DNC Services Corporation v. Donald Peltier / 021web design
Claim Number: FA2006001901303
Complainant is DNC Services Corporation (“Complainant”), represented by John P. Halski of Perkins Coie LLP, US. Respondent is Donald Peltier / 021web design (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <democraticnationalcommittee.org> and <democraticnationalcommittee.net>, registered with GoDaddy.com, LLC and Tucows Domains Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2020; the Forum received payment on June 22, 2020.
On June 23, 2020, GoDaddy.com, LLC and Tucows Domains Inc. confirmed by e-mail to the Forum that the <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domain names are registered with GoDaddy.com, LLC; Tucows Domains Inc. and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Tucows Domains Inc. has verified that Respondent is bound by the GoDaddy.com, LLC; Tucows Domains Inc. 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 June 26, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@democraticnationalcommittee.org, postmaster@democraticnationalcommittee.net. Also on June 26, 2020, 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 July 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 names be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Respondents
Complainant has alleged that despite minor differences in the WHOIS records for the disputed domain names, they are actually controlled by the same person and/or entity. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” See, e.g., Oportun, Inc. v. Domain Admin / Whois Privacy Corp., FA 1872675 (Forum Jan. 12, 2020) (multiple Respondent’s consolidated into a single case where the disputed domain names displayed some similarities in WHOIS information, were held at the same registrar, and resolved to similar website). Here, Complainant points out that, despite minor differences in the WHOIS records for the disputed domain names, both domain names resolve to the same website content, both were registered on the same day, the second level of the domain names are identical, and the WHOIS records list substantially identical names, mailing addresses, and phone numbers for both domain names. It then asserts that “it is inconceivable that these two domains were registered or are used independently of each other. Thus, the only conclusion that can be drawn from this information is that the Domains Names are owned or controlled by the same person or entity.” The Panel has reviewed the WHOIS records for the disputed domain names as well as the screenshots of the websites that resolve from such domains and, in light thereof, finds it appropriate to continue this case against both as owned by a single Respondent.
A. Complainant
Complainant uses the trademark DEMOCRATIC NATIONAL COMMITTEE in connection with political advocacy and fundraising endeavors. Complainant has rights in the DEMOCRATIC NATIONAL COMMITTEE mark through its use in commerce since 1848 and its registration thereof with the United States Patent and Trademark Office (“USPTO”) dated May 26, 2020. Respondent’s <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domain names, both registered on November 9, 2002, are identical or confusingly similar to Complainant’s mark as they use the name DEMOCRATIC NATIONAL COMMITTEE and add the “.org” or “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <democraticnationalcommittee.org> or <democraticnationalcommittee.net> domain names. Respondent is not commonly known by either domain name. Complainant has not authorized or licensed respondent to use the mark in the disputed domain names or on their resulting websites. Respondent does not use the domain names for any bona fide offering of goods or services, or for any legitimate noncommercial or fair use. Rather, respondent uses the domain names to imitate Complainant’s identity for Respondent’s own commercial gain. Respondent’s websites hosts links soliciting users to donate money to what is listed as “Democratic National Committee.net”, thus diverting these donations from Complainant, for whom they are presumably intended. Due to the notoriety of Complainant and its mark, one can infer that Respondent was aware of Complainant’s rights in the mark when it registered the disputed domain names. Furthermore, similarities between Complainant’s official <democrats.org> website and Respondent’s websites also indicate that Respondent likely visited and copied parts of Complainant’s website for its own use.
Respondent registered and uses the <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domain names in bad faith. As previously mentioned, Respondent uses these domain names to deceive visitors to its sites into believing that they are Complainant’s official website, or at least are affiliated with Complainant. Respondent also uses the disputed domain names to promote political messages or groups that are not sponsored by or affiliated with Complainant. Respondent’s bad faith is further demonstrated by its mimicry of Complainant’s website and the fact that Respondent likely registered the domain names <republicannationalcommittee.org> and <republicannationalcommittee.net> at the same time as the two disputed domain names. This indicates a pattern of bad faith intent to confuse visitors to both the Complainant’s and the Republican National Committee websites. Finally, given the long use and fame of the DEMOCRATIC NATIONAL COMMITTEE mark by Complainant, it is inconceivable that Respondent was not aware of Complainants rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) each of the disputed domain names was registered and is being used by Respondent in bad faith.
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”).
Complainant asserts rights in the DEMOCRATIC NATIONAL COMMITTEE mark through its registration thereof with the USPTO. Registration with the USTPO sufficiently confers rights in a mark for Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”)
Complainant also asserts common law rights in the DEMOCRATIC NATIONAL COMMITTEE mark. Policy ¶ 4(a)(i) does not require a complainant to own a registered trademark. Complainant’s are free to assert and demonstrate common law rights in the mark through actual use thereof. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark … if it can demonstrate established common law rights in the mark.”) To establish common law rights in a mark, a complainant generally must prove that the mark has developed a secondary meaning (i.e., identifying the source of goods or services) beyond any generic or descriptive meaning of the words that make up the mark. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”) Complainant asserts that the DEMOCRATIC NATIONAL COMMITTEE mark possesses secondary meaning as shown by the acquired distinctiveness recognized by the USPTO and by the range of materials submitted into evidence by Complainant, including news reports dating back to at least 1920, which show prominent and widespread use of the mark.
On a related note, Complainant asserts that Respondent’s registration of the disputed domain names does not predate the rights in Complainant’s mark even though the mark was registered with the USPTO after Respondent registered the domain names. Although the Respondent has not participated in this case and so does not contest this point, the Panel notes that Policy ¶ 4(a)(i) considers only whether Complainant has rights in its mark and whether the disputed domain names are identical or confusingly similar thereto. For this limited purpose, the relative timing of such events is not relevant. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but this may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”) In any event, it is clear to the Panel that Complainant’s common law trademark rights do, in fact, predate the registration of the disputed domain names.
In light of Complainant’s USPTO registration and the evidence of its longstanding common law trademark rights, the Panel finds that Complainant does hold rights in the DEMOCRATIC NATIONAL COMMITTEE mark for the purposes of Policy ¶ 4(a)(i).
Finally, Complainant argues that the <republicannationalcommittee.org> and <republicannationalcommittee.net> domain names are identical or confusingly similar to Complainant’s mark since they both use Complainant’s DEMOCRATIC NATIONAL COMMITTEE mark in its entirety without spaces and add the “.org” or “.net” gTLD. See KW KONA INVESTORS, LLC v. Privacy.co.com / Privacy.co.com, Inc Privacy ID# 923815, FA 1784456 (Forum June 11, 2018) (“[T]he omission of spacing and addition of a gTLD are irrelevant in determining whether the disputed domain name is confusingly similar.”); see also Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶ 4(a)(i) analysis.”) As the second level of the disputed domain names contain Complainant’s mark in its entirety, the Panel finds that they are identical or, at a minimum, confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <democraticnationalcommittee.org> and <democraticnationalcomittee.net> domain names. It begins by asserting that Respondent is not authorized to use the mark and that it is also not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). In considering this issue, WHOIS information can be used to determine whether a respondent is or is not commonly known by a disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.) See also Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information for the disputed domain names identifies the registrant as "Donald Peltier" and Respondent has not filed a Response or made any other submission in this case to dispute this. Further, no evidence in the record suggests that Respondent is known by any other name or that Complainant authorized or licensed Respondent to use its marks in any way. Under the circumstances of this case, the mere appearance of the mark on Respondent’s websites does not, itself, provide evidence that Respondent is commonly known by the disputed domain names. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”) Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and possesses no rights or legitimate interests under Policy ¶ 4(c)(ii).
Next, Complainant asserts that Respondent is not offering any bona fide goods or services or making a legitimate noncommercial or fair use of the <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domain names. Complainant specifically contends that Respondent is using the DEMOCRATIC NATIONAL COMMITTEE mark in its domain names and on the websites for both domains to falsely represent his sites as Complainant’s, or as being approved by or affiliated with Complainant. Use of a domain name to divert Internet users to a respondent's site by creating a false impression of association or affiliation is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Complainant provides screenshots of the resolving webpages of the disputed domain names and it is clear that these display various marks of Complainant and text that has been copied from Complainant’s own democrats.org website. Thus, Respondent’s websites are passing themselves off as either originating with or being affiliated with Complainant. Further, Complainant supplies screenshots of specific pages on Respondent’s websites at which donations intended for Complainant are illicitly solicited. These donation links on Respondent’s website lead to a Paypal page that contains the text “Donate to Democratic National Committee.net”. Complainant points out that Respondent’s website also contains a non-working email address and asserts that Responded purposely conceals his identity. It appears to this Panel that Complainant has more than made a prima facie case to supports its assertions and arguments and Respondent, by its default, has not disputed any of Complainant’s evidence or assertions. Thus, the Panel finds that Respondent does not use Complainants’ marks for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that its DEMOCRATIC NATIONAL COMMITTEE mark is famous and that Respondent must have had actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's mark can provide a foundation upon which to build a case of bad faith registration and be shown through the fame and notoriety of such mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”) Complainant claims that, based on its history of over 170 years and its widespread use of its mark, the mark “has acquired substantial notoriety and fame as … one of two major political parties in the United States.” It also notes that the mark has acquired distinctiveness as officially acknowledged by the USPTO (i.e., under section 2(f) of United States trademark law, 15 U.S.C. §1052(f)) and provides materials showing use of the mark dating back to at least 1920. The Panel also notes that Respondent’s websites display Complainant’s mark along with certain of its logos and text copied from Complainant’s democrats.org site. Therefore, based upon the supported fame of the DEMOCRATIC NATIONAL COMMITTEE mark and the content of Respondent’s websites, the Panel finds that Respondent registered the disputed domain names with actual knowledge of Complainant's mark.
Next, Complainant contends that Respondent registered and uses the <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domains in bad faith.[i] Specifically, Complainant alleges that Respondent uses Complainant’s mark in its domain names and websites to pass itself off as Complainant or to give the appearance of being affiliated with Complainant for commercial benefit and in disruption of Complainant's organization. Using a domain name to pass oneself off as a complainant in connection with the illicit pursuit of commercial gain can demonstrate bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass itself off as the complainant in an attempt to gain personal information from users who mistakenly access the website); Manolo Blahnik International Limited, Mr. Manolo Blahnik, and MB Foundation Limited v. chen chen, FA 1796635 (Forum August 10, 2018) (where the respondent offered counterfeit goods or was passing itself off as Complainant or an authorized representative thereof, the Panel found that “Respondent is clearly a competitor of Complainant.”) The Panel notes that Complainant provides screenshots of Respondent’s webpages at which are displayed Complainant's mark, logos, and text that has been copied from Complainant’s own website, and which improperly solicit donations that are intended for Complainant but which are actually diverted to Respondent. Additionally, Complainant argues that the <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domain names are used in a way that potentially disrupts Complainant’s political messages and advocacy by affiliating Complainant with organizations that may not align with its platform. Based upon a clear preponderance of the evidence in this case, the Panel finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant also provides evidence that Respondent likely registered the <republicannationalcommittee.org> and <republicannationalcommittee.net> domain names and asserts that this, combined with its registration of the presently disputed domain names, shows a pattern of bad faith registrations. The registration of multiple infringing domain names can show a pattern of bad faith registration and thus bad faith registration and use per Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA 1520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). Complainant argues that similarities between the dates on which the domain names were created (all on November 9, 2002), along with similar Name Servers, and similar elements of the websites and the organizations named on the sites (“Progressive Media Group” and “Conservative Media Group”) and contact emails (“webmaster@republican.net” and “webmaster@democrat.net”) make it highly likely that all of these domain names were registered by the same individual. Complainant claims that, by registering these four different domain names, Respondent has demonstrated a pattern of bad faith behavior in attempting to divert internet visitors interested in either of the two major U.S. political parties away from the official websites and to his own. Therefore, the Panel finds that Respondent has engaged in a pattern of bad faith behavior which further supports a finding of bad faith registration and use per Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <democraticnationalcommittee.org> and <democraticnationalcommittee.net> domain names be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: July 22, 2020
[i] The Panel notes that the disputed domain names were registered in 2002, nearly 18 years prior to the filing of the present Complaint. Complainant also points out that both of the disputed domain names were updated in 2019 as noted in the WHOIS records but it does not provide any further details or claim that such update shows that the present Respondent acquired the domain names more recently than 2002. Although not raised by the Complainant, it is noted that UDRP Panels have widely recognized that the theory of laches does not apply in such cases unless the respondent can show detrimental reliance on the delay. See, e.g., Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”) As the Respondent has not asserted the defense of laches, the Panel will not consider it here.
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