Publishing House of the Evangelical Lutheran Church in American v. Stacey Abel
Claim Number: FA1208001456482
Complainant is Publishing House of the Evangelical Lutheran Church in America (“Complainant”), represented by Linda M. Byrne of Crawford Maunu PLLC, Minnesota, USA. Respondent is Stacey Abel (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sparkhouse.org>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2012; the National Arbitration Forum received payment on August 2, 2012.
On August 6, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <sparkhouse.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 August 8, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@sparkhouse.org. Also on August 8, 2012, 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 August 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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:
Respondent’s <sparkhouse.org> domain name, the domain name at issue, is confusingly similar to Complainant’s SPARKHOUSE mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent submitted correspondence to the Forum and Complainant, which did not controvert the allegations in the Complaint and did not rise to the level of a response as comprehended by the Policy. Accordingly, the Panel determined that this case would be analyzed as if it were a default proceeding.
Complainant owns the SPARKHOUSE trademark, which it uses to designate a division of its business. SPARKHOUSE is a product line that includes print and electronic media concerning religious, spiritual, and educational topics. Complainant registered its SPARKHOUSE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,788,617 registered May 11, 2010). Complainant owns trademark registrations in foreign countries as well. Complainant publishes and sells religious training materials, many of which use the SPARKHOUSE trademark and also operates a website at <wearesparkhouse.org>, which provides information about Complainant’s products and services and allows customers to purchase materials from its online store.
Respondent registered the <sparkhouse.org> domain name on October 21, 2010. The disputed domain name resolves to a website that prominently features the domain name <godaddy.com>, and displays hyperlinks under the heading “Ads,” including links stating “Study the Bible Online.” The homepage also states “This web page is parked for FREE, courtesy of GoDaddy.com.” Respondent does not have authorization to use the SPARKHOUSE mark or to sell Complainant’s products. The disputed domain name is confusingly similar to Complainant’s mark. Respondent parked the disputed domain name at <godaddy.com>, and the posted hyperlinks lead to businesses that offer competing products and services. Respondent registered and used the disputed domain name in bad faith by attempting to lead Complainant’s potential consumers away from Complainant’s website and to its own, as well as disrupting Complainant’s business.
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.
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 owns trademark rights in the SPARKHOUSE mark through its trademark registration with the USPTO (Reg. No. 3,788,617 registered May 11, 2010), as well as with trademark registrations in other countries outside the United States. Complainant’s USPTO trademark registration sufficiently establishes its rights in the SPARKHOUSE mark pursuant to Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
The <sparkhouse.org> domain name is confusingly similar to its SPARKHOUSE mark because it fully incorporates the mark. The only addition to the disputed domain name is the generic top-level domain (“gTLD”) “.org,” and the <sparkhouse.org> domain name is identical to Complainant’s SPARHOUSE mark for the purposes of Policy ¶ 4(a)(i). 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 that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name and Respondent does not have authorization to use the SPARKHOUSE mark. The WHOIS information for the <sparkhouse.org> domain name identifies “Stacey Abel” as the registrant. See Exhibit 3. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), held that the respondent was not commonly known by the disputed domain name, based on the WHOIS information as well as the fact that the complainant had not granted the respondent permission to register a domain name using the trademark. The WHOIS information as well as Complainant’s contention that Respondent has no rights to the SPARKHOUSE trademark support a finding that Respondent is not commonly known by the <sparkhouse.org> domain name under Policy ¶ 4(c)(ii).
Respondent uses a parked website to display hyperlinks to third party websites whose business includes Bible lessons, kids’ activities, and domain name registrations. Such use misleads and diverts Internet traffic for Respondent’s commercial gain, and is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel notes that Respondent’s disputed domain name resolves to a parked website with the Registrar at <godaddy.com>. The Panel concludes that offering competing and noncompeting hyperlinks at the resolving website is 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). See H-D Mich. Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent disrupts Complainant’s business by posting hyperlinks to businesses that are in direct competition with Complainant, which is evidence of bad faith registration and use. The panel in United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), held that the disputed domain name resolved to a website with links to competitors of the complainant, which established the respondent’s bad faith registration and use. Respondent’s registration and use of the <sparkhouse.org> domain name is in bad faith under Policy ¶ 4(b)(iii) because the disputed domain name leads Internet traffic away from Complainant’s website and to Respondent’s website, thereby disrupting Complainant’s business. Respondent’s use of an identical domain name to confuse consumers and attract Internet traffic to the <sparkhouse.org> domain name in order to make a commercial profit demonstrates that Respondent registered and uses the disputed domain name in bad faith. Because Internet users are likely to be confused by an identical domain name and attracted to the resolving website, thereby generating profit, Respondent registered and uses the <sparkhouse.org> domain name in bad faith under Policy ¶ 4(b)(iv). See 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).”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sparkhouse.org> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 10, 2012
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