Shriners Hospitals for Children v. Web Master (awg)
Claim Number: FA0109000100127
Complainant is Shriners Hospitals for Children, Tampa, FL ("Complainant") represented by Jay Fleisher. Respondent is Web Master (awg), Yerevan, ARMENIA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shrinerspfld.org>, registered with Computer Data Networks.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 25, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 1, 2001, Computer Data Networks confirmed by e-mail to the Forum that the domain name <shrinerspfld.org> is registered with Computer Data Networks and that Respondent is the current registrant of the name. Computer Data Networks has verified that Respondent is bound by the Computer Data Networks 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 October 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 22, 2001 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 email@example.com 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 November 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (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.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <shrinerspfld.org> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate intersts in the <shrinerspfld.org> domain name.
Rspondent registered and used the <shrinerspfld.org> domain name in bad faith.
No Response was received.
The Complainant, Shriners Hospitals for Children is an organization that operates a system of hospitals for the purpose of providing specialized care to children. The first Shriners Hospital was opened in 1922. There are currently 22 Shriners hospitals throughout North America. Complainant has several registered trademarks in SHRINERS HOSPITALS both in the U.S. and internationally.
One of Complainant’s hospitals is in Springfield, Mass. The Springfield hospital was founded in 1925 and until recently used the <shrinerspfld.org> domain name. The Shriners Board of Directors decided to consolidate all the hospitals on one website. As a result, the Springfield Shriners hospital did not renew the <shrinerspfld.org> domain name when it expired on June 17, 2000.
Respondent registered the <shrinerspfld.org> domain name August 8, 2001. Respondent’s website located at <shrinerspfld.org> is connected to a pornographic site. Respondent’s website also has a "buy this name" link. Respondent refuses to sell the domain name for less than $5500.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
Respondent’s <shrinerspfld.org> domain name is confusingly similar to Complainant’s registered SHRINERS HOSPITAL mark. This domain name is likely to mislead Internet users into believing there is an affiliation between Respondent’s site and Complainant because the Shriners operate a hospital in Springfield that previously used the <shrinerspfld.org> domain name. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist); see also Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding the domain name confusingly similar "so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement").
Respondent’s <shrinerspfld.org> domain name is confusingly similar to Complainant’s registered SHRINERS HOSPITAL mark. Neither the addition of a geographical location to Complainant’s mark, in this case an abbreviation of "Springfield", nor the deletion of the word "hospital" sufficiently distinguishes Respondent’s domain name from Complainant’s mark. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark); see asloWestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the deletion of "air center" in <westjets.com> does not sufficiently distinguish it, but rather, the domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s "Wellness International Network").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent does not have any rights or legitimate interests in the domain name at issue because Respondent does not use it for a bona fide offering of goods. Using the confusingly similar domain name to link Internet users to a pornographic site is not a bona fide offering of goods. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark).
Respondent does not have any rights or legitimate interests in <shrinerspfld.org> because Respondent is not commonly known by the SHRINERSPFLD name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Respondent does not have any rights or legitimate interests in <shrinerspfld.org> because using the domain name as a link to a pornographic site is not a non-commercial or fair use. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well known mark to provide a link to a pornographic site is not a legitimate or fair use).
Further, Respondent’s "buy this name" link at his website coupled with Respondent’s refusal to sell the domain name to Complainant for less than $5500 indicates an unfair use. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s use of the confusingly similar <shrinerspfld.org> domain name as a link to a pornographic site is evidence of bad faith. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <shrinerspfld.org> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
November 15, 2001
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