MoveOn.org Civic Action v. Richard Troy
Claim Number: FA1201001424745
Complainant is MoveOn.org Civic Action (“Complainant”), represented by Barbara L. Friedman of Cobalt, LLP, California, USA. Respondent is Richard Troy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <moveonoakland.org> and <moveoneastbay.org>, registered with GoDaddy.com, 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.
Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 13, 2012; the National Arbitration Forum received payment on January 16, 2012.
On January 16, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <moveonoakland.org> and <moveoneastbay.org> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 January 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2012 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@moveonoakland.org and postmaster@moveoneastbay.org. Also on January 23, 2012, 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 February 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Karl V. Fink (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <moveonoakland.org> and <moveoneastbay.org> domain names are confusingly similar to Complainant’s MOVEON.ORG mark.
2. Respondent does not have any rights or legitimate interests in the <moveonoakland.org> and <moveoneastbay.org> domain names.
3. Respondent registered and used the <moveonoakland.org> and <moveoneastbay.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, MoveOn.org Civic Action, is a nonprofit public policy advocacy group whose purpose is to assist citizens in reaching legislators to express their concerns. MoveOn.org Civic Action owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for MOVEON.ORG (e.g. 2,970,317 registered July 19, 2005).
Respondent, Richard Troy, registered the <moveonoakland.org> and <moveoneastbay.org> domain names on July 9, 2007 and July 25, 2011, respectively. Respondent’s disputed domain names resolve to a website that mimics Complainant’s website and attempts to procure personal information from Internet users who visit the site.
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 its MOVEON.ORG mark via trademark registration with the USPTO (e.g. 2,970,317 registered July 19, 2005). The Panel determines that Complainant’s registration of its MOVEON.ORG mark with the USPTO satisfactorily shows Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that the <moveonoakland.org> and <moveoneastbay.org> domain names are confusingly similar to Complainant’s MOVEON.ORG mark. The disputed domain names use Complainant’s mark in its entirety, with the addition of the geographic identifiers “oakland” and “eastbay,” respectively. The Panel concludes that the additions of geographic terms to the mark do not serve to sufficiently alter the domain name to differentiate it from Complainant’s MOVEON.ORG mark. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark). Therefore, under Policy ¶ 4(a)(i), the Panel concludes that Respondent’s <moveonoakland.org> and <moveoneastbay.org> domain names are confusingly similar to Complainant’s MOVEON.ORG mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. Policy ¶ 4(a)(ii) mandates that Complainant establish a prima facie case supporting those allegations, and once Complainant has successfully made such a showing, the burden shifts to Respondent to demonstrate that it does possess rights or legitimate interests in the disputed domain names. 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.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has successfully established a prima facie case. Due to Respondent’s lack of response, the Panel may presume that Respondent does not possess any rights or legitimate interests in the disputed domain names. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”). However, the Panel will analyze the evidence to make a finding as to whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain names. Further, Complainant contends that it has not licensed Respondent to use the MOVEON.ORG mark in any way. The WHOIS information identifies “Richard Troy” as the registrant of the disputed domain names. The Panel concludes that without any evidence showing Respondent is commonly known by the disputed domain names, Respondent has no rights or legitimate interests in the names according to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant makes no allegations about the disputed domain names under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). Complainant does contend, however, that the resolving website prominently displays a similar version of Complainant’s stylized MOVEON.ORG mark and logo, as well as its “Democracy in Action” tagline, designed to replicate Complainant’s website. Complainant alleges that the website is designed to pass itself off as Complainant to direct consumers away from Complainant’s own MOVEON.ORG website and take them to the disputed domain names, under the belief that the websites are associated with Complainant’s organization. Complainant contends that the website attempts to “usurp the goodwill and reputation that MoveOn.org has worked hard to build in its marks[.]” The Panel concludes that Respondent’s effort to pass itself off as Complainant does not amount to 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). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the disputed domain names demonstrates bad faith under Policy ¶ 4(b)(iv). As Complainant failed to allege any commercial gain or provide any evidence of Respondent profiting from the disputed domain names, the Panel declines to make a finding of bad faith under Policy ¶ 4(b)(iv).
When conducting a Policy ¶ 4(a)(iii) analysis, the Panel finds that it may consider the totality of the circumstances without being limited to the enumerated factors in Policy ¶ 4(b). 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.”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant argues that Respondent’s <moveonoakland.org> and <moveoneastbay.org> domain names endeavor to pass Respondent off as Complainant and convince Internet users that the websites are sponsored by Complainant’s organization by using the same stylized mark, tagline, design, and graphics to replicate Complainant’s website. Complainant contends that the disputed domain names cause confusion as to the affiliation between the MOVEON.ORG mark and Respondent’s websites. The Panel concludes that Respondent’s efforts to purposely attract Internet traffic to the resolving websites and create confusing by mimicking the design and appearance of Complainant’s website reveal that Respondent aims to pass itself off as Complainant, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <moveonoakland.org> and <moveoneastbay.org> domain names be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: February 22, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page