Complainant is Sadd, Inc, a non-profit corporation duly authorized and existing under the laws of the Commonwealth of Massachusetts, having its principal place of business at 255 Main Street, Marlboro, Massachusetts USA.
Respondent is Steven Weber d/b/a Weber Technologies and Domainsale, P.O. Box 132, Harleysville, Pennsylvania 19438 USA.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <sadd.com>. The registrar is Network Solutions, Inc. (the "Registrar") 505 Huntmar Park Drive, Herndon, Virginia 20170-5139 USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Complainant on March 16, 2000 via email and on March 20, 2000 in hardcopy. The Complainant paid the required fee.
On March 21, 2000, the Center sent to the Registrar a request for verification of registration data, and the Registrar confirmed, inter alia, that it is the registrar of the domain name in dispute and that <sadd.com> is registered in the Respondent's name. Also on March 21, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant.
On March 23, 2000, the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
On March 24, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.
On March 24 and April 4, 8 and 10, 2000, the Center exchanged email with Respondent regarding the applicable procedures.
On April 10, 2000, the Center received the Response via email. On April 13, 2000, the Center received the Response in hardcopy. The Center sent Acknowledgments of Receipt of the Response on both dates.
After the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page, Esq. (the "Presiding Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Presiding Panelist.
4. Factual Background
Established in 1982, Sadd, Inc. ("SADD") is a non-profit corporation which has for over 19 years dedicated itself to addressing the issues of underage drinking, impaired driving, drug use and other destructive decisions and killers of young people. SADD has numerous chapters across the United States and abroad and thousands of members worldwide.
SADD’s mission is to provide students with the best prevention and intervention tools possible to deal with the serious issues young adults are facing today. SADD promotes a no-use message of alcohol and other drugs and encourages students not to participate in activities with destructive consequences.
SADD is the owner of six United States trademark registrations for marks which comprise or include the SADD mark, all of which are legally and validly registered on the Principal Register of the United States Patent and Trademark Office (the "SADD Marks"). The following chart lists SADD’s federal trademark registrations for the SADD Marks:
Mark
Reg. No.
Reg. Date
Goods/Services
1.
SADD
1,299,948
10/9/84
Educational Services – namely organizing and conducting seminars concerning
the dangers of drunk driving; providing curriculum guidance in the teaching
and instruction of anti-drunk driving programs and seminars; organizing
student chapters of students against driving drunk.
2.
SADD
1,550,726
8/8/89
Key rings; documentary and educational cinematographic film, pre-recorded
audio and video cassettes; printed matter, publications and educational
materials, namely books, pamphlets, newsletters, brochures and curriculum
guides and catalogs dealing with current issues surrounding alcohol, drugs
and attitudes, banners of paper decals, window decals, bumper stickers
and pens; bags namely book bags and tote bags; clothing namely t-shirts
and nightshirts; novelty pins and buttons, ornamental lapel pins and badges.
3.
SADD STUDENTS AGAINST DESTRUCTIVE DECISIONS
2,258,888
7/6/99
Stickers/decals, brochures, newsletters and printed forms all dealing
with teenage health and safety issues; tote bags; plastic key rings; t-shirts,
shirts, sweat tops, hats, caps; ornamental novelty pins; flying disks;
educational services – namely, organizing and conducting seminars concerning
issues related to teenage health and safety; providing curriculum guidance
in the teaching and instruction of programs and seminars dealing with
issues relating to teenage health and safety.
4.
SADD STUDENTS AGAINST DRUNK DRIVING
1,299,947
10/9/84
Educational services – namely, organizing and conducting seminars concerning
the dangers of drunk driving; providing curriculum guidance in the teaching
and instruction of anti-drunk driving programs and seminars; organizing
student chapters of students against driving drunk.
5.
SADD STUDENTS AGAINST DRUNK DRIVING
1,301,051
10/16/84
Indicating Membership in student organizations involved in campaign against
drunk driving.
6.
SADD STUDENTS AGAINST DRUNK DRIVING
1,551,597
8/15/89
Key rings; documentary and educational cinematographic film, pre-recorded
audio and video cassettes; printed matter, publications and educational
materials, namely books, pamphlets, newsletters, brochures and curriculum
guides and catalogs dealing with current issues surrounding alcohol, drugs
and attitudes, banners of paper decals, window decals, bumper stickers
and pens; bags namely book bags and tote bags; clothing namely t-shirts
and nightshirts; novelty pins and buttons, ornamental lapel pins and badges.
Since at least as early as 1981, SADD has substantially, continuously and exclusively used, in connection with its business, the trademark SADD alone and as a component of composite marks incorporating the term "SADD." As a result of substantial, continuous and exclusive use of the trademark SADD alone, and composite marks incorporating the term "SADD," since at least as early as 1981, SADD has built up substantial value and goodwill in the SADD Marks. Such goodwill extends throughout the United States and abroad. Based on Complainant’s long and continuous use of the SADD Marks, SADD is associated exclusively with Complainant and the SADD mark is famous as defined in 15 U.S.C. ยง 1125(e).
On or about March 2, 1999, without the consent of Complainant, Respondent registered the domain name <sadd.com> with the Registrar and began using the domain name <sadd.com> to point to a website on the Internet. At that time the website comprised a front page with the heading "WebComâ -- This Site Is Under Construction." After learning of Respondent’s registration of the <sadd.com> domain name, Complainant sent a cease and desist letter to Registrant notifying Registrant of its rights in the SADD Marks. As of February 16, 2000, the site <sadd.com> still contained a notice that the site was under construction.
On February 17, 2000, counsel for Respondent, Anthony J. DeGidio, Esq., responded to the notice of infringement. In such response, counsel for Respondent states that:
SADD is a surname. My client is developing a business that will provide email services, web hosting, genealogy, and other related services of benefit to individuals through the use of domain names containing their last name. In this respect, all of the Sadd’s [sic] of the world will have access to and use of the sadd.com domain name, as they should.
Later in the same correspondence, Mr. DeGidio argues that the case of Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) contains the "precise analysis that would be employed in determining whether or not SADD is famous or distinctive under the statute."
A printout of the first fifty domain names registered by Respondent discloses no domain names that might be characterized as "surnames." After Respondent’s February 17, 2000 correspondence, Respondent changed the <sadd.com> website so that it now comprises a page entitled "Familogy.com" which allows a user to "find what you are looking for" by entering a key word in a search engine and clicking on search. This is not a site established to serve the "Sadds" of the world. When the term SADD is entered into all five search engines located on the www.sadd.com website, websites for Complainant’s SADD regional chapters or other of Complainant’s sponsored organizations appear, giving the false impression that Respondent’s website is somehow affiliated with or endorsed by Complainant.
The domain name <sadd.com> does not comprise the legal name of Respondent or a name that is otherwise commonly used to identify Respondent. Complainant has never authorized, licensed or otherwise permitted Respondent or anyone else to use the SADD trademark or the SADD Marks or any variation thereof.
Respondentdid not, prior to notice of this dispute, use the <sadd.com> domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services. Respondent regularly offers domain names containing famous names or marks or minor variations of the same for sale for approximately $8,500, such as the email response from Steven Weber to Deborah Benson dated February 10, 2000. Respondent has regularly been a Defendant in actions involving domain names in the United States District Courts. For instance, in Jaguar Cars Ltd. et al v. Steven Weber, Civil Action No. 98-70623, in the United States District Court for the Eastern District of Michigan, Respondent was sued and enjoined for the domain names <jaguar.com> and <jag.com>. Suit was also brought against Respondent in the United States District Court for the Eastern District of Pennsylvania by the Franklin Mint Company over Respondent’s unauthorized use of the domain name <franklinmint.com>, Franklin Mint Company v. Steven Weber, Civil Action No. 98-CV-3011. Respondent ultimately was required to transfer the disputed domain name to the Franklin Mint Company. Additionally, suit was brought in the Federal District Court in Pennsylvania by The Claridge At Park Plaza, Inc. arising out of Respondent’s registration of the domain name <claridge.com>. The Claridge At Park Plaza, Inc. v. Steven Weber, Civil Action No. 98-CV-3757. This action was settled upon Respondent’s transfer of the domain name to Claridge.
5. Parties’ Contentions
A. Complainant contends that the domain name <sadd.com> is identical
with and confusingly similar to the SADD trademark and related SADD Marks
pursuant to the Policy paragraph 4(a)(i).
B. Complainant contends that Respondent has no rights or legitimate interest
in the domain name <sadd.com> pursuant to the Policy paragraph 4(a)(ii).
C. Complainant contends that Respondent registered and is using the domain
name <sadd.com> in bad faith in violation of the Policy paragraph 4(a)(iii).
D. Respondent presented no evidence contesting that the domain name <sadd.com>
is identical with or confusingly similar to the trademark SADD.
E. Respondent contends that he does have rights or legitimate interest
in <sadd.com> domain name.
F. Respondent contends that he has registered and used the <sadd.com>
domain name in good faith.
6. Discussion and Findings
Identity or Confusing Similarity
Complainant is the sole and exclusive owner of the SADD trademark and the SADD Marks. The domain name <sadd.com> contains the identical phrase "sadd." Respondent does not contest that the phrase is identical. Therefore, the Presiding Panelist finds that the domain name <sadd.com> is identical with and confusingly similar to the trademark SADD and the SADD Marks pursuant to the Policy paragraph 4(a)(i).
Rights or Legitimate Interest
The evidence demonstrates that Respondent has not used the domain name <sadd.com> or the website www.sadd.com for its own purposes prior to the dispute arising with Complainant. Respondent has not shown any demonstrable evidence of an intent to use the domain name <sadd.com> or the website www.sadd.com for its own purposes prior to the dispute arising with Complainant. Therefore, the Presiding Panelist finds that Respondent has no rights or legitimate interest in the domain name <sadd.com> pursuant to the Policy paragraph 4(a)(ii).
Bad Faith
The Presiding Panelist has found that Respondent has not used or intended to use the domain name <sadd.com> or the website www.sadd.com for its own purposes prior to the dispute arising with Complainant. In addition, Respondent has registered a large number of domain names, suggesting that Respondent is speculating in domain names.
In the case, J. Crew International, Inc. v. crew.com, ICANN D2000-0054,
a definition was developed to identify when speculation in domain names is in
bad faith. Registration of domain names for speculative purposes constitutes
a bad faith registration when (1) the respondent has no demonstrable plan to
use the domain name for a bona fide purpose prior to registration or acquisition
of the domain name; (2) the respondent had constructive or actual notice of
another's rights in a trademark corresponding to the domain name prior to registration
or acquisition of the domain name; (3) the respondent engages in a pattern of
conduct involving speculative registration of domain names; and (4) the domain
name registration prevents the trademark holder from having a domain name that
corresponds to its registered mark.
The Presiding Panelist has found no demonstrable plan to use. The domain name <sadd.com> was registered after the registration of the trademark SADD and the SADD Marks, thereby giving Respondent constructive notice of Complainant’s rights.
Respondent appears to have engaged in a pattern of conduct involving speculation such as the registration of the following famous names or trademarks of others:
Respondent has offered domain names for sale. Respondent’s registration of <sadd.com> prevents Complainant from registering the domain name which corresponds to its trademark SADD.
Therefore, the Presiding Panelist finds that Respondent has registered and used the domain name <sadd.com> in bad faith pursuant to the Policy paragraph 4(a)(iii).
7. Decision
The Presiding Panelist concludes (a) that the domain name <sadd.com> is identical with and confusingly similar to the trademark SADD and the SADD Marks, (b) that Respondent has no rights or legitimate interest in the domain name and (c) that Respondent registered and used the domain name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sadd.com> be transferred to Complainant Sadd, Inc.
Richard W. Page
Presiding Panelist
April 27, 2000
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