Think Detroit Police Athletic League, Inc. d/b/a Think Detroit PAL v. Ron Arthur
Claim Number: FA1110001412720
Complainant is Think Detroit Police Athletic League, Inc. d/b/a Think Detroit PAL (“Complainant”), represented by David A. Copland of Foley & Lardner LLP, Illinois, USA. Respondent is Ron Arthur (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thinkdetroit.org>, registered with Network Solutions, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2011; the National Arbitration Forum received payment on October 25, 2011.
On October 26, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <thinkdetroit.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 October 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 17, 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@thinkdetroit.org. Also on October 28, 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 November 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <thinkdetroit.org> domain name is identical to Complainant’s THINK DETROIT mark.
2. Respondent does not have any rights or legitimate interests in the <thinkdetroit.org> domain name.
3. Respondent registered and used the <thinkdetroit.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Think Detroit Police Athletic League, Inc. d/b/a Think Detroit PAL, is a non-profit corporation formed in September of 1996. Complainant has used the THINK DETROIT mark since this time in connection with the promotion of its youth sports programs.
Respondent, Ron Arthur, registered the disputed domain name May 5, 1998. The disputed domain name resolves to a website advertising concert tickets and providing links to one or more commercial sites. Respondent’s website displays Complainant’s mark and logo.
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 claims rights in the THINK DETROIT mark but has not registered the mark with a trademark authority. Possession of a registered trademark is not required to establish rights in the mark, however, so long as Complainant can demonstrate common law rights in the 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 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).
The Panel finds that Complainant has provided sufficient evidence to establish common law rights in the THINK DETROIT mark under Policy ¶ 4(a)(i). Complainant’s articles of incorporation indicate that the corporation was formed in September of 1996, over a year before the disputed domain name was registered. Complainant began offering T-ball, baseball, and softball programs shortly thereafter. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name). Complainant has also provided evidence of its continuous and extensive use of the mark since its formation. Complainant’s programs served 700 youth annually in 1999, expanding to 4,000 youth annually by 2005. Complainant has advertised its services through print ads, newsletters, direct mail campaigns, various promotional items, and Internet advertising. The Panel finds this sufficient evidence to establish common law rights in the THINK DETROIT mark under Policy ¶ 4(a)(i) as well. See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark).
The Panel also finds the disputed <thinkdetroit.org> domain name to be identical to the THINK DETROIT mark under Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, only deleting the space between the words and adding the generic top-level domain (“gTLD”) “.org”. A space between words in a mark is not replicable in a domain name, so the deletion of the space is insufficient to distinguish a disputed domain name under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). It is also well-established that the affixation of a gTLD cannot distinguish a disputed domain name because a gTLD is a necessary element of every domain name. See Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
The Panel finds the elements of Policy ¶ 4(a)(i) to have been satisfied.
From the outset, the burden of presenting a prima facie case lies with Complainant. Once this has been done, as is the case here, the burden shifts to Respondent to rebut Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “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 [the] respondent to show it does have rights or legitimate interests.”). Respondent in this case has failed to produce a Response, which some panels have construed as evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will nonetheless continue to examine the record against the Policy ¶ 4(c) factors, however, to determine whether such rights or legitimate interests do in fact exist.
Complainant alleges that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “Ron Arthur.” The Panel finds this bears no resemblance to the <thinkdetroit.org> domain name, providing evidence that Respondent is not commonly known by the disputed domain name. 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). Complainant further states that it has not authorized Respondent’s use of the THINK DETROIT mark, nor has Respondent ever been affiliated with Complainant in any way. In the absence of a Response, or any other evidence in the record to support the notion that Respondent is commonly known by the disputed domain name, the Panel must conclude that that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further alleges that Respondent’s use of the disputed domain name does not constitute 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). Respondent’s disputed domain name resolves to a website advertising concert tickets and providing links to one or more commercial sites. Previous panel decisions have made it clear that the use of a disputed domain name to resolve to a website featuring links and advertisements to goods and services unrelated to Complainant cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel holds that Respondent’s use of the disputed domain name does not constitute 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).
The Panel finds the elements of Policy ¶ 4(a)(ii) to have been satisfied.
Complainant argues that Respondent’s registration and use of the disputed domain name also exhibits bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent’s use of a confusingly similar domain name substantially increases the likelihood that consumers will believe that Respondent’s site is sponsored by or somehow associated with Complainant. The Panel assumes that Respondent collects click-through fees each time one of the links featured on its page is accessed. Respondent, therefore, attempts to realize a commercial gain from the confusion it creates, as greater traffic will lead to a higher click-through rate, in turn leading to a greater financial gain. The Panel holds that this type of use constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the THINK DETROIT mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). The Panel finds that Complainant has proven that Respondent has actual knowledge of Complainant's mark and therefore, Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds the elements of Policy ¶ 4(a)(iii) to have 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 <thinkdetroit.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 6, 2011
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