American Lebanese Syrian Associated Charities, Inc. v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1912001875640
Complainant is American Lebanese Syrian Associated
Charities, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, United States. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stjude.online>, registered with Dynadot, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 17, 2019; the Forum received payment on December 17, 2019.
On December 18, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <stjude.online> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 December 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 8, 2020 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@stjude.online. Also on December 19, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the fundraising and awareness organization for St. Jude Children’s Research Hospital (“St. Jude”). Founded in 1962, St. Jude is a pediatric treatment and research facility focused on children's catastrophic diseases, particularly leukemia and other cancers. Discoveries at St. Jude have profoundly changed how doctors treat children with cancer and other catastrophic illnesses. Since St. Jude was established, the survival rate for acute lymphoblastic leukemia, the most common type of childhood cancer, has increased from 4 percent to 94 percent, and the overall survival rate for childhood cancers has risen from 20 percent to 80 percent. St. Jude has treated children from across the United States and from more than 70 countries. St. Jude has been the recipient of numerous awards and achievements, including being named the #1 hospital for pediatric cancer in 2010 by U.S. News & World Report. Complainant has rights in the ST. JUDE mark through its registration in the United States in 2004.
Complainant alleges that the disputed domain name is identical or confusingly similar to its mark as it includes the ST. JUDE mark in its entirety, removing the period and adding the “.online” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Respondent is not a licensee or authorized to use Complainant’s ST. JUDE mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to a webpage where Respondent passes off as Target Brands Inc. (“Target”) (whose website is <target.com>) and prompts Internet users to enter their personal information to securely pay for items in their cart. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed in bad faith as Respondent attempts to attract users for commercial gain to its website, where Respondent passes off as Target and displays Target’s mark. Further, Respondent uses the disputed domain name in furtherance of a phishing scheme. In addition, Respondent uses a privacy service to conceal its identity. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark ST. JUDE and uses it to raise funds for a well-known children’s hospital.
Complainant’s rights in its mark date back to at least 2004. The mark is very well known.
The disputed domain name was registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain name to resolve to a web site that mimics the website of an unrelated online shop and that solicits personal information from users.
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name includes Complainant’s ST. JUDE mark in its entirety, removing the period and adding the “.online” gTLD. Removal of punctuation and the addition of a gTLD to a wholly incorporated mark is not sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Dawson v. Doctor, FA 521036 (Forum Sept. 1, 2005) (finding that the <drgem.com> domain name was identical to Complainant’s DR. GEM mark because “…the domain name fully incorporates the mark and merely removes the period after the abbreviation “DR.”); see also 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 gTLD was insufficient to differentiate the disputed domain name from the mark). The Panel therefore finds that the <stjude.online> domain name is identical to Complainant’s ST. JUDE mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its mark. Respondent is not commonly known by the disputed domain name: absent a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Super Privacy Service LTD c/o Dynadot.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to impersonate the online shop Target (whose website is <target.com>), displaying Target’s mark and replicating Target’s actual website. A respondent’s use of a disputed domain name to divert Internet users looking for a complainant’s mark to a webpage unrelated to the complainant’s mark is not a bona fide offering of goods or services nor a noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).
Further, Respondent is engaged in a phishing scheme. Complainant provides screenshots of the resolving website showing that it allows customers to place items in their purported shopping cart, then requests customers to input their personal and financial information in a “secure checkout” process. A respondent’s use of a disputed domain name to phish for Internet users’ personal information is not a bona fide offering of goods or services nor a noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
For the reasons given above, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to divert Internet users to its own webpage for commercial gain by impersonating Target. A respondent’s impersonation of another’s business is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Shionogi & Co. Ltd., Shionogi Inc. v. WhoisGuard Protected/Seedy Loveth, D2018-2047 (WIPO Nov. 5, 2018) (“Further, the registration and use of a domain name for the purposes of false impersonation of another’s business and mark, also constitutes bad faith registration and use.”). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, also as already noted, Respondent uses the disputed domain name in furtherance of a phishing scheme. A respondent’s use of a disputed domain name to further a phishing scheme is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”); see also Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii), on this ground also.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stjude.online> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 14, 2020
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