Kirlin Charitable Foundation v. Direct Privacy LTD Direct Privacy ID 39C08
Claim Number: FA1103001380976
Complainant is Kirlin Charitable Foundation (“Complainant”), represented by Michael P. Matesky, II of Christensen O'Connor Johnson Kindness PLLC, Washington, USA. Respondent is Direct Privacy LTD Direct Privacy ID 39C08 (“Respondent”), Grand Cayman.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seedsofcompassion.org>, registered with DirectNIC, Ltd.
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2011; the National Arbitration Forum received payment on March 29, 2011.
On March 30, 2011, DirectNIC, Ltd confirmed by e-mail to the National Arbitration Forum that the <seedsofcompassion.org> domain name is registered with DirectNIC, Ltd and that Respondent is the current registrant of the name. DirectNIC, Ltd has verified that Respondent is bound by the DirectNIC, Ltd 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 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@seedsofcompassion.org. Also on March 30, 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 John J. Upchurch 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 <seedsofcompassion.org> domain name is identical to Complainant’s SEEDS OF COMPASSION mark.
2. Respondent does not have any rights or legitimate interests in the <seedsofcompassion.org> domain name.
3. Respondent registered and used the <seedsofcompassion.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kirlin Charitable Foundation, operates as a provider of social and educational programs and related clothing products. Complainant owns the SEEDS OF COMPASSION mark and has used the mark since 2008 in connection with its programming and associated clothing goods. Complainant holds a registered trademark for the SEEDS OF COMPASSION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,562,231 issued Jan. 13, 2009). Complainant was the previous registrant of the <seedsofcompassion.org> disputed domain name, which it registered on November 5, 2005.
Respondent, Direct Privacy LTD Direct Privacy ID 39C08, registered the <seedsofcompassion.org> domain name on January 2, 2011. The disputed domain name resolves to a website which mimics Complainant’s official websites by displaying the SEEDS OF COMPASSION mark and other content from Complainant’s websites. Respondent’s site also contains hyperlinks to websites unrelated to Complainant’s services.
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 maintains that it has established rights in the SEEDS OF COMPASSION mark. In Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002), the Panel found that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations. See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). It is not necessary for Complainant to register the mark within the country where Respondent operates or resides. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Here, Complainant holds a trademark registration for its SEEDS OF COMPASSION mark with the USPTO (Reg. No. 3,562,231 issued Jan. 13, 2009). The Panel finds that Complainant has established rights in the SEEDS OF COMPASSION mark, pursuant to Policy ¶ 4(a)(i), through its registration with a trademark authority.
Complainant contends that Respondent’s <seedsofcompassion.org> domain name is identical to its SEEDS OF COMPASSION mark. The disputed domain name incorporates the mark in its entirety and only distinguishes itself by deleting the space between the words of the mark and adding the generic top-level domain (“gTLD”) “.org.” The Panel finds that deleting spaces between words of a mark and including a gTLD still renders the disputed domain name as identical to Complainant’s mark. 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 Respondent’s <seedsofcompassion.org> domain name is identical to Complainant’s SEEDS OF COMPASSION mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant alleges that Respondent has no rights or legitimate interests in the <seedsofcompassion.org> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel concluded “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.” Here, Complainant has presented a prima facie case in support of its claims against Respondent. Respondent failed to submit a response to the Complaint, which may be interpreted as an acknowledgement that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel will first look to the record to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS information indicates that Respondent is using a privacy shield and does not provide any indication that Respondent is commonly known by the disputed domain name. Complainant further argues that it has never authorized Respondent to use the SEEDS OF COMPASSION mark within the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <seedsofcompassion.org> domain name, under Policy ¶ 4(c)(ii), as there is nothing in the record to indicate otherwise. 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 use of the disputed domain name includes the display of third-party links, unrelated to Complainant’s programming services, including links to online pharmacies and cigar websites. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name to display links to websites not related to Complainant’s organization 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Respondent also appears to use the <seedsofcompassion.org> domain name in an attempt to pass itself off as one of Complainant’s official websites. The resolving site uses Complainant’s SEEDS OF COMPASSION mark and copies the overall feel and structure of Complainant’s websites, even using text pulled directly from Complainant’s sites. The Panel finds that Respondent’s use of the disputed domain name to try to pass itself off as Complainant’s website 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 Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant asserts that it was the prior registrant of the <seedsofcompassion.org> domain name and that it inadvertently allowed the registration to lapse. The Panel finds that Complainant’s prior registration of the disputed domain name is further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the complainant’s prior registration of the same domain name is a factor in considering the respondent’s rights or legitimate interests in the domain name); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
The Panel infers that Respondent receives click-through fees from the previously mentioned hyperlinks in the text of the resolving website. Internet users searching for Complainant may find Respondent’s website instead due to the identical disputed domain name. The likeihood of this is increased due to the fact that Complainant previously used the disputed domain name to resolve to its Complainant’s official website. Because the resolving site imitates Complainant’s official website in both design and content, users may become confused as to Complainant’s sponsorship of, or affiliation with, the website and hyperlinks. Respondent attempts to commercially benefit from this confusion by collecting click-through fees. The Panel finds that such registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
As mentioned above, Complainant claims that it registered the <seedsofcompassion.org> domain name prior to Respondent and that it unknowingly let the registration lapse. The Panel finds that Complainant’s previous registration of the disputed domain name indicate that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <seedsofcompassion.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 5, 2011
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