National Council of Young
Men's Christian Associations of the
Claim Number: FA0809001224589
Complainant is National
Council of Young Men's Christian Associations of the United States of America (“Complainant”), represented by Christina
L. Martini, of DLA Piper US LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymcaoftheusa.net>, registered with Compana, 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.
Hon. Charles A. Kuechenmeister (Ret.)
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 12, 2008; the National Arbitration Forum received a hard copy of the Complaint on September 15, 2008.
On September 16, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <ymcaoftheusa.net> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 (“UDRP,” the “Policy”).
On September 19, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 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 email@example.com by e-mail.
A Response was received on October 10, 2008. The Response is therefore not in compliance with ICANN Rule 5(a) since it was received after the deadline for submissions. Nevertheless, the Panel elects to consider the Response as if it had been timely filed.
Neither party filed any Additional Submissions.
On October 20, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles A. Kuechenmeister (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant is the owner of the well-known family of YMCA trademarks, including the YMCA OF THE USA mark, as well as a variety of domain names that are used to promote its YMCA marks, such as <ymcaoftheusa.com> and <ymcaoftheusa.org>. Since at least as early as 1917, Complainant and its member associations have continuously offered the same types of products and services under the YMCA OF THE USA mark. Complainant has used and continues to use the YMCA and YMCA OF THE USA marks (and marks which incorporate YMCA and YMCA OF THE USA) (collectively the “YMCA Marks”) extensively in connection with its product and service offerings.
2. Upon information and belief, Respondent registered the domain name <ymcaoftheusa.net> (the “Domain Name”) on January 31, 2006.
3. Complainant did not authorize Respondent to register the Domain Name, nor does it maintain any licensing relationship with Respondent.
4. Upon information and belief, Respondent was familiar with the well-known YMCA Marks at the time it registered the Domain Name, and Respondent intentionally registered a domain name that is confusingly similar to the YMCA Marks so as to profit from the fame and goodwill associated with the YMCA Marks.
5. The Domain Name is confusingly similar to Complainant’s YMCA Marks. Respondent’s Domain Name incorporates, in their entirety, the YMCA and YMCA OF THE USA trademarks, which are distinctive and well-known trademarks. The only difference between Respondent’s Domain Name and Complainant’s marks is the addition of the generic top-level domain (gTLD) “.net.”
6. Respondent has made no bona fide offering of goods or services. Respondent’s only use of the Domain Name is to divert consumers, by click-through links, to third-party websites. The owners of some of these third-party websites are entities that offer, among other services, programs targeted to children. Consumers looking to enroll their children in Complainant’s programs are being intentionally diverted by Respondent to websites that offer the same or similar services by others. These third parties are clearly competitors of Complainant.
7. Respondent is not commonly known by the name YMCA OF THE USA and, therefore, cannot claim a legitimate interest in the Domain Name under Paragraph 4(c)(ii) of the Policy. It is clear that Respondent has no legitimate interest in the Domain Name, in view of Complainant’s prior statutory and common law rights in the YMCA Marks and the analysis set forth above.
9. Upon information and belief, Respondent receives click-through fees for diverting Internet users to third-party websites. Upon information and belief, Respondent may have already recouped its investment in the Domain Name, along with a substantial profit, by trading off of the YMCA Marks in bad faith. Intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by trading off of the YMCA Marks establishes “bad faith” registration and use under Paragraph 4(b)(iv) of the Policy.
Upon information and
belief, Respondent has engaged in a pattern of registering domain names which
incorporate the well-known trademarks of others in order to collect
click-through fees, and this pattern of conduct evidences bad faith
registration pursuant to Paragraph 4(b)(ii) of the
Policy. Respondent’s practices
have consistently been found to constitute bad faith. See,
e.g., ZRT Lab., LLC v.
11. Thus, the Domain Name was registered and is being used in bad faith by Respondent.
12. Upon learning of Respondent’s registration and use of the Domain Name, Complainant advised Respondent that it regarded such use as infringing upon Complainant’s YMCA Marks. Specifically, Complainant’s counsel sent Respondent a letter on November 9, 2007, stating that Respondent’s registration and use of the Domain Name was clearly an attempt to intentionally misdirect the public away from the Complainant’s websites, so as to cause confusion and dilute the famous YMCA Marks. At such time, Complainant demanded the transfer of the Domain Name.
13. In response to the November 9, 2007 letter and others from Complainant’s counsel, on January 30, 2008, Respondent agreed to transfer the Domain Name to Complainant. Despite repeated attempts by Complainant and its counsel to bring closure to this matter during the past six months, Respondent has not transferred the Domain Name to Complainant as promised.
1. Respondent apologizes to Complainant for the delay in transferring the Domain Name and herein agrees to the relief requested by Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of ¶ 4(a) of the Policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
2. Respondent having consented to transfer of the Domain Name to Complainant, there is no need for the Panel to consider the merits of the Complaint via further analysis under Policy ¶ 4(a).
3. Respondent requests that it be given the opportunity to prepare a more formal response on the merits should the Panel decide to analyze the merits of the Complaint under Policy ¶ 4(a).
4. Respondent requests the Panel to order the Domain Name transferred to Complainant.
DISCUSSION AND FINDINGS
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 provides 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.
Notwithstanding the foregoing, the Panel may grant a complainant’s
request for transfer of a domain name when the respondent consents to the same
without admitting any of the three elements in Policy ¶ 4(a). See
A Panel certainly has the authority to analyze the facts of a case
under Policy ¶ 4(a),
even when a respondent consents to a transfer of the disputed domain name. The Panel in Graebel Van Lines, Inc.
Nevertheless, while respecting the decisions in Graebel and LPF Video cited above, this Panel concurs with and adopts the analysis set forth by the panel in Citigroup Inc. v. Texas International Property Associates- NA NA, FA 1210904 (Nat. Arb. Forum August 5, 2008), which is substantially as follows: The UDRP expressly limits the remedies available under it:
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant. Policy ¶ 4(i)
It follows from this, as stated in Citigroup, that:
A panel’s only purpose in rendering substantive Paragraph 4(a) findings is relegated to that end [determining whether the name should be cancelled or transferred], and that end alone. What amounts to advisory opinions are not authorized by the Policy, Rules, or otherwise. Therefore, when a respondent consents to a complainant’s requested relief and that complainant has rights in the at-issue domain name(s), then only under particular circumstances that call into question the validity of the respondent’s consent, or for similar other good cause, might a panel need to proceed to consider the merits of the complaint via further analysis under Paragraph 4(a). Such circumstances are not present in the instant dispute, and so the requested relief must be granted.
Complainant in this case has
neither objected to a consensual transfer nor requested the Panel to render a
decision based upon a detailed analysis of the substantive elements of Policy ¶ 4(a) notwithstanding Respondent’s consent to a transfer request.
None of the factors calling for detailed analysis under Policy ¶ 4(a) as articulated in Citigroup is present in this case. Accordingly there is no cause for the Panel to analyze the facts present here under Policy ¶ 4(a), and the Panel proceeds directly to its decision without such analysis.
It is Ordered that the <ymcaoftheusa.net> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Charles A. Kuechenmeister (Ret.)
Dated: October 22, 2008
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