United Way of
Claim Number: FA0707001036202
Complainant is United Way of America (“Complainant”), represented by Susan
B. Flohr of Blank Rome LLP, 600 New Hampshire Ave.
NW, Washington, DC, 20037.
Respondent is Alex Zingaus (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <unitedwayoprffp.org>, registered with Network Solutions, 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 July 13, 2007; the National Arbitration Forum received a hard copy of the Complaint July 16, 2007.
On July 16, 2007, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <unitedwayoprffp.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-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 13, 2007, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@unitedwayoprffp.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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. The domain name that Respondent registered, <unitedwayoprffp.org>, is confusingly similar to Complainant’s UNITED WAY mark.
2. Respondent has no rights to or legitimate interests in the <unitedwayoprffp.org> domain name.
3. Respondent registered and used the <unitedwayoprffp.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Respondent
registered the <unitedwayoprffp.org> domain name February 4, 2004,
after Complainant’s UWA Member OPRFFP
inadvertently allowed the domain name registration to expire. The domain name at issue currently resolves
to a page displaying Complainant’s UNITED WAY mark alongside plagarized content
from other online sources describing Complainant’s chartiable endeavours and
then subsequently criticizes Complainant while promoting the efforts of another
charitable organization,
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 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.”).
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.
Panels have long recognized Complainant’s registration of a
mark with a trademark authority is sufficient to confer rights in the mark
pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum
Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately
demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also U.S.
Office of Pers. Mgmt. v. MS Tech. Inc., FA
198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a
determination that a mark is registrable, by so issuing a registration, as
indeed was the case here, an ICANN panel is not empowered to nor should it
disturb that determination.”). Based on
the foregoing, the Panel fully recognizes Complainant’s rights in the UNITED
WAY mark through registration with the USPTO.
Respondent’s <unitedwayoprffp.org> bears a confusing
similarity to Complainant’s UNITED WAY mark under the tenets of Policy ¶
4(a)(i). The domain name at issue fully
incorporates Complainant’s UNITED WAY mark and is paired with the letters
“OPRFFP,” collectively forming a descriptive term relating to the location of UWA Member OPRFFP in
Therefore, the Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that it has rights to and legitimate interests in the mark contained
in its entirety within the disputed domain name. Complainant alleges that
Respondent has no such rights. The Panel
notes that, before Respondent is required to put forth evidence demonstrating
rights and legitimate interests in the disputed domain name, Complainant must
first set forth a prima facie case
demonstrating Respondent’s lack thereof.
See ALPITOUR S.p.A. v. Albloushi,
FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii)
requires that the complainant must show that the respondent has no rights to or
legitimate interests in the subject domain name and that once the complainant
makes this showing, the burden of production shifts to the respondent to rebut
the complainant’s allegations); see also
F. Hoffman-La Roche AG v. Tomasso Di Salvatore, D2006-1417 (WIPO Feb. 1,
2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”).
Determining Complainant has met this initial burden, the Panel considers
whether Respondent can establish rights and legitimate interests in the <unitedwayoprffp.org> domain name.
Respondent
has failed to submit a Response in this proceeding. Accordingly, the Panel may infer Respondent
holds no rights or legitimate interests in the disputed domain name.
See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to
respond, it is presumed that Respondent lacks all rights and legitimate
interests in the disputed domain name.”); see
also Eroski, So. Coop. v. Getdomains Ishowflat Ltd.,
D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting
Respondent showed nothing else but an absolute lack of interest on the domain
name.”). However, the Panel considers
whether the record contains any evidentiary support demonstrating rights and
legitimate interests of Respondent in the <unitedwayoprffp.org>
domain name
under Policy ¶ 4(c).
Upon
examination of the record, the Panel determines that nothing suggests that
Respondent is commonly known by the <unitedwayoprffp.org> domain
name. Rather the WHOIS information
suggests Respondent is known as “Alex Zingaus.” Further, no proof suggests that
Complainant ever licensed, authorized, or permitted Respondent to register
domain names incorporating Complainant’s UNITED WAY mark. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969
(Nat. Arb. Forum Nov. 17, 2003)
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.”); see
also Compagnie de Saint Gobain
v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name). Based on the
foregoing, the Panel finds Respondent is not commonly known by the <unitedwayoprffp.org> domain name to satisfy
Policy ¶ 4(c)(ii).
Moreover,
Respondent is presently making use of the <unitedwayoprffp.org>
domain name to divert Internet users away from Complainant through the
confusion generated by the source of the content displayed at the <unitedwayoprffp.org> domain
name and as a complaint site. Diverting
Internet traffic away from Complainant in this deceptive manner does not
consitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommerical
fair use under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong,
D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the
complainant’s entire mark in domain names makes it difficult to infer a
legitimate use); see also State Farm Mut. Auto. Ins.
Co. v. LaFaive, FA 95407 (Nat. Arb.
Forum Sept. 27, 2000) (“The unauthorized providing of information and services
under a mark owned by a third party cannot be said to be the bona fide
offering of goods or services.”). While complaint sites are a
legitimate means of expressing disfavor, Respondent’s use of a confusingly
similar domain name, incorporating Complainant’s UNITED WAY mark, coupled with
use of the UNITED WAY mark on the resulting webpage, is not protected. See
Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d
Cir. 2000) (finding that although the content of the respondent’s site may be
entitled to First Amendment protection, the respondent’s use of the
complainant’s trademark in the domain name of its site is not protected); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9,
2000) (“[T]he Panel does not dispute Respondent’s right to establish and
maintain a website critical of Complainant . . . However, the panel does
not consider that this gives Respondent the right to identify itself as
Complainant.”).
The fact that Complainant’s UWA Member OPRFFP previously held the <unitedwayoprffp.org> domain name at issue before a lapse in registration permitted Respondent to take possession of it is evidence, in and of itself, that Respondent lacks rights and legitimate interests in the <unitedwayoprffp.org> domain name pursuant to Policy ¶ 4(a)(ii). See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb. 28, 2005) (“[T]he fact that Complainant had previously held the <wwwzappos.com> domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (“Complainant’s prior registration of the domain name, coupled with Respondent’s failure to respond to this dispute, is evidence that Respondent has no rights or legitimate interests in the domain name pursuant to Policy 4(a)(ii).”).
Accordingly, the Panel finds that Complainant’s evidence is sufficient to demonstrate Respondent’s lack of rights and legitimate interest in the <unitedwayoprffp.org> domain name under Policy ¶ 4(a)(ii). Complainant satisfied that section.
Complainant also alleges that Respondent acted in bad faith
in registering a domain name that contains in its entirety Complainant’s
protected mark. The domain name that
Respondent registered, <unitedwayoprffp.org>, presently resolves to a
webpage displaying Complainant’s UNITED WAY mark alongside content criticizing
Complainant’s works and promoting the services of another charity. This behavior evidences bad faith
registration and use under Policy ¶ 4(b)(iii) through Respondent’s intent to
disrupt the work of Complaniant. See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding
that the respondent registered and used the domain name <eebay.com> in
bad faith where the respondent has used the domain name to promote competing
auction sites).
Furthermore, as outlined by the panel in 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.” Respondent’s use of Complainant’s UNITED WAY mark both in the disputed domain name and on the resulting webpage along with disparaging content, effectively diverting traffic away from Complainant, is itself evidence of bad faith under Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Diners Club Int’l, Ltd. v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003) (“Respondent’s registration and use of a domain name nearly identical to Complainant’s mark to criticize Complainant’s business practices is evidence of registration and use of the <diners-club.net> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”).
Similarly, Complainant has submitted evidence into the record demonstrating one of its members’ previous ownership of the <unitedwayoprffp.org> domain name. Respondent’s misappriation of the domain name in question after it was inadvertently allowed to expire also suggests bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”).
The Panel finds that Complainant 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 <unitedwayoprffp.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 30, 2007.
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