United States Conference of Catholic Bishops v. Noori net
Claim Number: FA1203001432450
Complainant is United States Conference of Catholic Bishops (“Complainant”), represented by Amy Sterba of Rothwell, Figg, Ernst & Manbeck P.C., Washington, D.C., USA. Respondent is Noori net (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <projectrachel.com>, registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2012; the National Arbitration Forum received payment on March 1, 2012. The Complaint was submitted in both Korean and English.
On March 2, 2012, Korea Information Certificate Authority, Inc. d/b/a DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <projectrachel.com> domain name is registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com and that Respondent is the current registrant of the names. Korea Information Certificate Authority, Inc. d/b/a DomainCA.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a DomainCA.com 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 2, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of March 22, 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@projectrachel.com. Also on March 2, 2012, the Korean language 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 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable 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 name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, United States Conference of Catholic Bishops, owns and uses the PROJECT RACHEL trademark, which it registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,362,655 registered September 24, 1985).
2. Complainant is a nonprofit organization which offers services in post-abortion counseling to men and women.
3. Respondent, Noori Net, registered the <projectrachel.com> domain name on January 10, 2008.
4. The <projectrachel.com> domain name is identical to Complainant’s PROJECT RACHEL mark.
5. The <projectrachel.com> domain name resolves to a website that offers hyperlinks to competing entities for which Respondent generates “pay-per-click” fees.
6. Respondent is not affiliated with or related to Complainant in any way and does not have authorization to use the PROJECT RACHEL mark.
B. Respondent
Respondent did not submit a Response.
LANGUAGE OF THE PROCEEDINGS
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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."
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.
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.”).
Complainant asserts that it owns the rights to the PROJECT RACHEL mark by its registration with the USPTO (Reg. No. 1,362,655 registered September 24, 1985). The panel held in Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) that registration of a trademark with the USPTO is adequate to establish rights in the mark. Also, in Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), the panel found that the complainant’s registration of its DISNEY trademark with the USPTO prior to the respondent registering the disputed domain name proves the complainant has rights in the mark. The Panel finds that, based on panel precedent, Complainant established its rights in the PROJECT RACHEL mark under Policy ¶ 4(a)(i). The Panel also finds that Complainant need not register its mark in the same country where Respondent resides and operates for the purposes of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark 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).
Complainant argues that the <projectrachel.com> domain name is identical to its PROJECT RACHEL mark, because the domain name includes the mark in its entirety, with the space between words removed and the generic top-level domain (“gTLD”) “.com” added. Removing a space between the words of a mark and adding a gTLD are not changes sufficient to distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark); see also Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES).
Complainant has proven this element.
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <projectrachel.com> domain name. Although Complainant provides no evidence to support this contention, the Panel observes that the WHOIS information identifies the domain registrant as “Noori Net,” which does not demonstrate that Respondent is commonly known by the disputed domain name. In Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002), and M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panels respectively held that a respondent is not commonly known by the domain name if the WHOIS information does not support such a finding. The Panel finds that because no evidence demonstrates that Respondent is commonly known by the disputed domain name, Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not made use of the <projectrachel.com> domain name in connection with a bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the domain name. Complainant points to the hyperlinks listed on the resolving website, which it alleges brings Respondent profit through a “domain parking” scheme, which is purely commercial in nature. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) found that failure to offer any goods or services other than links to third-party websites is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The panel in Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) also held that operating a website that displays links to commercial websites is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds that because Respondent’s website features a variety of links to commercial sites, Respondent’s use of the domain name 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).
Complainant has proven this element.
Complainant argues that Respondent’s website “illustrates a clear intent to attract website traffic to Respondent’s website,” wherein visitors to the site have access to hyperlinks which generate revenue for Respondent with each click. Complainant alleges that Respondent’s domain name misguides Internet traffic to the resolving website who would otherwise have come across Complainant’s own website, and diverts users to advertisements in order to benefit Respondent financially. The Panel finds that maintaining the <projectrachel.com> domain name to attract Internet traffic with a confusingly similar domain name in order to make a profit is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <projectrachel.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 10, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page