Russian American Foundation, Inc. v. William Bianco
Claim Number: FA1211001471790
Complainant is Russian American Foundation, Inc. (“Complainant”), represented by Scott Klein of Mintz & Gold LLP, New York, USA. Respondent is William Bianco (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <therussianamericanfoundation.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically November 16, 2012; the National Arbitration Forum received payment November 16, 2012.
On November 19, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <therussianamericanfoundation.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC 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 November 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 11, 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@therussianamericanfoundation.org. Also on November 21, 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 December 21, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant owns and uses the RUSSIAN AMERICAN FOUNDATION mark in commerce and has done so for fifteen years, establishing common law rights in the mark. Complainant was founded in 1997 and operates as a nonprofit organization in New York City. Complainant’s business was founded to perpetuate interest in Russian heritage in communities throughout the country, as well as to promote reciprocal interest in understanding American heritage in Russian-speaking communities. Complainant helped sponsor pre-professional dancers to present an intensive ballet dance program, which helps bring publicity to the Russian American Foundation (“RAF”).
Respondent registered his daughter to attend the program, named the Bolshoi Ballet Academy Summer Intensive (“BBASI”), and Respondent sought a full refund of the tuition and board payments after his daughter withdrew from the program last minute. Complainant has a “no refund” policy regarding any withdrawal from the BBASI within thirty days from the start of the program, and when Complainant attempted to resolve the dispute with Respondent, Respondent refused to compromise and instead registered the disputed domain name in order to pressure RAF to alter its refund Policy. Respondent concedes in an e-mail that he has no legitimate rights to the <therussianamericanfoundation.org> domain name. See Exhibit E. Respondent registered the domain name after the dispute and was “well aware” of Complainant’s established rights in the RUSSIAN AMERICAN FOUNDATION mark.
The <therussianamericanfoundation.org> domain name is nearly identical to Complainant’s RUSSIAN AMERICAN FOUNDATION mark. Respondent’s use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, nor is Respondent commonly known by the disputed domain name. Respondent registered the <therussianamericanfoundation.org> domain name with the purpose of harassing Complainant and disrupting its business, which demonstrates Respondent’s bad faith registration and use.
The Complainant established that it has rights in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
The Respondent has no such rights to or legitimate interests in the disputed domain name.
The Respondent registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”)
Identical or Confusingly Similar
Previous panels have stated that trademark registration with a national agency is not necessary in order for a complainant to claim rights to a mark. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant asserts that its rights in the RUSSIAN AMERICAN FOUNDATION are based on its common law rights, which it established as a result of continuous use over the period of fifteen years’ time. The Panel notes that Complainant supplied its New York Division of Corporations registration information, which identifies the entity name as “RUSSIAN AMERICAN FOUNDATION, INC.” and is dated March 17, 1997. See Complainant’s Exhibit D. The Panel therefore finds that Complainant’s fifteen-year use of the RUSSIAN AMERICAN FOUNDATION mark in commerce is sufficient to have developed a secondary meaning in the mark, thus establishing Complainant’s common law rights under Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Complainant argues that the <therussianamericanfoundation.org> domain name is nearly identical to its RUSSIAN AMERICAN FOUNDATION mark, claiming that the generic term “the” added to the mark results in a “functional equivalent” of using an identical mark. The Panel notes that the domain name also removes the spaces between the words of the mark, and affixes the generic top-level domain (“gTLD”) “.org” to the domain name. The Panel finds that the changes made to the mark within the <therussianamericanfoundation.org> domain name do not properly distinguish the domain from the RUSSIAN AMERICAN FOUNDATION mark, rendering it confusingly similar under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 disputed domain name, and Respondent does not do business under the domain name, nor is Respondent licensed by Complainant to use the RUSSIAN AMERICAN FOUNDATION mark. The Panel notes that the WHOIS information identifies “William Bianco” as the registrant, and finds that the WHOIS information and Complainant’s absence of permission to Respondent to use the mark demonstrates that Respondent is not commonly known by the <therussianamericanfoundation.org> domain name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent admits in an e-mail to Complainant Respondent’s failure to use the <therussianamericanfoundation.org> domain name in such a way as to constitute a bona fide offering of goods or services. See Exhibit E. Complainant argues that Respondent registered the domain name in order to exert pressure on Complainant and compel Complainant to agree to Respondent’s demands of a refund for tuition money. The Panel notes that Complainant does not include evidence of Respondent’s alleged use of the disputed domain name. The Panel finds that using a domain name as incentive to force Complainant to agree to Respondent’s terms fails to amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Westminster Savings Credit Union v. Hart Indus. Inc., D2002-0637 (WIPO Aug. 30, 2002) (holding that by using a domain name as a threat in order to settle a dispute cannot be considered an expression of a legitimate interest in the domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Bad Faith Registration and Use
Complainant alleges that Respondent registered and uses the <therussianamericanfoundation.org> domain name in bad faith, as shown by his attempt to threaten Complainant and to force Complainant to issue a tuition refund. The Panel notes that Complainant does not submit evidence showing Respondent’s specific use of the disputed domain name. The Panel finds that using a domain name to threaten Complainant to comply with Respondent’s wishes is disruptive to Complainant’s business and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Nevyas v. Morgan, FA1333710 (Nat. Arb. Forum Aug. 26, 2010) (stating that the respondent’s bad faith is evident by its use of the disputed domain name to act in opposition to the complainant, which for the purposes of the UDRP is defined as a competitor and constitutes disruption to the complainant’s business).
Complainant contends that Respondent had actual notice of Complainant’s RUSSIAN AMERICAN FOUNDATION mark at the time Respondent registered the mark, because Respondent was clearly aware of Complainant when he registered his daughter for the dance academy months earlier, which is operated by Complainant under its mark. The Panel finds that Respondent’s actual knowledge of Complainant’s mark prior to registering the <therussianamericanfoundation.org> domain name demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <therussianamericanfoundation.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 4, 2013.
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