National Council of Young Men's Christian Associations
of the
Claim Number: FA0711001108221
Complainant is National Council of Young Men's Christian Associations
of the United States of America (“Complainant”), represented by Michelle
Burke, of McDermott, Will & Emery,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ymcaoftheusa.com>, registered with Rebel.com.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 2007 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 postmaster@ymcaoftheusa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <ymcaoftheusa.com> domain name is identical to Complainant’s YMCA OF THE USA mark.
2. Respondent does not have any rights or legitimate interests in the <ymcaoftheusa.com> domain name.
3. Respondent registered and used the <ymcaoftheusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Council of Young
Men's Christian Associations of the United States of America , and its member associations comprise the largest non-profit community
service provider in the
Respondent
registered the <ymcaoftheusa.com>
domain name on
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the YMCA OF THE USA
mark through registration with the USPTO. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum
Respondent’s <ymcaoftheusa.com> domain name is
identical to Complainant’s YMCA OF THE USA mark because Respondent’s domain
name uses the exact wording and phrasing as Complainant’s mark. The addition of
the generic top-level domain “.com” to Complainant’s registered mark is not
relevant to this analysis. See Snow Fun, Inc. v. O'Connor,
FA 96578 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <ymcaoftheusa.com> domain name. When Complainant sets forth a prima facie case supporting its allegations as it has in the current case, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Given that Respondent has failed to respond to the Complaint, the Panel presumes that Respondent lacks rights or legitimate interests in the <ymcaoftheusa.com> domain name. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). However, the Panel will examine all evidence in the record to determine if Respondent does have rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).
Respondent’s primary use of the <ymcaoftheusa.com> domain name
diverts Internet users to Respondent’s website which features links to websites
containing adult-oriented content. Respondent presumably earns referral fees
from advertisers listed on Respondent’s website. Such use of a domain name that
is identical to Complainant’s mark but contradictory to Complainant’s
operations does not constitute a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See
Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that
the respondent did not use a domain name in connection with a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the domain name to divert Internet users seeking
the complainant's goods or services to adult-oriented content, while presumably
earning a commission or referral fees from advertisers); see also 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 adult-oriented content where such use is
calculated to mislead consumers and to tarnish the complainant’s mark).
Respondent offers no evidence to support the inference that Respondent is commonly known by the <ymcaoftheusa.com> domain name. Moreover, there are no facts suggesting that Respondent ever obtained a license to use the mark. Finally, the WHOIS domain name registration information lacks any inference of Respondent’s operation under the domain name. Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <ymcaoftheusa.com>
domain name to intentionally garner commercial gain by attracting
Internet users to Respondent’s website. Respondent’s use creates a likelihood
of confusion with the Complainant’s mark regarding the source, affiliation, or
endorsement of its website under Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
Respondent’s use of the <ymcaoftheusa.com> domain name to offer adult-oriented content is
evidence of bad faith under Policy ¶ 4(a)(iii). See
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (finding that the respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith); see also Microsoft
Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that the
respondent’s use of the complainant’s mark to post adult-oriented content and
to publicize hyperlinks to additional adult-oriented websites evidenced bad
faith use and registration of the domain name).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <ymcaoftheusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: January 4, 2008
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