WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National Organization for the Reform of Marijuana Laws v. Industry Internet, LLC and Anthony Disano

Case No. D2002-0938

The Complainant is National Organization for the Reform of Marijuana Laws, a non-profit legal, educational and research organization based in Washington, District of Columbia, United States of America. Complainant is represented by Russell L. Cormican of the law firm Kent & Cormican, P.A., Fort Lauderdale, Florida, United States of America.

The Respondents are Anthony Disano, an individual residing in Chesterfield, Michigan, United States of America, and Industry Internet, LLC, apparently a limited liability company [1], located in New Baltimore, Michigan, United States of America.

The domain name at issue [Contested Domain Name] is: <norml.com>.

The registrar is Register.com, New York, New York, United States of America ("Registrar").

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on October 10, 2002, (electronic copy) and October 15, 2002 (hard copy). The Center verified that the Complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules][2]. Complainant made the required payment to the Center.

On October 14, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On October 18, 2002, the Registrar transmitted its verification response to the Center, confirming that Respondents are the Contested Domain Name's registrant, administrative contact, and billing contact. The Center verified that the Complaint satisfied the formal requirements of the Policy and the Rules on October 21, 2002.

The formal date of the commencement of this administrative proceeding is October 21, 2002.

On October 21, 2002, the Center transmitted Notifications of Complaint and Commencement of Administrative Proceeding to Respondents by email and post/courier. Although two emails were returned as "undeliverable" the couriered copy was delivered. As noted in the following paragraph, there is no question that Respondents received notice of this proceeding.

By email dated November 8, 2002, one Stephen H. Sturgeon, identifying himself as "Counsel for Respondent," requested a twenty day extension of time to respond to the Complaint. Complainant's counsel consented to the extension, and on November 14, 2002, the Center notified the parties' counsel that the time to respond was extended to November 30, 2002.

On November 22, 2002, Mr. Sturgeon notified the Center by email that he and his firm were withdrawing as Respondents' counsel. Respondent did not file a Response. The Center sent Respondent a Notification of Respondent Default on December 2, 2002.

In view of Complainant's designation of a single panelist and Respondent's default, the Center invited Richard G. Lyon to serve as a panelist.

On December 10, 2002, after receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The projected decision date is December 24, 2002.

Given that Respondent executed an agreement with the Registrar submitting to arbitration in accordance with the Policy, that Complainant and the Center complied with the Policy in all material respects, and that Respondent received actual notice of the proceeding and was given full opportunity to participate, I find that the Panel has jurisdiction over this dispute and the parties.

The Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules, and the Supplemental Rules.

The following description of the facts and circumstances comes from the Complaint. Except where expressly noted, each of Complainant's charging allegations is supported by documentary evidence annexed to the Complaint. Complainant's evidence includes email correspondence between the parties. Respondent's admissions referred to below come from these emails.

Complainant is a non-profit organization that provides legal, educational, and research assistance towards the "reform" of marijuana laws[3]. Since 1970, it has operated under the acronym NORML, which term it uses as its service mark. The United States Patent and Trademark Office granted Complainant a service mark registration for NORML in international class 42 in October 1974. (Complaint, annex 3) Complainant maintains a website at "www.norml.org".

Respondent registered the Contested Domain Names with the Registrar on or about August 3, 1998.

Between September 1999 and May 2000, the parties corresponded regarding Respondent's registration of the Contested Domain Name. Relevant to this proceeding are the following:

Immediately upon learning of Respondent's registration and use of the Contested Domain Name Complainant objected, based upon similarity to Complainant's mark and asserted confusion of individuals seeking Complainant's website, and requested a transfer of the Contested Domain Name to Complainant.

Respondents acknowledged both similarity with Complainant's mark and website and their intentionally choosing the Contested Domain Name because of that similarity.

Complainant consistently offered to reimburse Respondents for their costs of registering the Contested Domain Name. Complainant made it clear that it intended to resort to arbitration under the Policy if necessary, sometimes providing deadlines to Respondents for voluntary transfer or cancellation.

Respondents initially indicated a willingness to transfer, provided that they earned "a profit." Respondents acknowledged that they had considered sale of the Contested Domain Name to "headshops." After establishing their "DBA" (see third following paragraph), however, Respondents determined to keep the Contested Domain Name [4].

The email correspondence ended in May 2000, more than two years before the commencement of this proceeding.

Complainant alleges, and Respondent acknowledged, that at one time the Contested Domain Name resolved to a pornographic website. Immediately after Complainant's first notification, however, Respondents discontinued this link. The Contested Domain Name now resolves to a one page web site entitled Northern Michigan Laboratories, LLC, with a logo containing a marijuana leaf and a link captioned "It's Your Life! Click here for drug testing news & information." Clicking on the link takes the user to "www.cleartest.com", at which is promoted a product claimed to enable a user to defeat of various drug tests. (Complaint, paragraph 11o-p; Annex 12; verified by the panelist on December 12, 2002).

In his emails to Complainant, Respondents assert that NORML is an abbreviation or acronym for NORthern Michigan Laboratories, a "DBA"[5] in which Respondents claim an interest. According to Respondents, this entity "engages in natural gas well testing in northern Michigan." There is no mention of well testing or natural gas on the website at the Contested Domain Name or on the cleartest website. Respondents did not identify this company nor offer this justification for the selection of the domain name until several months after Complainants first notification.

The metatags for the website at the Contested Domain Name include many ordinary and slang words commonly used to describe marijuana or its use[6]. The only metatags referring to testing are to urine and drug testing, not natural gas testing.

Complainant contends as follows:

The Contested Domain Names are identical to Complainant's registered mark except for the top level domain name.

Respondent has no rights or legitimate interests with respect to the Contested Domain Names because (1) Complainant has not licensed Respondent to use its mark, (2) prior to registering the Contested Domain Name, Respondents were never been known by the name NORML and never did business under that name or any name from which these initials could be derived, (3) Respondents' subsequent selection of Northern Michigan Laboratories is an after-the-fact pretext intended only to justify misuse of Complainant's mark, (4) Respondents have provided no evidentiary support for their asserted justification, and (5) Respondents are intentionally trading off Complainant's mark to attract customers to their business.

Respondents registered and have used the Contested Domain Names in bad faith because (1) Respondent registered the Contested Domain Name for the purpose of gaining a business advantage as a result of Internet users' confusing Respondents' site with Complainant's site and thereby capitalizing on Complainant's good name and goodwill, (2) Respondents have intentionally used the domain to attract internet users to his website, and to derive financial gain from them, by creating and using confusion that Complainant’s mark is somehow affiliated with or endorses the commercial product advertised on the website, and (3) Respondents have admitted seeking to sell the Contested Domain Name to "headshops" (which would also benefit from internet traffic from those seeking Complainant's site) for a profit.

Respondents have not responded to the Complaint. Their sole justification in the email correspondence is that they properly own the "DBA" Northern Michigan Laboratories and are therefore entitled to use an acronym of that name as their internet address.

I shall proceed to a decision based on the Complaint and the evidence submitted by Complainant. The absence of a response does not mean that I may accept as true the allegations of the Complaint; Complainant retains its burden of proving the requisite elements of Paragraph 4(a) of the Policy by competent evidence. [7]

In order to prevail in this administrative proceeding, Complainant must prove the following elements, which are set out in Paragraph 4(a) of the Policy:

(i) Respondents' domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests with respect to the domain name; and

(iii) Respondents' domain name has been registered and is being used in bad faith.

The Contested Domain Name incorporates Complainant's registered mark. Many panels have held that the top level domain name (here, .com) does not serve to distinguish between the mark and the contested domain name or to obviate the confusion that is certain to arise from verbatim use of another's mark in a domain name. Confusion is obvious and, as noted, was intentional.

A complainant has the burden of proving that the respondent does not have a legitimate interest in the disputed domain name[8]. Since there is not a strict logical means of proving a negative fact, several Panels have recognized that a complainant can meet this burden with a prima facie showing. [9] Once a complainant has made this prima facie showing, the burden shifts to the respondent to show that the respondent has a legitimate interest in the domain name.

Although decisions under the Policy are not entirely consistent about what constitutes a prima facie showing, under any standard Complainant in this case has met its burden of proof with competent evidence, as described above.

Respondents claim legitimacy solely on the basis of a trade name that can be made into the basis for the acronym NORML. The safe harbor in paragraph 4(c)(ii) of the Policy requires that a respondent "have been commonly known [by the contested domain name] in connection with a bona fide offering of goods or services." Use of the past tense, and common sense, imply that identification with the contested domain name occur prior to use of the contested domain name. That is consistent with trademark law, which allows a prior user of a mark in good faith to continue with that use even after another's registered mark become incontestable. In this case there is no evidence that Respondents used the Contested Domain Name for any purpose other than a pretext, and a pretext concocted only after registering the Contested Domain Name and a cease and desist letter from Complainant. Respondents are using the site "for commercial gain" and "to misleadingly divert consumers."[10]

Respondents have admitted bad faith in registration and use by acknowledging that they selected the Contested Domain Name because of its identity with Complainant's mark. This was also the reason that led them eventually to refuse to transfer the Contested Domain Name to Complainant, perforce to continue taking advantage of Complainant's mark by attracting to their site those users interested in Complainant's lobbying activities. While the parties are not competitors –Complainant doesn't sell anything – the harm to Complainant is exactly analogous to that suffered by a trademark plaintiff in an infringement action: diversion of supporters, confusion over the origin of the infringer's goods or services, and a free ride on the goodwill in its mark.

The only factual circumstance that distinguishes this proceeding from a garden-variety cybersquatting case is Complainant's delay of two years in commencing this proceeding. This may be explained by an allegation in the Complaint, unsupported by any evidence, that Complainant earlier sought unsuccessfully to bring a lawsuit against Respondents. Whatever the reason, Respondents [11] have not shown any prejudice to themselves in reliance upon the delay, so there is no basis for any finding of estoppel.

For the foregoing reasons, the Panel orders that the Contested Domain Name be transferred to the Complainant.

1. "LLC" is a common abbreviation for "limited liability company" or "limited liability corporation." Respondent Industry Internet, LLC is listed as an owner of the Contested Domain Name in the Registrar's "whois" database. Neither party has furnished any information about its charter jurisdiction.
2. The electronic copy of the Complaint does not include Complainant's agreement to submit to the courts in an appropriate jurisdiction, as required by Rule 3(b)(xiii). The hard copy, however, includes (paragraph 14) an agreement to submit to the jurisdiction of the courts "at the location of the principal office of the concerned registrar."
3. Complainant's notion of reform is "to achieve the repeal of marijuana prohibition so that the use of marijuana by responsible adults is no longer subject to penalty." (Mission Statement)
4. Respondents several times indicated that they intended "to fight to the end" to retain the Contested Domain Name.
5. The initials DBA, usually divided by slashes (d/b/a) are a common shorthand reference to "doing business as." While I have never before encountered this abbreviation as a noun, I understand Respondents' use of the term as meaning a name under which they do business.
6. E.g., mary jane, pot, reefer, headshops.
7. Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423.
8. Policy, 4(a); Dell Computer Corp. v. Clinical Evaluations, supra.
9. Compare Credit Suisse Group v. Milanes-Espinach, WIPO Case No. D2000-1376 and Anti Flirt S.A. v. WCVC, WIPO Case No. D2000-1553, with Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467
10. Policy, 4(c), parts (ii) and (iii).
11. The allegation (Complaint, 15) is A Federal Lawsuit was instituted by Complainant in the Southern District of Florida, but was dismissed when Complainant was unable to effectuate service of process upon Respondent. It is Complainant's belief that Respondent deliberately avoided accepting service to prevent the matter from proceeding. No decision on the merits of that case was ever reached. Complainant provides no further information about this lawsuit. Since this is an allegation unsupported by any evidence, I give it no weight.