Below is the meat of the complaint against me and my right to RMO.COM. Any errors in the text are due to errors picked up during the scanning and Optican Character Recognition process as I was only furnished with a printed copy of the complaint.
[5.]FACTUAL AND LEGAL GROUNDS
[a.] Background
The domain name at issue in this Complaint is RMO.COM. On May 5: 1996, Andy Burbidge ("Burbidge"), an individual, registered the domain name RMO.COM with
Network Solutions, Inc. The domain name RMO.COM is presently associated with a web site developed by
Burbidge, a copy of which is attached as Exhibit A. Burbidge's web site is entitled "Welcome to the
RMO.COM web server" and the preamble states, "What is RMO? We are not quite sure really. I have vet to think of a good definition for
the letters R.M.O." The RMO.COM web site appears to contain information and photos
primarily relating to the Burbidge family. Several of the photos provided on the site are
of pornographic or questionable nature, copies of which are attached as Exhibits B - G.
(For reference, and to show how ludicrous the suggestions are, you can view the exhibits C and B, D, E, F and G)
RMO, Inc. ("RMO, Inc.") has used the mark RMO in connection with the research,
development, manufacture, distribution, sale and advertising of dental and orthodontic
goods and services since 1933. For 65 years RMO, Inc. has been a leader in
orthodontic goods and services with a focus on all aspects of orthodontia, including: (1) prevention
and interception: (2) early treatment; (3) teenage orthodontics; (?) adult orthodontics; (5)
rehabilitative dentistry orthodontics; (6) TMJ pain-related orthodontics; (7) surgical
orthodontics; and (8) breathing/airway/sleep problem orthodontics. RMO, Inc. provides
an entire range of products and services for the orthodontist, including orthodontic
appliances such as brackets, head gears, mouth guards, bands, wires, connectors, tubes,
pins, arches, adapters, extenders, and retainers, orthodontic instruments such as pliers,
probes, mirrors, scalers, wire cutters, and impression trays, and orthodontic services such
as training programs and seminars, and diagnosis and treatment services. As noted
above, RMO, Inc. is the owner of U.S. Trademark Registration No. 1,488,072 for the
mark RMO, a copy of which is attached as Exhibit H. RMO, Inc. is also the owner of
numerous foreign trademark registrations for the mark RMO. While RMO, Inc. is a
family owned business located in Denver, Colorado, 50% of RMO, Inc.'s business is
international.
Traditionally, most orthodontic treatment is provided to children. As such, RMO, Inc. has invested substantial effort and money in developing an early treatment program directed to children ages 6-12. This program, which includes a 25 minute video entitled GRINS, is intended to help children make successful dental transitions and successful psychological/ self-image transitions before their teen years. The GRINS video and information regarding RMO, Inc's early treatment program are available on RMO, Inc.'s web site located at RMORTHO.COM, a copy of which is attached as Exhibit I.
RMO, Inc. has invested substantial resources in developing and marketing its orthodontic goods and services and the mark RMO. RMO, Inc. is a leader and innovator in the orthodontic field both in the U.S. and throughout the world. Millions of dollars have been spent in connection with product research and development, intellectual property protection, and advertising and promotion of goods and services offered in connection with the mark RMO. Sales of goods and services under the RMO mark amount to over 23 million dollars annually. As a result, the general public has come to associate the name and mark RMO with orthodontic goods and services of a high and uniform quality. RMO, Inc.'s recognition in the RMO mark is extensive and ranges from orthodontists, to children and adults who have visited the orthodontist. In this regard, the mark RMO is famous and distinctive.
On May 5, 1996, long after R1MO, Inc.'s adoption and first use of the mark RMO,
Burbidge registered the domain name RMO.COM. Following Burbidge's registration of
the domain name RMO.COM, RMO, Inc. contacted Burbidge on several occasions to discuss a potential transfer of
the domain name to RMO, Inc. in exchange for Burbidge's out-of-pocket costs directly related to the domain name. These efforts were unsuccessful.
In the Fall of 2000, RMO, Inc.'s attorney left several telephone messages for Burbidge
requesting a return phone call. No response to these messages was received. In November 2000, R;"\/IO, Inc.'s attorney's attempted to contact Burbidge by mail to initiate
discussions regarding the potential transfer of the domain name RMO.COM to RMO,
Inc. Burbidge did not respond to this letter. RMO, Inc. has now elected to proceed with
a complaint under the terms and conditions of ICANN's Uniform Domain Name Dispute
Resolution Policy and Rules, a copy of ICANN's Uniform Domain Name Dispute
Resolution Policy is attached as Exhibit J.
[b.] Grounds for the Complaint
Pursuant to ICANN Rule 3(b)(ix), RMO, Inc. must describe the grounds on which the compliant is made. In particular, the complaint must describe:
As to the first required element, RMO, Inc. submits that it is the owner of the incontestable U.S. Trademark Registration No. 1,485,072 for the mark RMO noted above. A copy of the above-referenced trademark registration is attached as Exhibit H. RMO, Inc. is also the owner of trademark registrations for the mark RMO in at least 38 different countries as noted previously.
The domain name RMO.COM is identical to the ELMO mark used and federally registered by RMO, Inc. As stated previously, RMO, Inc. has invested substantial resources in developing and marketing its orthodontic goods and services and the mark RMO. As such, RMO, Inc.'s recognition in the RMO mark is extensive and ranges from orthodontists, to children and adults who have visited the orthodontist. In this regard, the mark RMO is famous and distinctive and Burbidge's registration of the domain name RMO.COM is likely to dilute the famous and distinctive nature of the RMO mark.
The domain name RMO.COM is not only identical to RMO, Inc's RMO mark but is also confusingly similar to RMO, Inc.'s RMO mark. Burbidge's registration of the domain name RMO.COM is likely to cause confusion as to the source and sponsorship of the domain name and any associated web site(s). Specifically, a visitor to the RMO.COM web site is most likely a potential customer of RMO, Inc.'s trying to locate RMO, Inc. online. Once connected to the RMO.COM web site, the potential customer is likely to be further confused or mislead into believing that they have actually connected to RMO, Inc.'s official web site or a web site sponsored by RMO, Inc. or used internally by RMO, Inc. This is particularly true given the fact that Burbidge entitled the web site "Welcome to the RMO.COM web server" and provides links such as "Visit the handy dandy RMO address book." Since RMO, Inc. is a family owned business, a potential consumer may also be confused or mislead into believing that they have connected to RMO, Inc.'s family's web site and that the pornographic photos provided on the site are representative of the RMO, Inc. founding family. Confusion is even more detrimental when the potential consumer is a child age 6-12 attempting to locate RMO, Inc. online.
As to the second required element, RMO, Inc. submits that Burbidge should be considered as having no rights or legitimate interests in the domain name RMO.COM. Burbidge is not commonly known by the name or mark RMO. Since Burbidge has no affiliation or relationship with RMO, Inc., he has no legitimate reason for using the famous RMO mark as his domain name. Burbidge even states on the RMO.COM web site, "What is RMO? We are not quite sure really. T have yet to think of a good definition for the letters R.M.O." Burbidge himself does not appear able to identify any legitimate interest he may have in the RMO mark and domain name.
Moreover, Burbidge does not appear to have made legitimate use of the RMO.COM domain name. Burbidge's intent in registering the RMO.COM domain name appears to have been to misleadingly divert/confuse consumers and to tarnish RMO, Inc.'s trademark rights. See ICANN Rules 4(c)(iii). The web site associated with the RMO.COM domain name is a makeshift site that provides random information regarding the Burbidge family and other information of interest to Burbidge. Burbidge does not use the domain name in connection with a bona fide offering of any goods or services, By maintaining ownership of the RMO.COM domain name, Burbidge is in the position to tarnish RMO, Inc.'s mark and to confuse consumers as to the affiliation of Burbidge with RMO, Inc. This is especially true give the pornographic nature of several of the photos posted on the RMO.COM web site. Any fair use afforded Burbidge in his use of the RMO trademark as part of the domain name RMO.COM is outweighed by Burbidge's intent to divert/confuse customers and to tarnish RMO, Inc.'s trademark rights. As such, Burbidge should be considered as having no rights or legitimate interests in the domain name RMO.COM.
As to the third required element, RMO, Inc. submits that Burbidge registered and uses the domain name RMO.COM in bad faith. Burbidge registered the RMO.COM domain name on May 5, 1996, long after RMO, Inc.'s adoption, first use and registration of the mark RMO. Thus, Burbidge had knowledge or reasonably should have had knowledge of RMO, Inc.'s prior adoption, use and registration of the well know RMO mark. Specifically Burbidge's past and present conduct appears to be sufficient to establish the following grounds for a finding of bad faith.
In view of the forgoing, RMO, Inc. submits that Burbidge has not only registered the domain name RMO.COM in bad faith, but has also used the domain name in bad faith.
[c.] Conclusion
Quality respectfully submits that it has met the requirements of ICANN Rule 3(b)(ix) and has provided evidence of the following:
As such, RMO, Inc. hereby requests that the registration for the domain name RMO.COM be transferred to RMO, Inc.
[6.] REMEDY SOUGHT
The Complainant requests that the Panel issue a decision that the domain-name registration be transferred to Complainant. ICANN Rule 3(b)(x); ICANN Policy a 4(i).