Lifehouse of Houston v. Kerry Bohannon / Amicus Works, LLC
Claim Number: FA1905001845426
Complainant is Lifehouse of Houston (“Complainant”), represented by Darren Smith of Norton Rose Fulbright US LLP, Texas, US. Respondent is Kerry Bohannon / Amicus Works, LLC (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lifehouseofhouston.org> (‘the Domain Name’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2019; the Forum received payment on May 29, 2019.
On May 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lifehouseofhouston.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lifehouseofhouston.org. Also on May 31, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 31, 2019.
On June 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant has used the LIFEHOUSE OF HOUSTON mark since 1988 in connection with a nonprofit charitable organization. It has owned lifehousehouston.com since 2003. It owns common law rights in the LIFEHOUSE OF HOUSTON mark.
The Domain Name registered in 2018 incorporates the Complainant’s mark in its entirety adding only the gTLD “.org” which does not prevent the Domain Name being identical to the Complainant’s mark for the purposes of the Policy.
Respondent has no rights or legitimate interests in the Domain Name, has never been commonly known by the Domain Name and is not authorized by the Complainant. The Domain Name redirects Internet users to a competing site offering services to pregnant women. This is not a bona fide offering of goods or services or a non-commercial legitimate or fair use.
It is bad faith registration and use of the Domain Name to intentionally attract and divert Internet users, otherwise seeking Complainant, for Respondent’s commercial gain.
B. Respondent
The Respondent’s contentions can be summarized as follows:
The Respondent offers no opinion on alleged similarity of the Domain Name and the Complainant’s mark.
The Complainant denies registration and use in bad faith, but elaborates no further.
The Respondent consents to transfer of the name to the Complainant.
The Complainant has used the LIFEHOUSE OF HOUSTON mark since 1988 in connection with a nonprofit charitable organization. It has owned lifehousehouston.com since 2003. It owns common law rights in the LIFEHOUSE OF HOUSTON mark.
The Domain Name registered in 2018 has been pointed to a site offering competing services for pregnant women. The Respondent has consented to transfer to the Complainant.
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."
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.
Preliminary Issue – Consent to transfer
If the Respondent consents to transfer, certain panels have held that the panel may move directly without further findings to direct a transfer. Since the Respondent has denied registration and use in bad faith specifically in its Response, the Panel in this case decides to undergo the traditional UDRP analysis.
Identical or Confusingly Similar
The Complainant's LIFEHOUSE OF HOUSTON mark has been used for charitable services since at least 1988 giving the Complainant common law rights in the mark.
The gTLD “.org” does not serve to distinguish a domain name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is identical to the Complainant’s mark for the purposes of the Policy.
As such, the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sep. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
It is clear from the evidence that the Respondent has pointed the site attached to the Domain Name to a site offering competing charitable services that are not connected with the Complainant. The usage of the Complainant’s mark, which has a reputation for charitable services, in relation to similar services not connected with the Complainant is not fair, as the site does not make it clear that there is no connection with the Complainant. As such, it cannot amount to the bona fide offering of services or a non-commercial legitimate or fair use. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services).
The Respondent has not provided any legitimate reason why it should be able to use the Complainant’s trademark in this way. As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the Panelist, the use made of the Domain Name is confusing and disruptive in that visitors to the site attached to the Domain Name might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s mark to offer competing charitable services without permission. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the web site or services offered on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iv) and 4(b)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lifehouseofhouston.org> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: June 5, 2019
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