Project HOPE - The People-to-People Health Foundation, Inc. v. James Smith a/k/a James Wood Smith
Claim Number: FA0802001142566
Complainant is Project HOPE - The People-to-People
Health Foundation, Inc. (“Complainant”), represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New
York Avenue NW, Washington, DC, 20001.
Respondent is James Smith
a/k/a James Wood Smith (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <grantwatch.org> and <narrativematters.org>, registered with Go Daddy.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 5, 2008; the National Arbitration Forum received a hard copy of the Complaint February 6, 2008.
On February 6, 2008, Go
On February 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 12, 2008, 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 firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on March 12, 2008.
The Forum received Complainant’s Additional Submission March 17, 2008. The Submission was timely, complied with Rule 7, and was determined to be complete.
On March 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Thereafter, on March 28, 2008, the Forum received a “Response to the Complainant’s Reply” that was not timely and not in compliance with Supplemental Rule 7. The Panel does not cite to the late-filed document; however, to ensure that cases are decided based on substance and not a procedural failing, the Panel reviewed the late filing and found nothing in it that would require a different outcome here.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following allegations in this proceeding:
1. The disputed domain names that Respondent registered, <grantwatch.org>, and <narrativematters.org> are identical to or confusingly similar to marks in which Complainant has exclusive rights.
2. Respondent has no rights to or legitimate interests in the domain name.
3. Respondent registered and is using the domain name in bad faith.
B. Respondent makes the following points in Response:
1. Respondent urges that he purchased the domain name in question “and at the time Complaint[sic] didn’t challenge or want the Domain Names.”
2. Respondent is a former employee of Complainant but did not use the address Complainant said he used while he was an employee.
3. Respondent was “an IT staff member” of Complainant,
4. Complainant has no trademark registrations for the disputed marks.
5. Complainant allowed the domain names to “sit unregistered for years, without a thought or care.”
6. Respondent told Complainant he purchased the domain names years ago when he purchased them and explained to Complainant how “I was going to use each of the domains.”
7. Respondent asserts that he “never stated the domains were for sale or offered either name for sale to Complainant or other interested parties…”.
8. Respondent asserts that as to bad faith, he “NEVER participated in meetings that often discussed upcoming issues of the Health Affairs journal. They … were closed door events and only editors from the editorial staff were allowed to contribute. As such, Respondent never became well aware of Complainant’s use of the trademarks GRANTWATCH and NARRATIVE MATTERS in the Health Affairs journal…”.
C. Additional Submissions
Complainant raises the following relevant points in its final Reply:
1. Respondent conceded in the Response that he registered the domain names during the time that he was employed by Complainant.
2. Respondent produced no proof that he had any gift, permission, license or right to register the domains in his own name rather than in the name of his employer, which owned the trademarks.
3. Respondent concedes that he is using the domain names for pay-per-click commercial websites.
Complainant established common law rights in the GRANTWATCH and NARRATIVE MATTERS marks through the establishment of secondary meaning associating the marks with Complainant.
Having found that Complainant has common law rights in the GRANTWATCH and NARRATIVE MATTERS marks, the Panel finds that Respondent’s <grantwatch.org> and <narrativematters.org> domain names are identical to Complainant’s GRANTWATCH and NARRATIVE MATTERS marks.
Respondent had no rights in the marks. Respondent, an employee in Complainant’s IT department when the disputed domain names were registered, used Complainant’s marks to register the disputed domain names under his own name as owner. Respondent showed no gift, permission, or license that permitted such opportunistic conduct.
Respondent registered and used the domain names containing his employer’s marks in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 Complainant to 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) 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 asserts common law
rights in the GRANTWATCH and NARRATIVE MATTERS marks. Complainant need not hold a registration with
a trademark authority to establish rights in a mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also
Complainant asserts common law rights in both the GRANTWATCH and NARRATIVE MATTERS marks through continuous use in commerce. Both phrases appear in Complainant’s Health Affairs journal, a publication discussing the increasingly complex issues affecting healthcare delivery and management. Complainant’s GRANTWATCH mark first appeared in the spring 1987 edition of Health Affairs journal and Complainant’s NARRATIVE MATTERS mark first appeared in the August 1999 edition. Both marks are titles of regularly recurring sections in Complainant’s publication. The Panel finds that Complainant established common law rights in the GRANTWATCH and NARRATIVE MATTERS marks through the establishment of secondary meaning for purposes of Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant contends that the
disputed domain names that Respondent registered, <grantwatch.org> and <narrativematters.org>, are
identical to Complainant’s GRANTWATCH and NARRATIVE MATTERS marks,
respectively. The disputed domain names
contain Complainant’s marks in their entirety and add a generic top-level
domain (“gTLD”), either “.com” or “.org.”
Moreover, Complainant’s <narrativematters.org> domain name
omits the space separating the terms “narrative” and “matters.” Having found that Complainant has
common law rights in the GRANTWATCH and NARRATIVE MATTERS marks, the Panel
finds that Respondent’s <grantwatch.org> and <narrativematters.org>
domain names are identical to Complainant’s GRANTWATCH and NARRATIVE
MATTERS marks, respectively, pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level
domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
."); see also Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a Policy
¶ 4(a)(i) analysis.”); see also
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is using the <grantwatch.org> and <narrativematters.org> domain names to operate websites that feature sponsored links to advertisements for various commercial websites. Given that the domain names are identical to marks in which Complainant has rights, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names).
Complainant contends that Respondent is neither commonly known by the disputed domain names, nor licensed to register domain names using the GRANTWATCH and NARRATIVE MATTERS marks. Respondent’s WHOIS information identifies Respondent as “JAMES WOOD SMITH.” No evidence in the records suggests that Respondent is commonly known by either of the disputed domain names and no evidence shows that Respondent has rights to or legitimate interests in Complainant’s marks under 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 Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also contends that Respondent was an employee of Complainant at the time he registered the <grantwatch.org> and <narrativematters.org> domain names. Respondent concedes that he was an employee of Complainant at that time and did not come forward with proof to show or suggest that Complainant gave him the right, permission, or license to use Complainant’s marks in domain names that he registered, showing himself as owner. Registering domain names that are identical to and/or confusingly similar to a known mark is evidence of a lack of rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark); see also Vinidex Pty Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the respondent lacked rights and legitimate interests in the domain name because it did not resolve to a developed website and the respondent, a former employee of the complainant, had constructive knowledge of the complainant’s rights in the mark).
Respondent disputes Complainant’s assertion of rights in the GRANTWATCH and NARRATIVE MATTERS marks. The record is clear that at all times relevant, the Complainant had greater rights to the marks in question than Respondent, an employee of Complainant in its IT department; and it is unlikely that Respondent could ever have shown or established such rights, absent a gift, permission, or license from Complainant. Respondent has no rights in the domain names containing in their entirety Complainant’s marks.
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s is using the <grantwatch.org> and <narrativematters.org> domain names to operate a website that provides sponsored links to advertisements for various commercial websites. The Panel finds that Respondent’s manner of use will likely lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites. The Panel also finds that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant contends that Respondent was an employee of Complainant at the time the <grantwatch.org> and <narrativematters.org> domain names were registered. Respondent concedes this to be the case. Moreover, Complainant alleges that Respondent demanded that Complainant provide job training and job opportunities in exchange for the transfer of the disputed domain names. The Panel finds that Respondent’s actions support findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) ("Respondent's registration of the company name of his former employer as a domain name is an act of bad faith."); see also William Hill Org. Ltd. v. Fulfillment Mgmt. Servs. Ltd., D2000-0826 (WIPO Sept. 17, 2000) (finding bad faith registration and use where “[R]espondent’s employee must have had the Complainant’s trade marks in mind when choosing the disputed domain name and that the respondent‘s interest was to deprive the complainant of the opportunity to reflect its mark in that name until the registration expires”).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the GRANTWATCH and NARRATIVE MATTERS marks by virtue of Respondent’s former employment status with Complainant. In fact, Respondent concedes that he was aware of the marks but denies that he knew Complainant had used the marks in the Health Services journal. The Panel finds that the evidence, including Respondent’s admissions in his Response, support a finding that Respondent knew that Complainant had rights in the marks at the same time Respondent registered the disputed domain names, showing himself as owner. This supports findings, pursuant to Policy ¶ 4(a)(iii), that Respondent acted in bad faith in knowingly registering and using domain names utilizing his employers marks without permission, while showing himself as owner. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).
The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(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 <grantwatch.org> and <narrativematters.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Dated: April 3, 2008.
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