Better Existence with HIV v. AAA / Christine Gryszkiewicz
Claim Number: FA1012001363660
Complainant is Better Existence with HIV (“Complainant”), represented by Julie Supple, Illinois, USA. Respondent is AAA / Christine Gryszkiewicz (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <behiv.org>, registered with Network Solutions LLC (R63-LROR).
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2010; the National Arbitration Forum received payment on December 16, 2010.
On December 16, 2010, Network Solutions LLC (R63-LROR) confirmed by e-mail to the National Arbitration Forum that the <behiv.org> domain name is registered with Network Solutions LLC (R63-LROR) and that Respondent is the current registrant of the name. Network Solutions LLC (R63-LROR) has verified that Respondent is bound by the Network Solutions LLC (R63-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 December 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 11, 2011 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@behiv.org. Also on December 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 January 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
On December 23, 2010, Respondent sent email correspondence to National Arbitration Forum, Complainant, and others. Respondent was advised by National Arbitration Forum that it was unable to determine if it was Respondent’s intention to be a formal response to the Complaint, as it was not in compliance with UDRP Rule 5 and Supp. Rule 5. Having heard nothing to the contrary from Respondent, the correspondence was reviewed by the Arbitrator, but not considered to be a formal response.
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, 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 <behiv.org> domain name is identical to Complainant’s BEHIV mark.
2. Respondent does not have any rights or legitimate interests in the <behiv.org> domain name.
3. Respondent registered and used the <behiv.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Better Existence with HIV, is an organization that aims to improve the lives of people with HIV and AIDS in the communities it serves by providing a comprehensive range of quality services and informing the public about HIV and risk reduction behavior in order to increase understanding and compassion for people with HIV and AIDS. Complainant states that it has been providing services under its BEHIV mark since 1989. Complainant alleges that Respondent was a former employee of Complainant who registered the disputed domain name on behalf of Complainant and then transferred the disputed domain name to Respondent upon her termination from Complainant.
Respondent, AAA / Christine Gryszkiewicz, registered the disputed domain name on October 23, 1997. The disputed domain name resolves to Complainant’s own website.
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.
Complainant does not submit evidence that its BEHIV mark is registered with any federal trademark authority. However, the Panel finds that Complainant need not have registered its mark if Complainant can establish common law rights through proof of sufficient secondary meaning in its BEHIV mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also 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 claims common law rights in its BEHIV mark based on its alleged use of the mark since 1989. Complainant states that it has been providing services to the community since 1989 and that the BEHIV mark is well known and that the mark is used frequently in online and printed communications accessed by clients, community correspondents, and media outlets. Complainant submits a letter from the IRS acknowledging that Complainant was recognized as a tax exempt organization in October 1995. Additionally, Complainant indicates that it formerly registered the <behiv.org> domain name, in connection with its business under the BEHIV mark, on October 23, 1997. The Panel finds that Complainant has satisfied the requirements necessary to establish common law rights in its BEHIV mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
The Panel finds that Respondent’s <behiv.org> domain name is identical to Complainant’s BEHIV mark under Policy ¶ 4(a)(i) as the disputed domain name incorporates Complainant’s mark in its entirety and merely adds a generic top-level domain (“gTLD”), which is a required element of every domain name. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <behiv.org> domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) when Complainant makes a prima facie case in support of its allegations. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent possesses any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
The WHOIS information for the disputed domain name identifies the registrant of the <behiv.org> domain name as “AAA / Christine Gryszkiewicz.” There does not appear to be any evidence in the record that would allow the Panel to find that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that, pursuant to Policy ¶ 4(c)(ii), Respondent does not have rights or legitimate interests in the disputed domain name. 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).
Complainant alleges that Respondent was previously employed with Complainant as Business Manager. Complainant indicates that Respondent was responsible for maintaining the financial records of the agency and paying bills associated with its operations and that any listing of Respondent as a contact person or administrator of accounts was done so as an agent of Complainant due to Respondent’s employment. Complainant states that Respondent was terminated from employment by Complainant on August 11, 2009 at which point Respondent ceased to have any responsibility or role in the official activities of Complainant. Complainant argues that Respondent transferred the disputed domain name to herself under the name “AAA” in January 2010. Although the disputed domain name currently still resolves to Complainant’s own website, Complainant argues that control and possession of the disputed domain name should be with Complainant, rather than Respondent, a disgruntled former employee. The Panel agrees and finds that even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii). See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant alleges that Respondent is a former employee of Complainant and that Respondent registered the disputed domain name in its own name in retaliation for Complainant’s termination of Respondent’s employment. The disputed domain name currently resolves to Complainant’s own website used in conjunction with its services provided under is BEHIV mark. The Panel finds that although Respondent’s disputed domain name still resolves to Complainant’s own website, Respondent’s registration and use of a disputed domain name that is identical to the mark of another is evidence of Respondent’s bad faith. See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").
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 <behiv.org> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 25, 2011
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