national arbitration forum

 

DECISION

 

United Way Worldwide v. High Pr Network

Claim Number: FA1109001409015

 

PARTIES

Complainant is United Way Worldwide (“Complainant”), represented by Susan B. Flohr of Blank Rome LLP, Washington, D.C., USA  Respondent is High Pr Network (“Respondent”), New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <unitedwayofwebsterdudley.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 26, 2011; the National Arbitration Forum received payment on September 26, 2011.

 

On September 27, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <unitedwayofwebsterdudley.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 September 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@unitedwayofwebster-dudley.com.  Also on September 28, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 24, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a charitable fund raising and human care services organization with members worldwide.

 

Complainant owns registrations for the UNITED WAY trademark on file with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 2,374,762, registered August 8, 2000.

 

Respondent registered the <unitedwayofwebsterdudley.com> domain name on July 22, 2010.

 

The disputed domain name resolves to a website hosting adult-oriented content.

 

Respondent’s <unitedwayofwebsterdudley.com> domain name is confusingly similar to Complainant’s UNITED WAY mark.

 

Complainant has not granted to Respondent permission to use its UNITED WAY trademark in any way. 

 

There is no evidence that Respondent is commonly known as UNITED WAY OF WEBSTER DUDLEY or by the domain name <unitedwayofwebsterdudley.com>

 

Respondent does not have any rights to or legitimate interests in the domain name <unitedwayofwebsterdudley.com>.

 

Respondent registered and uses the <unitedwayofwebsterdudley.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)  the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has rights in its UNITED WAY mark for the purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO.  See, for example, Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), holding that USPTO trademark registration gave a complainant rights in its marks.

 

Respondent’s <unitedwayofwebsterdudley.com> domain name is confusingly similar to Complainant’s UNITED WAY trademark because the disputed domain name merely combines the mark (without the space between terms) with the generic term “of,” the descriptive name “webster dudley,” which refers to one of Complainant’s members, and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark made in forming the contested domain name do not distinguish the disputed domain name from the mark under the standards of the Policy. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to a complainant’s DISNEY mark because it incorporated that complainant’s entire mark and merely added two descriptive terms); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described a complainant’s products, and of the generic top-level domain “.com” were insufficient to distinguish a respondent’s <duracellbatteries.com> from that complainant’s DURACELL mark).

 

Similarly, the addition of a gTLD and the removal of a space from the mark of another in forming a domain name do not differentiate the resulting domain name from the mark under Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007).

 

The Panel therefore concludes that Respondent’s contested domain name <unitedwayofwebsterdudley.com> is confusingly similar to Complainant’s UNITED WAY trademark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

In order to satisfy Policy ¶ 4(a)(ii), Complainant must present a prima facie showing on the point of its allegation that Respondent lacks rights to and legitimate interests in the contested domain name.  The burden then shifts to Respondent to demonstrate that it has such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that, under Policy ¶ 4(a)(ii), a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to that respondent to show that it has such rights or interests);  see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007):

 

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.

 

Complainant has made out the requisite prima facie case under this head of the Policy.  Therefore, and because Respondent has failed to respond to the Complaint filed in this proceeding, we are free to determine that Complainant’s allegations may be accepted as true. 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 CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce requested documentation in a UDRP proceeding supports a finding for a complainant).

 

Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.

 

We first observe that Complainant alleges, and Respondent does not deny, that Complainant has not granted to Respondent permission to use its UNITED WAY trademark, and that there is no evidence that Respondent is commonly known as UNITED WAY OF WEBSTER DUDLEY or by the domain name <unitedwayof-websterdudley.com>.  Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “High Pr Network,” which does not resemble the disputed domain name.  On these facts, we conclude that Respondent is not commonly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007), and St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panels both finding that a respondent was not commonly known by a disputed domain name and so had no rights to or legitimate interests in that domain for purposes of Policy ¶ 4(c)(ii) where neither the evidence of record nor the relevant WHOIS information revealed any association between such respondent and the disputed domain.

 

We also note Complainant asserts, without objection from Respondent, that Respondent uses the <unitedwayofwebsterdudley.com> domain name to host a website featuring adult-oriented content.  This use of the domain is neither a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(iii).  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that a respondent’s use of a domain name to link unsuspecting Internet traffic to an adult oriented website did not constitute a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to the mark of another to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).   

 

The Panel thus finds that the requirements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

In analyzing Policy ¶ 4(a)(iii), we are not confined to the bad faith factors enumerated in Policy ¶ 4(b).  Instead, we may consider the totality of the circumstances to determine whether Respondent has registered and is using the contested domain name in bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):

 

[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.

 

With this in mind, we note that Respondent’s <unitedwayofwebsterdudley.com> domain name resolves to an adult-oriented website.  This use of the contested disputed domain name reveals bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that a respondent’s use of disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (finding that a respondent registered the <holidayinnakron.com> domain name and linked it to an adult-oriented website, stating that: 

 

[W]hatever the motivation of Respondent, the diversion of the domain names to a[n] [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.

 

For this reason, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <unitedwayofwebsterdudley.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  October 27, 2011

 

 

 

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