Goodwill Community Foundation, Inc. v Jet Stream Enterprises Limited
Claim Number: FA1107001398117
Complainant is Goodwill Community Foundation, Inc. (“Complainant”), represented by Amy G. Marino of Williams Mullen, Virginia, USA. Respondent is Jet Stream Enterprises Limited (“Respondent”), Antigua and Barbuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gcfgloballearning.com>, registered with Fabulous.com Pty Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2011; the National Arbitration Forum received payment on July 12, 2011.
On July 12, 2011, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <gcfgloballearning.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty 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 July 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@gcfgloballearning.com. Also on July 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 August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 <gcfgloballearning.com> domain name is identical to Complainant’s GCF GLOBAL LEARNING mark.
2. Respondent does not have any rights or legitimate interests in the <gcfgloballearning.com> domain name.
3. Respondent registered and used the <gcfgloballearning.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goodwill Community Foundation, Inc., owns the GCF GLOBAL LEARNING mark. The mark is registered by Complainant with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,694,830 registered March 11, 2003). The GCF GLOBAL LEARNING mark is used in connection with educational services, particularly providing classroom and Internet-based training programs in fields of vocational skill development and job searching.
Respondent, Jet Stream Enterprises Limited, registered the <gcfgloballearning.com> domain name on September 26, 2010. The disputed domain name resolves to a website which displays sponsored links to Complainant’s competitors.
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 contends that it has established rights in the GCF GLOBAL LEARNING mark. The registration of a mark with the USPTO is sufficient to establish rights. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”). The complainant need not register the mark in the country the respondent is in. See 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Complainant, having provided the Panel with evidence of registration of its mark with the USPTO (Reg. No. 2,694,830 registered March 11, 2003), has established its rights in the mark pursuant to Policy ¶ 4(a)(i).
Complainant contends also that Respondent’s <gcfgloballearning.com> domain name is identical to Complainant’s GCF GLOBAL LEARNING mark. The elimination of spaces between words in a mark fails to distinguish the domain name from the mark, according to Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) and George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007). Additionally, the affixation of a generic top-level domain (“gTLD”) is not sufficient to distinguish a domain name from a mark. See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Respondent’s sole changes to Complainant’s mark within the domain name were the elimination of spaces between words and the addition of the gTLD “.com.” Therefore, the Panel finds that the <gcfgloballearning.com> domain name is identical to Complainant’s GCF GLOBAL LEARNING mark.
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant asserts that Respondent lacks rights and legitimate interests. Once Complainant makes a prima facie case in support of this, the burden shifts to Respondent to dispute it. See 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.”); see also 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 prima facie case. However, Respondent failed to submit a response to the Panel. This inaction allows the Panel to assume that Respondent does not dispute Complainant’s allegations. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); 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.”). The Panel will still review the record for information suggesting that Respondent has obtained rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Being commonly known by a domain name has the potential to establish some rights or legitimate interests in said domain name. Complainant contends that Respondent is not commonly known by the disputed domain name and thus has no rights and legitimate interests in it. The Panel, following the analysis done in Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), will review Complainant’s statements concerning Respondent, the disputed domain name’s WHOIS listing, and Respondent’s failure to submit evidence that it is commonly known by the disputed domain name to make this determination. Complainant argues that by no stretch of the imagination has Respondent been given permission to use its GCF GLOBAL LEARNING mark, and Respondent failed to respond to this, or any part of, the Complaint. Additionally, the WHOIS information for the <gcfgloballearning.com> domain name lists “Jet Stream Enterprises Limited” as the domain name registrant. From the available evidence, the Panel finds that Respondent is not commonly known by the <gcfgloballearning.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that Respondent has not been using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <gcfgloballearning.com> domain name resolves to a website which displays sponsored links to Complainant’s competitors in the education and training industry. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See 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)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees)
The Panel finds that Policy ¶ 4(a)(ii) is met.
Complainant argues that Respondent has registered and currently uses the disputed domain name primarily for the purpose of disrupting Complainant’s business. Websites which display links to a complainant’s business have been found by panels previously to be disruptive. 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). Respondent’s <gcfgloballearning.com> domain name does just that: it displays links to other educational service providers’ websites which compete directly with Complainant for consumers. Thus, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive to Complainant’s business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant lastly contends that Respondent has registered and used the <gcfgloballearning.com> domain name intentionally, and for commercial gain, to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Where this is found to be true, past panels have consistently held that it demonstrates bad faith. 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Respondent registered a domain name identical to Complainant’s GCF GLOBAL LEARNING mark. This is certain to cause confusion for consumers as to the affiliation of Respondent’s website to Complainant. The identical nature of the <gcfgloballearning.com> domain name suggests that the two are affiliated, and so Internet users may visit the disputed domain name thinking that Complainant is the owner of the domain name. There, Respondent provides sponsored links to competing websites. From these, the Panel infers that Respondent is compensated for the amount of Internet users who click through the links. As a result, the Panel finds that Complainant’s contentions that Respondent registered and used the disputed domain name intentionally, and for commercial gain, to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark to be true, which is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <gcfgloballearning.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 8, 2011
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