Foundation Inc. v.
Claim Number: FA0901001242250
Complainant is Goodwill Community Foundation Inc. (“Complainant”), represented by Rebecca
E. Crandall, of Williams Mullen,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gcflearningfree.com>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 12, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 12, 2009.
On January 13, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <gcflearningfree.com> 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 (the “Policy”).
On January 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 12, 2009 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 timely Response was received and determined to be complete on February 12, 2009.
Both parties filed Additional Submissions which were taken into consideration by the Panel.
On February 25, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’ <gcflearningfree.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GCFLEARNFREE.ORG mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent denies that the domain name is identical or confusingly similar to a mark in which Complainant has exclusive rights and asserts that the domain name at issue is composed of a generic term.
2. Respondent claims rights and legitimate interests in the domain name at issue.
3. Respondent denies that it has registered or used the domain name at issue in bad faith.
C. Additional Submissions:
Both parties filed Additional Submissions which were taken into consideration by the Panel. The Respondent complains that the Complainant’s Additional Submission argues a new position not treated in the Complaint and was, in any event, not properly served on counsel for Respondent.
Complainant, in its Complaint, says that it registered the GCFLEARNFREE.ORG domain in 2001 and has used it in connection with its non-profit educational services since that time. Also, Complainant began using the GCFLEARNFREE.ORG name as a trademark in March 2007 and obtained U.S. Trademark Registration Nos. 3,389,401 and 3,440,289 in 2008 for “educational services, namely, providing classroom and internet-based training programs in the field of computer use and operations; vocational training in the field of computers; training in the development and acquisition of computer skills and related career and workplace development skills.” The domain name at issue, <gcflearningfree.com>, is identical or at least confusingly similar to Complainant’s GCFLEARNFREE.ORG mark, says the Complaint. Further, the Complainant notes that Respondent is not commonly known by the domain name at issue, has not been authorized to use Complainant’s mark and Respondent has no rights or legitimate interests in the domain. Finally, in the Complaint, Respondent’s lengthy track record of losses in prior UDRP cases is noted to suggest bad faith registration and use again in this case.
Respondent, in its Response, argues that here are three dates which are critical to this proceeding. The first is said to be October 30, 2005, when the disputed domain was registered. The second, March 20, 2007, is the date Complainant itself listed as the first use of the character mark anywhere as well as the date of the first use in commerce of that same mark. The third is September 30, 2007, which is the claimed first use anywhere and first use in commerce date for Complainant’s design mark. Accordingly, says Respondent, the Complainant has no enforceable rights under the first element of the Policy. Second, Respondent says that the click-through site associated with the <gcflearningfree.com> is a legitimate use and that Complainant has not proven that the domain was registered and used in bad faith.
Complainant, in its Additional Submission, says that Respondent's argument ignores GCF's rights in the GCF family of marks. The domain, <gcflearningfree.com>, is likely to cause confusion not only with Complainant’s GCFLEARNFREE.ORG trademarks but also with GCF's entire family of marks which include registrations and claims of first use which substantially predate the registration of the domain name at issue. They include GCF GLOBAL LEARNING, USPTO Int’l Reg. No. 085656, first claimed use of April 11, 2001, which was registered on March 11, 2003.
Respondent laments, in its Additional Submission, that Complainant served Respondent and not its counsel with the Complainant’s Additional Submission and that Complainant therein makes for the first time the claim of a relevant USPTO registration (2003) which predates registration of <gcflearningfree.com> (2005).
While this panelist agrees that the Complainant should have served the Additional Submission on counsel for Respondent and that it is not the best practice to make an argument for the first time in an additional submission, it does not appear that Respondent could be said to have been unfairly surprised in the circumstances.
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 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.
Complainant, in its Complaint and Additional Submission, has demonstrated
rights in its family of GCF trademarks which have been registered with the
United States Patent and Trademark Office (“USPTO”), including: the GCF GLOBAL
LEARNING mark (Reg. No. 2,694,830 issued March 11, 2003); and the
GCFLEARNFREE.ORG mark (Reg. No. 3,440.289 issued June 3, 2008, filed October 3,
2007). Complainant’s registration of the
these marks with the USPTO establishes Complainant’s rights in the marks under
Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also
With regards to the GCF GLOBAL LEARNING mark, the shortening of the mark combined with the addition of a generic word likewise fails to differentiate the disputed domain name from the mark. See, e.g., Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that “the Domain Name is confusingly similar to Complainant’s ‘TESCO PERSONAL FINANCE’ mark in that it merely omits the descriptive term ‘personal.’”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Finally, with regards to the
GCFLEARNFREE.ORG mark, the Panel finds that the alteration of the generic
top-level domain and variation of the mark (i.e. “learn” to “learning,”)
similarly does not render the disputed domain name sufficiently distinct from
the mark. See, e.g., Cybertania, Inc v. Domain Drop S.A.,
FA 1118626 (Nat. Arb. Forum Feb. 28, 2008) (“[the respondent’s] disputed
domain names contain [the complainant’s ULTRAXXXPASSWORDS.COM] mark in its
entirety but substitute the gTLD ‘.com’ with the gTLD ‘.org’…[which does not]
prevent a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Artmidia Comunicacao Visual Criacao E Arte Ltda., FA 603590 (Nat. Arb. Forum Jan. 16, 2006)
(“The term “disneylandia” is the Portuguese translation of the DISNEYLAND mark,
and Complainant holds such a trademark for this term in
Although Respondent argues that its registration of the disputed domain name predates Complainant’s alleged rights in the GCFLEARNFREE.ORG mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain name is identical or confusingly similar to Complainant’s marks. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Respondent: (1) is not commonly known by the disputed domain name; (2) is listed in the WHOIS information as “Texas International Property Associates - NA;” and (3) has no license or permission to use Complainant’s marks. Such evidence demonstrates that Respondent is not commonly known by the disputed domain name under 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a parked website that displays third-party links and advertisements for Complainant’s competitors in return for commercial click-through fees. Under the circumstances, the Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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 also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
While Respondent contends that the disputed domain name’s corresponding website displays links generated by third-parties, Respondent bears the ultimate responsibility for the content of these websites, and Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Netbooks, Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The Panel also notes that Respondent is responsible for the content of any website using the domain name at issue, and cannot pass that responsibility off to its registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug. 27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse and holds Respondent accountable for the content posted to the site that resolves from the Domain Name.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of a confusingly
similar disputed domain name to commercially host advertisements for
Complainant’s competitors has created a likelihood of confusion as to
Complainant’s sponsorship and affiliation with the disputed domain name and corresponding
website. Respondent has engaged in bad
faith registration and use under Policy ¶ 4(b)(iv). See
Although Respondent asserts that its domain name predates Complainant’s alleged rights in the GCFLEARNFREE.ORG mark, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) with respect to Complainant’s earlier registration of GCF GLOBAL LEARNING. It is inconceivable that Respondent registered and has used <gcflearningfree.com> in good faith.
Accordingly, the Panel finds that Complainant has satisfied 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.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 10, 2009
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