Congregation Kadima v. Roger Addelson
Claim Number: FA1101001366740
Complainant is Congregation Kadima (“Complainant”), represented by Nicole K. McLaughlin of Duane Morris LLP, Pennsylvania, USA. Respondent is Roger Addelson (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org>, registered with 1 & 1 Internet AG.
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 10, 2011; the National Arbitration Forum received payment on January 10, 2011.
On January 11, 2011, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names are registered with 1 & 1 Internet AG and that Respondent is the current registrant of the names. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 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@congregationkadima.com, postmaster@congregationkadima.net, postmaster@congregationkadima.org. Also on January 14, 2011, 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 February 9, 2011, 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.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names are identical to Complainant’s CONGREGATION KADIMA mark.
2. Respondent does not have any rights or legitimate interests in the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names.
3. Respondent registered and used the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Congregation Kadima, conducts congregation and religious services based upon living a progressive Jewish religious life. Complainant has been operating under the CONGREGATION KADIMA name and mark since February 2010 when it formed its own congregation and split away from the dissolved Beth Or Congregation.
Respondent, Roger Addelson, is a former member of the Beth Or Congregation that registered the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names on February 19, 2010. Respondent’s disputed domain names resolve to the registrar temporary landing page that contains links to various third-party businesses relating to the Jewish faith and Synagogues. Respondent attempted to sell the disputed domain names to Complainant on several occasions.
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 own a trademark registration for its CONGREGATION KADIMA mark with a governmental trademark authority. However, the Panel finds that a trademark registration is not necessary where Complainant can establish that it has common law rights in its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also 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)).
Complainant contends that its owns common law rights in its CONGREGATION KADIMA mark based on its continuous and extensive use of the mark since February 2010. Complainant notes that its congregation was formed in February 2010 upon its breaking away from the Beth Or Congregation, which is now dissolved. Complainant submits evidence to show that on February 16, 2010, The Pioneer Local, a newspaper in Deerfield, Illinois, released a story about the dissolution of Congregation Beth Or, and that a group of individuals from Beth Or were forming a new Synagogue called “New Reform Congregration Kadima.” Complainant has been using the CONGREGATION KADIMA mark since that time to provide its religious services to members of the Jewish community in and around Deerfield, Illinois. Therefore, the Panel finds that Complainant has provided sufficient evidence to establish common law rights in its mark under Policy ¶ 4(a)(i). See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant argues that each of the three disputed domain names are identical to Complainant’s CONGREGATION KADIMA mark, because each name contains Complainant’s entire mark, absent the space between the terms of the mark, while adding a generic top-level domain (“gTLD”) “.com,” “.org.” or “.net.” The Panel agrees and finds that the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names are identical to Complainant’s CONGREGATION KADIMA mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not possess rights and legitimate interests in the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names under Policy ¶ 4(a)(ii). Complainant is required to produce a prima facie case in support of these allegations. Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to display that it does possess rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the 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). The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names. Respondent has failed to respond to these proceedings, and as such the Panel finds that it may infer that Respondent lacks rights and legitimate interests in the disputed domain names. 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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). However, the Panel will analyze the evidence on record to determine whether Respondent has rights and legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names. Complainant alleges that Respondent is not authorized or licensed to use Complainant’s CONGREGATION KADIMA mark. The WHOIS information identifies the domain name registrant as “Roger Addelson,” which Complainant contends is not similar to Respondent’s <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names. Respondent has failed to respond to these allegations and has failed to present evidence that would suggest that Respondent is not commonly known by the disputed domain name. The Panel concludes that Respondent is not commonly known by the <congregationkadima.com>, <congregationkadima.net>, and <congregationkadima.org> domain names 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).
Complainant alleges, and supplies screen-shot evidence to show, that Respondent’s disputed domain names have and continue to resolve to the registrars temporary landing page. The resolving website displays a search engine and several third-party hyperlinks to businesses and individuals dealing in goods and services that relate to the Jewish faith, but that are not directly related to Complainant’s Synagogue operation. The Panel finds that such use of the identical domain names is not 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Further, Complainant argues that Respondent has attempted to both sell and trade the domain names to Complainant. Complainant has supplied the Panel with e-mail copies that show Respondent’s desire to either sell the domain names above its cost of obtaining them, or in return for certain artifacts from Complainant’s Synagogue, to transfer the domain names to Complainant. The Panel finds that such a willingness to dispose of the disputed domain names by offering them conditionally to Complainant indicates that Respondent does not have rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has provided sufficient evidence to show that Respondent attempted on several occasions to sell or trade the domain names to Complainant for monetary value in excess of what Respondent acquired the names for. Complainant has also shown that it was willing to purchase the domain names for whatever it cost Respondent to acquire them, but was turned down by Respondent on this offer. Therefore, the Panel finds that Respondent’s attempts to sell or otherwise barter for the exchange of valuable goods in order for Complainant to acquire the domain names is evidence of bad faith registration and use of the names under Policy ¶ 4(b)(i). See Lyon v. Casserly, FA 193891 (Nat. Arb. Forum Oct. 29, 2003) (finding that the domain name was acquired primarily for the purpose of transferring the domain name to the complainant for valuable consideration in excess of the respondent's out-of-pocket costs because the respondent made various requests for concert tickets, backstage passes, press passes and a website development contract); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith).
The Panel further finds that Respondent is using the disputed domain names to direct Internet users to the landing page of the registrar of the names. The Panel infers that Respondent receives click-through fees in relation to the third-party links displayed upon Respondent’s domain names, and as such has registered and used the domain names in bad faith under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Lastly, Complainant contends that Respondent registered the disputed domain names in bad faith because it did so only after reading the newspaper article indicating the new congregation. Complainant notes that a newspaper article about the dissolution of the Beth Or Congregation, and the startup of CONGREGATION KADIMA was published on February 16, 2010, and that Respondent registered the disputed domain names on February 19, 2010. Complainant argues that the purpose of Respondent’s registration was to disrupt Complainant’s operations and demand monetary value for the domain names. The Panel agrees and finds that Respondent’s opportunistic registration of the disputed domain names is further evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii). See Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
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 <congregationkadima.com>, ,<congregationkadima.net>, and <congregationkadima.org> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 10, 2011
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