The Minnie Pearl Cancer Foundation v. Bruce Schoenne
Claim Number: FA1103001380741
Complainant is The Minnie Pearl Cancer Foundation (“Complainant”), represented by Wendy L. Robertson of Baker, Donelson, Bearman, Caldwell & Berkowitz, Tennessee, USA. Respondent is Bruce Schoenne (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <minniepearl.com>, registered with Wild West Domains, Inc.
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 March 28, 2011; the National Arbitration Forum received payment on March 28, 2011.
On March 30, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <minniepearl.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 March 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@minniepearl.com. Also on March 31, 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 April 22, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <minniepearl.com> domain name is confusingly similar to Complainant’s THE MINNIE PEARL CANCER FOUNDATION mark.
2. Respondent does not have any rights or legitimate interests in the <minniepearl.com> domain name.
3. Respondent registered and used the <minniepearl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Minnie Pearl Cancer Foundation, is a nonprofit organization that was offered the MINNIE PEARL name in 1992. Complainant asserts common law rights in the mark THE MINNIE PEARL CANCER FOUNDATION dating back to 1992.
Respondent, Bruce Schoenne, registered the <minniepearl.com> domain name on June 1, 2001. The disputed domain name resolves to a directory of pay-per-click unrelated to Complainant.
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.
Policy ¶ 4(a)(i) does not require a trademark registration with a governmental trademark authority if Complainant can establish common law rights in the mark. See 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); 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 asserts common law rights in the THE MINNIE PEARL CANCER FOUNDATION mark because it has consistently used the mark since 1992 in connection with, and to identify, the services of Complainant. Complainant argues that Sarah Cannon was a well-known comedienne known as “Minnie Pearl” who appeared on The Grand Ole Opry and Hee Haw. Complainant contends that in 1992, after being successfully treated for breast cancer, Minnie Pearl offered her stage name to Complainant for use in identifying the nonprofit organization. Complainant has used the THE MINNIE PEARL CANCER FOUNDATION mark to identify its organization and its involvement in cancer fundraising; awareness and research; and support, education and information provision to cancer survivors and caregivers. Complainant operates a website at the <minniepearl.org> domain name that receives approximately 1,800–2,000 hits per month. The Panel finds that Complainant’s continuous use of the THE MINNIE PEARL CANCER FOUNDATION mark in connection with Complainant’s organizational identity and activities has created secondary meaning in the mark sufficient to establish common law rights dating back to 1992. 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 Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant contends that Respondent’s <minniepearl.com> domain name is confusingly similar to Complainant’s THE MINNIE PEARL CANCER FOUNDATION mark because the disputed domain name consists of Complainant’s mark without the space between the terms, without the terms “the,” “cancer,” and “foundation,” and with the added generic top-level domain (“gTLD”) “.com.” The Panel finds that deleting words from Complainant’s mark does not change the essential character of Complainant’s mark in the disputed domain name and thus does not alleviate confusing similarity. See 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 WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel also finds neither the deletion of the space between the terms nor the addition of the gTLD “.com” creates a domain name distinguishable from Complainant’s mark. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name <americangenerallifeinsurance.com> is confusingly similar to the complainant’s AMERICAN GENERAL mark.”). The Panel thus concludes that Respondent’s <minniepearl.com> domain name is confusingly similar to Complainant’s THE MINNIE PEARL CANCER FOUNDATION mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights and interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights and legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “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 respondent to show it does have rights or legitimate interests”); see also 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.”).
Complainant asserts that Respondent has no connection or affiliation with Complainant of any kind, nor has Respondent received a license or consent to use Complainant’s mark in the disputed domain name or in any other way. The WHOIS information for the <minniepearl.com> domain name lists the registrant as “Bruce Schoenne,” which has no facial relationship to the disputed domain name. The Panel concludes that Respondent is not commonly known by the disputed domain name and therefore lacks rights and legitimate interests 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant alleges that Respondent uses the <minniepearl.com> domain name to host a simple web page containing pay-per-click links on topics unrelated to Complainant. The Panel finds that Respondent’s use of the disputed domain name 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 Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)).
Complainant also argues that Respondent has offered to sell the <minniepearl.com> domain name to Complainant for at least $6,000 and possibly as much as $10,000. Complainant alleges that as this amount likely far exceeds Respondent’s out-of-pocket costs in acquiring the disputed domain name, Respondent’s offer to sell signals a lack of rights and legitimate interests for the purposes of Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant states that, in email correspondence with Respondent, Respondent indicated that it would sell the <minniepearl.com> domain name to Complainant for an amount no less than $6,000 and possibly as great as $10,000. Complainant asserts that these prices are in excess of Respondent’s likely out-of-pocket costs associated with obtaining and maintaining the disputed domain name, and therefore, Respondent’s offer reveals bad faith registration and use according to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Complainant asserts that Respondent registered the <minniepearl.com> domain name to attract Internet users to the resolving website by capitalizing on the fame of Complainant’s mark. Complainant contends that the links featured on the resolving website are pay-per-click links which generate more revenue for Respondent with increased traffic to the site. Complainant therefore argues that Respondent aims to profit by attracting Internet users and creating a likelihood of confusion as to the source or affiliation of the disputed domain name and resolving website. The Panel finds these actions demonstrate bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
The Panel finds 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 <minniepearl.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 23, 2011
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