DECISION

Management Plus Enterprises Inc. v. MPE Technology Services and 000-SJ43711

Claim Number:  FA0309000192746

PARTIES

Complainant is Management Plus Enterprises Inc., Manhattan Beach, CA, USA (“Complainant”) represented by P. Landon Moreland, of Manatt, Phelps & Philips, LLC.  Respondent is MPE Technology Services and 000-SJ43711, Brussels, Belgium (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mpe.com>, registered with R&K Globalbusinessservices, Inc. d/b/a 000Domains.Com (hereinafter “000Domains.Com”).

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 4, 2003; the Forum received a hard copy of the Complaint on September 4, 2003.

On September 4, 2003, 000Domains.Com confirmed by e-mail to the Forum that the domain name <mpe.com> is registered with 000Domains.Com and that Respondent is the current registrant of the name. 000Domains.Com has verified that Respondent is bound by the 000Domains.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On September 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 29, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@mpe.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 14, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <mpe.com> domain name is identical to Complainant’s MPE mark.

2. Respondent does not have any rights or legitimate interests in the <mpe.com> domain name.

3. Respondent registered and used the <mpe.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Management Plus Enterprises Inc., registered the <mpe.com> domain name on August 31, 1995 with Network Solutions, Inc., and used it in connection with sports entertainment and management, production and marketing services. Under the MPE mark, Complainant has represented many “stars” in the sports business, including Kareem Abdul-Jabbar, Oscar De La Hoya and Shaquille O’Neil. Complainant is also in the business of merging sports and entertainment, and has been responsible for such events as the “Rap & Jam” basketball/rap music tour, the creation of the World Championship of Beach Volleyball event, creating the Taco Bell “One-on-One” game which features various high-profile sports figures, and producing various projects such as the movies Blue Chips, Kazaam and Steel. Complainant has operated under the MPE mark since 1988.

On August 8, 2003, an unknown individual gained access to Complainant’s account with Network Solutions, Inc., and changed the name of the domain name registrant from Complainant to Respondent. On August 13, 2003, the domain name registration was moved from Network Solutions, Inc., to 000Domains.Com, the current registrar of the domain name. Complainant became aware that its domain name had been misappropriated on August 15, 2003, when Complainant’s website became unavailable and Complainant stopped receiving email for addresses at the <mpe.com> domain name. Respondent is currently making no use of the disputed domain name.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the MPE mark through widespread use of the mark in commerce, in addition to its longstanding use of the <mpe.com> domain name prior to this dispute. See Am. Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that Complainant held the domain name prior to Respondent’s registration, as well held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy).

Respondent’s <mpe.com> domain name is identical to Complainant’s MPE mark. The addition of the “.com” is inconsequential for the purposes of analysis under Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that the <mpe.com> domain name is identical to Complainant’s MPE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

According to the uncontroverted Complaint, Respondent assumed possession of Complainant’s domain name registration without authorization by Complainant. Respondent’s use of fraud to first gain access to Complainant’s account with Network Solutions, Inc. and then to transfer the domain name registration to itself is prima facie evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See generally Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <mpe.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Under the totality of the circumstances surrounding this dispute, Respondent registered and used the disputed domain name in bad faith. Respondent deliberately set upon a course of action to replace Complainant with itself as the registrant of the <mpe.com> domain name. Respondent never paid for the disputed domain name registration and was never authorized by Complainant to access or alter Complainant’s account with Network Solutions, Inc. Although Respondent technically never “registered” the disputed domain name, the Panel holds that Respondent’s conversion of the disputed domain name amounts to registration under the unique facts of this case, and is evidence of bad faith. Respondent’s transfer of the disputed domain name registration to a new registrar and subsequent decision to deny Complainant any use of the disputed domain name is evidence that the domain name was registered in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

The Panel thus finds that Respondent registered and used the <mpe.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <mpe.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated:  October 27, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1009.html