Alcohol & Drug Abuse Self-Help Network, Inc., d/b/a SMART
Recovery v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1211001470363
Complainant is Alcohol & Drug Abuse Self-Help Network, Inc., d/b/a SMART
Recovery (“Complainant”), represented by Claire Johnson Saenz, Pennsylvania, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartrecovery.com>, registered with Internet.bs Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2012; the National Arbitration Forum received payment on November 8, 2012.
On November 13, 2012, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <smartrecovery.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@smartrecovery.com. Also on November 16, 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 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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:
1. Respondent’s <smartrecovery.com> domain name is confusingly similar to Complainant’s SMART RECOVERY mark.
2. Respondent does not have any rights or legitimate interests in the < smartrecovery.com> domain name.
3. Respondent registered or used the <smartrecovery.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. Respondent has been unable to provide proof/documentation of having trademark rights in the disputed domain name.
ii. Respondent has provided Internet users with third-party links to Alcoholics Anonymous, and other for-profit commercial organizations that are not affiliated with Complainant. Respondent is not making legitimate noncommercial use of the domain name but is clearly attempting to mislead/divert consumers and harm the trademark, as well as individuals seeking the SMART RECOVERY program and services.
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 claims that it is the owner for the SMART RECOVERY mark that it uses in providing its addiction-related programs and services. Complainant also notes that it owns the SMART RECOVERY mark with the USPTO (Reg. No. 1,946,898 registered Jan. 9, 1996) and with the WIPO (Reg. No. 871,516 registered Sept. 19, 2005). See Complainant’s Annex H. The Panel finds, despite Respondent’s location in Panama, that Complainant has established its rights in the SMART RECOVERY mark under Policy ¶ 4(a)(i) through its submitted trademark registrations. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Further, Complainant asserts that the <smartrecovery.com> domain name is being used in a way that is confusingly similar to the SMART RECOVERY mark. The Panel notes that the applicable analysis under Policy ¶ 4(a)(i) is a comparison between the disputed domain name and the mark, not the content on the resolving website. In that respect, the Panel notes that the disputed domain name features Complainant’s entire mark, absent the space between the terms, while adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that such changes do not distinguish the disputed domain name from the mark and finds that the disputed domain name is in fact identical to Complainant’s 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).
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 the owners of the disputed domain name have no rights or legitimate interests with respect to the SMART RECOVERY program. Complainant also asserts that Respondent has been unable to provide proof/documentation of having trademark rights in the disputed domain name. The Panel notes that the disputed domain name’s WHOIS information provides no support for a contention that Respondent is commonly known by the <smartrecovery.com> domain name as it lists “Fundacion Private Whois / Domain Administrator” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, Complainant asserts that Respondent has provided Internet users with third-party links to Alcoholics Anonymous and other for-profit commercial organizations that are not affiliated with Complainant. Complainant argues that Respondent is not making a legitimate noncommercial use of the domain name but is clearly attempting to mislead/divert consumers and harm the trademark, as well as individuals seeking the SMART RECOVERY program and services. The Panel notes that the only evidence that Complainant has provided that shows the use of Respondent’s disputed domain name is a screenshot that is contained in the Complaint document. The Panel finds that Respondent’s resolution of the disputed domain name to a website containing only links to competing and unrelated websites 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). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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 asserts that Respondent has registered and is using the disputed domain name in bad faith and primarily for the purposes of intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark. As noted above, Respondent’s disputed domain name at one time resolved to a website featuring various third-party links to websites that rival that of Complainant’s addiction recovery programs, and those that are wholly unrelated to Complainant’s business and programming. The Panel determines that such use of the disputed domain name is evidence of 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <smartrecovery.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 2, 2013
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