The Susan G. Komen Breast Cancer Foundation d/b/a Susan G. Komen For the Cure v. Host Master
Claim Number: FA0810001227646
Complainant is The Susan G. Komen Breast Cancer Foundation d/b/a Susan G.
Komen For the Cure (“Complainant”),
represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <arkansaskomen.org>, registered with Dynadot, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2008.
On October 3, 2008, Dynadot, LLC confirmed by e-mail to the National Arbitration Forum that the <arkansaskomen.org> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 (the "Policy").
On October
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
October 27, 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 postmaster@arkansaskomen.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 <arkansaskomen.org> domain name is confusingly similar to Complainant’s KOMEN mark.
2. Respondent does not have any rights or legitimate interests in the <arkansaskomen.org> domain name.
3. Respondent registered and used the <arkansaskomen.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Susan G.
Komen Breast Cancer Foundation d/b/a Susan G. Komen For the Cure, comprises the
world’s largest network of breast cancer survivors and activists. Since its formation in 1982, Complainant has
raised and invested almost $1 billion for breast cancer research, education,
and awareness. Complainant commonly refers
to its organization and activities under the KOMEN mark, and registered and
uses the <komen.org> domain name to advertise online. Complainant has also registered and uses the
<komenarkansas.org> domain name to promote its organizations activities
that take place in the state of
Respondent registered the <arkansaskomen.org>
domain name on August 27, 2008 and uses it to display pay-per-click advertising
mostly unrelated to Complainant’s operations.
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.
It is well-established that registration of a mark with an
appropriate governmental authority such as the USPTO confers rights in that
mark to a complainant pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). Therefore, Complainant has clearly
established rights in its SUSAN G. KOMEN
FOUNDATION, SUSAN G. KOMEN BREAST CANCER FOUDATION, and SUSAN G. KOMEN FOR THE
CURE marks pursuant to Policy ¶ 4(a)(i).
However, Complainant can also
establish rights in the KOMEN mark pursuant to Policy ¶ 4(a)(i) by showing that
the mark has acquired secondary meaning sufficient to confer common law
rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant registered and used the <komen.org> domain name to promote its activities online, and the resolving website shows that Complainant identifies its organization under the KOMEN mark. Complainant has raised almost $1 billion to support breast cancer research, education, and awareness, so the KOMEN mark has been used in commerce and has gained secondary meaning as an identifier of the SUSAN G. KOMEN BREAST CANCER FOUDATION. Therefore, the Panel finds that Complainant has established sufficient secondary meaning in the KOMEN mark such that Complainant has acquired common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
Respondent’s <arkansaskomen.org>
domain name contains Complainant’s KOMEN mark in its entirety and adds the
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <arkansaskomen.org> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is using the <arkansaskomen.org>
domain name to display a list of hyperlinks advertising products and services
mostly unrelated to Complainant’s business.
Respondent presumably earns click-through fees for each redirected
Internet user. The Panel finds that such
use of the <arkansaskomen.org>
domain name constitutes neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”); see also
Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding
that the respondent’s use of the disputed domain name to generate revenue via
advertisement and affiliate fees is not a bona fide offering of good or
services).
In addition, there is no evidence
in the record that Respondent is commonly known by the <arkansaskomen.org> domain name,
especially since the WHOIS information identifies Respondent simply as “Host
Master.” Therefore, the Panel finds that
Respondent lacks rights and legitimate interests in the <arkansaskomen.org> domain name
pursuant to Policy ¶ 4(c)(ii). See M.
Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <arkansaskomen.org>
domain name to display a list of hyperlinks that are unrelated to Complainant’s
business. Since the disputed domain name
is confusingly similar to Complainant’s KOMEN mark, this use may lead customers
to become confused as to the affiliation, sponsorship, or endorsement of the
goods and services advertised on Respondent’s website that resolves from the
disputed domain name. Respondent is
attempting to commercially benefit from the goodwill associated with
Complainant’s KOMEN mark, presumably from earning click-through fees. Thus, Respondent’s registration and use of
the <arkansaskomen.org>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See
Metro. Life Ins. Co. v.
Bonds, FA 873143 (Nat. Arb.
Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith
registration and use pursuant to Policy ¶ 4(b)(iv),
because [r]espondent is taking advantage of the confusing similarity between
the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in
order to profit from the goodwill associated with the mark.”); see also 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.”).
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 <arkansaskomen.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 4, 2008
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