Goodwill Community Foundation, Inc. v. Janice Liburd
Claim Number: FA1009001345575
Complainant is Goodwill Community Foundation, Inc. ("Complainant"), represented by Amy G. Marino of Williams Mullen, Virginia, USA. Respondent is Janice Liburd ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gcflearnfre.org>, registered with Moniker, Moniker Online Services Inc. (R145-Lror).
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2010; the National Arbitration Forum received payment on September 10, 2010.
On September 14, 2010, Moniker, Moniker Online Services Inc. (R145-Lror) confirmed by e-mail to the National Arbitration Forum that the <gcflearnfre.org> domain name is registered with Moniker, Moniker Online Services Inc. (R145-Lror) and that Respondent is the current registrant of the name. Moniker, Moniker Online Services Inc. (R145-Lror) has verified that Respondent is bound by the Moniker, Moniker Online Services Inc. (R145-Lror) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 12, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gcflearnfre.org. Also on September 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gcflearnfre.org> domain name is identical/confusingly similar to Complainant’s GCFLEARNFREE.ORG mark.
2. Respondent does not have any rights or legitimate interests in the <gcflearnfre.org> domain name.
3. Respondent registered and used the <gcflearnfre.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 that was founded in 1995 with a mission to provide jobs and job training, and to remove barriers to employment for people with disabilities and disadvantaging circumstances. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GCFLEARNFREE.ORG mark (e.g., Reg. No. 3,389,401 issued February 26, 2008) to provide classroom and Internet-based training programs in the field of computer use and operations as well as other vocational programs.
Respondent registered the <gcflearnfre.org> domain name on May 8, 2010. Respondent’s disputed domain name resolves to a website that features third-party hyperlinks to competing online computer training programs.
Complainant offers evidence that Respondent has a history of registering domain names that infringe on the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Reed Elsevier, Inc. v. Liburd, FA 1334323 (Nat. Arb. Forum August 24, 2010); see also Europeenne de Traitement de L’Information “Euro Information” v. Liburd, D2010-0751 (WIPO July 14, 2010); see also Nilfisk-Advance A/S v. Liburd, Porchester Partners, Inc., D2010-0859 (WIPO July 23, 2010); see also Tractor Supply Co. of Texas LP v. Liburd, D2010-0976 (WIPO September 3, 2010).
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.
The Panel finds that Complainant has established rights in its GCFLEARNFREE.ORG mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 3,389,401 issued February 26, 2008). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that the <gcflearnfre.org> domain name is confusingly similar to Complainant’s mark because the domain name merely removes the letter “e” from the mark. Complainant argues that the disputed domain name that varies by only one letter is insufficient to distinguish the disputed domain name from Complainant’s mark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s GCFLEARNFREE.ORG mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights and legitimate interests in the <gcflearnfre.org> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out 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 paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <gcflearnfre.org> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel will review the evidence on record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is neither commonly known by the <gcflearnfre.org> domain name, nor has Complainant given Respondent permission to use Complainant’s mark in any way. The WHOIS information identifies “Janice Liburd” as the registrant of the <gcflearnfre.org> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name. The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant further asserts that Respondent’s disputed domain name is not being used in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name. Complainant alleges that Respondent is using the disputed domain name to resolve to a website that displays third-party links to websites offering online computer and vocational training in competition with Complainant, presumably for profit. The Panel finds that Respondent’s use of the disputed name to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute 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 Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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)).
Lastly, Complainant argues that Respondent’s registration and use of the <gcflearnfre.org> domain name consists of typosquatting, a practice that has been found by previous UDRP panels to show Respondent lacks rights and legitimate interests in the disputed domain name. The Panel finds that Respondent’s practice of typosquatting, as evidenced by its registration and use of the <gcflearnfre.org> domain name is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant submits evidence to show that Respondent has been the respondent in previous UDRP proceedings where the disputed domain names were ordered to be transferred from Respondent to the respective complainants in those cases. See Reed Elsevier, Inc. v. Liburd, FA 1334323 (Nat. Arb. Forum August 24, 2010); see also Europeenne de Traitement de L’Information “Euro Information” v. Liburd, D2010-0751 (WIPO July 14, 2010); see also Nilfisk-Advance A/S v. Liburd, Porchester Partners, Inc., D2010-0859 (WIPO July 23, 2010); see also Tractor Supply Co. of Texas LP v. Liburd, D2010-0976 (WIPO September 3, 2010). Complainant argues that Respondent’s past, adverse UDRP decisions indicates Respondent’s pattern of bad faith registration and use of confusingly similar domain names. The Panel finds that Respondent has engaged in a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Complainant argues that Respondent’s use of the disputed domain name to divert Internet users seeking Complainant’s official <gcflearnfree.org> domain name to Respondent’s website creates a disruption to Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). Complainant alleges that Respondent’s use of the confusingly similar domain name to display third-party links to competitors of Complainant leads to a loss of and disruption to Complainant’s business. The Panel agrees and finds that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant further alleges that Respondent’s use of the <gcflearnfre.org> domain name to intentionally attract Internet users to Respondent’s website for commercial gain is further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s disputed domain name creates a likelihood of confusion between the disputed domain name and Complainant’s mark as well as Complainant’s official <gcflearnfree.org> domain name, and Respondent seeks to capitalize on that likelihood of confusion by making money on click-through fees paid by websites and advertisers in competition with Complainant that are displayed on Respondent’s website. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain and this use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel has already determined that Respondent has engaged in typosquatting through its registration and use of the <gcflearnfre.org> domain name. This practice has been found by previous UDRP panels to constitute evidence by itself of bad faith registration and use under Policy ¶ 4(a)(iii), and so this Panel finds. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
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 <gcflearnfre.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 27, 2010
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