DECISION

Toastmasters International v. Bealo Group S.A.

Claim Number:  FA0307000167968

PARTIES

Complainant is Toastmasters International, Mission Viejo, CA, USA (“Complainant”) represented by Paul D. McGrady, of Ladas & Parry.  Respondent is Bealo Group S.A., Geneve, China (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toastmastersd57.org>, registered with Online NIC.

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 9, 2003; the Forum received a hard copy of the Complaint on July 10, 2003.

On July 9, 2003, Online NIC confirmed by e-mail to the Forum that the domain name <toastmastersd57.org> is registered with Online NIC and that Respondent is the current registrant of the name. Online NIC has verified that Respondent is bound by the Online NIC 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 July 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 4, 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@toastmastersd57.org 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 August 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <toastmastersd57.org> domain name is confusingly similar to Complainant’s TOASTMASTERS mark.

2. Respondent does not have any rights or legitimate interests in the <toastmastersd57.org> domain name.

3. Respondent registered and used the <toastmastersd57.org> domain name in bad faith.

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

FINDINGS

Complainant, Toastmasters International, is a non-profit organization dedicated to helping others to speak effectively in public settings. Incorporated in California in 1932, Complainant currently has clubs in over 70 countries worldwide and holds many registrations for the TOASTMASTERS mark worldwide (e.g. U.S. Reg. No. 555,137, registered with the U.S. Patent and Trademark Office on February 19, 1952; Taiwanese Reg. No. 358,187; Japanese Reg. No. 2,462,775).

Respondent, Bealo Group S.A., registered the <toastmastersd57.org> domain name on June 24, 2001, and is not licensed or authorized to use Complainant’s TOASTMASTER mark for any purpose. Upon arriving at the disputed domain name, Internet users are subjected to an advertisement for pills designed to increase the size of the male member, with a hyperlink to the <natural-penis-enlargement-now.com> domain name prominently displayed.

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 TOASTMASTERS mark though continuous use of the mark in commerce as well as through registration of the mark with the appropriate governmental authorities worldwide.

Respondent’s <toastmastersd57.org> domain name is confusingly similar to Complainant’s TOASTMASTERS mark. The addition of the alphanumeric string “d57” does not distort the fact that the dominant feature of the disputed domain name is Complainant’s TOASTMASTERS mark, and does not prevent a finding of confusing similarity with the mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).

Accordingly, the Panel finds that the <toastmastersd57.org> domain name is confusingly similar to Complainant’s TOASTMASTERS mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent uses the <toastmastersd57.org> domain name to advertise a penile enlargement supplement, a product that bears no relation to the TOASTMASTERS mark. Such opportunistic use of Complainant’s mark in a domain name cannot be considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Similarly, the commercial nature of Respondent’s use denies it the protections of Policy ¶ 4(c)(iii). Thus, the Panel finds that neither of these safe harbor provisions apply to Respondent. See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where Respondent was using Complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under Complainant’s mark); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Respondent received no license or authorization by Complainant to use the TOASTMASTERS mark in a domain name, and there is no other evidence before the Panel indicating that Respondenet was ever “commonly known by” the disputed domain name. Hence, the Panel finds Policy ¶ 4(c)(ii) inapplicable to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <toastmastersd57.org> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <toastmastersd57.org> domain name in bad faith. By appropriating Complainant’s mark in the disputed domain name, Respondent created an initial likelihood of confusion with that mark, fostering the assumption that the content at the disptued domain name is somehow sponsored or endorsed by Complainant. By creating this likelihood of confusion in the minds of Internet users with the intent to attract them to commercial advertisements, presumably for commercial gain, Respondent’s activities evidence bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, or affiliation of the website); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

The Panel thus finds that Respondent registered and used the <toastmastersd57.org> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <toastmastersd57.org> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  August 25, 2003

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