Goodwill Community Foundation, Inc. v. DomainPark Limited c/o Hostmaster Hostmaster
Claim Number: FA0810001230811
Complainant is Goodwill Community Foundation, Inc. (“Complainant”), represented by Rebecca
E. Crandall of Williams Mullen, North Carolina, USA. Respondent is DomainPark Limited c/o Hostmaster
Hostmaster (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <gcflearningfree.org>, registered with Rebel.com.
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 October 23, 2008; the National Arbitration Forum received a hard copy of the Complaint October 28, 2008.
On October 24, 2008, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <gcflearningfree.org> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com verified that Respondent is bound by the Rebel.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@gcflearningfree.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <gcflearningfree.org>, is confusingly similar to Complainant’s GCFLEARNFREE.ORG mark.
2. Respondent has no rights to or legitimate interests in the <gcflearningfree.org> domain name.
3. Respondent registered and used the <gcflearningfree.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goodwill Community Foundation, Inc., is a non-profit corporation, incorporated in 1995, with a mission of providing education on a variety of topics from how to use Powerpoint to career development skills. In 2001, Complainaint registered and began to use the <gcflearnfree.org> domain name. Complainant holds a trademark registration of its GCFLEARNFREE.ORG mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,389,401 issued February 26, 2008 filed March 13, 2007).
Respondent registered the <gcflearningfree.org>
domain name
January 17, 2007. The disputed domain
name resolves to a website that contains hyperlinks to third-party websites,
some of which are in direct competition with Complainant.
Respondent
has been involved as the respondent in over 25 prior UDRP proceedings where the
domain name was transferred to the complainant in those cases. See,
e.g., Sears Brand, LLC v. Domain Park Ltd., FA 1218779 (Nat. Arb. Forum
Sept. 23, 2008); see also
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."
Given 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 will draw such inferences as the Panel 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 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 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 must first establish that it has rights to the
mark included in the disputed domain name.
Traditionally, a registration of mark with the USPTO warrants a finding
of established rights in a mark.
However, the registration of the <gcflearningfree.org>
domain name
antedates the filing date of Complainant’s GCFLEARNFREE.ORG. Under Policy ¶ 4(a)(i)
registration of a trademark is not necessary to establish that Complainant has
rights in the mark. See McCarthy on Trademarks and
Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute
resolution policy is “broad in scope” in that “the reference to a trademark or
service mark ‘in which the complainant has rights’ means that ownership of a
registered mark is not required–unregistered or common law trademark or service
mark rights will suffice” to support a domain name complaint under the Policy);
see also
Complainant registered and has used the <gcflearnfree.org> domain name continuously since 2001 to promote its educational services, predating by some six years Respondent’s registration of the disputed domain name on January 17, 2007. Consumers have come to identify the GCFLEARNFREE.ORG mark with Complainant and its services. The Panel finds that this continuous use is sufficient to establish secondary meaning and thus, Complainant has common law rights in the GCFLEARNFREE.ORG mark under Policy ¶ 4(a)(i). See Am. Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that the complainant held the domain name prior to the respondent’s registration, as well held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained); see also 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 Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Respondent’s <gcflearningfree.org> domain name contains Complainant’s entire mark and merely adds the suffix “ing” to the “learn” portion of the mark. The Panel finds that the addition of this suffix does not distinguish the <gcflearningfree.org> domain name from Complainant’s GCFLEARNFREE.ORG mark for the purposes of confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that the domain names <beanybaby.com>, <beaniesbabies.com>, <beanybabies.com> are confusingly similar to the complainant’s mark BEANIE BABIES).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the <gcflearningfree.org> domain name. Once Complainant has done so, the burden of proof shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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).”).
A review of the submission shows that Respondent’s <gcflearningfree.org> domain name resolves to a website that displays several hyperlinks to various third-party websites, some of which seek to compete directly with Complainant. Such proof supports an inference that Respondent receives click-through fees for these hyperlinks. The Panel finds that this diversion of Internet users for a fee is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
Further, Respondent’s WHOIS information indicates that
Respondent is not commonly known by the <gcflearningfree.org>
domain name and Respondent has
not provided any evidence to suggest otherwise.
Accordingly, the Panel finds that Respondent is not commonly known by
the <gcflearningfree.org>
domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb.
Forum Sept. 25, 2003) (finding that without demonstrable evidence to support
the assertion that a respondent is commonly known by a domain name, the
assertion must be rejected).
The Panel finds that Complainant
satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant notes that Respondent has been involved in 25
proceedings before this UDRP proceeding and that Respondent has owned more than
200 domain names that were ordered to be transferred in such proceedings. See Sears Brand, LLC v. Domain Park Ltd., FA 1218779 (Nat. Arb.
Forum Sept. 23, 2008); see also
Respondent’s confusingly similar <gcflearningfree.org> domain name resolves to a website that displays hyperlinks to third-party websites, some of which are in direct competition with Complainant. The Panel finds that this redirection of Internet users disrupts Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business).
Moreover,
Respondent is using the confusingly similar <gcflearningfree.org> domain name and the aforementioned hyperlinks for
commercial gain. The Panel finds that
this creates a likelihood of confusion as to Complainant’s affiliation with the
<gcflearningfree.org> domain
name and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv).
The Panel finds that Complainant
satisfied the elements of 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 <gcflearningfree.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 16, 2008.
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