose spoke of a sale at $2,000 and that the subject domain name was advertised for sale at $5,000.
Although the Complainant asserts that the Respondent linked the subject domain name to a pornographic site " �in an effort to extort money from [the Complainant]," there is no evidence that the Respondent did so. There also is no evidence why the link was made. It has nothing to do with the uses of the site that the Respondent contends were legitimate. It is evidence which the Administrative Panel is entitled to take into account in considering the conduct of the Respondent.
As noted above, the examples of potential bad faith conduct stated in the policy are illustrative only. Respondent�s conduct contains elements of the examples and looking at the evidence as a whole, the Administrative Panel is satisfied that the Respondent acquired and used the subject domain in bad faith and that the requirements of paragraph 4(a)(iii) are met.
7. Decision
Based on the evidence and the finding made, it is the decision of the Administrative Panel that the Complainant has established its case. It seeks the transfer to it of the subject domain name.
The Administrative Panel orders that the domain name be transferred to the Complainant.
Edward C. Chiasson, Q.C.
Presiding Panelist
Sally M. Abel Luis H. de Larramendi
Panelist Panelist
Dated: January 26, 2001
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