Lean In Foundation d/b/a LeanIn.Org v. James Miller
Claim Number: FA1403001549870
Complainant is Lean In Foundation d/b/a LeanIn.Org (“Complainant”), represented by Roberta L. Horton of Arnold & Porter LLP, Washington, D.C., USA. Respondent is James Miller (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lean-in.biz>, <lean-in-the-movie.biz>, <lean-in-the-movie.info>, <lean-in-the-movie.org>, <lean-in-the-movie.com>, <lean-insucks.info>, <lean-insucks.org>, <lean-insucks.com>, <leaninsucks.biz>, <leaninsucks.info>, <leaninsucks.org>, <leaninsucks.com>, <leaninthemovie.biz>, <leaninthemovie.info>, and <leaninthemovie.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 20, 2014; the National Arbitration Forum received payment on March 21, 2014.
On March 20, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <lean-in.biz>, <lean-in-the-movie.biz>, <lean-in-the-movie.info>, <lean-in-the-movie.org>, <lean-in-the-movie.com>, <lean-insucks.info>, <lean-insucks.org>, <lean-insucks.com>, <leaninsucks.biz>, <leaninsucks.info>, <leaninsucks.org>, <leaninsucks.com>, <leaninthemovie.biz>, <leaninthemovie.info>, and <leaninthemovie.org> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2014 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@lean-in.biz, postmaster@lean-in-the-movie.biz, postmaster@lean-in-the-movie.info, postmaster@lean-in-the-movie.org, postmaster@lean-in-the-movie.com, postmaster@lean-insucks.info, postmaster@lean-insucks.org, postmaster@lean-insucks.com, postmaster@leaninsucks.biz, postmaster@leaninsucks.info, postmaster@leaninsucks.org, postmaster@leaninsucks.com, postmaster@leaninthemovie.biz, postmaster@leaninthemovie.info, and postmaster@leaninthemovie.org. Also on March 21, 2014, 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 April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
a) Complainant is a global organization that empowers people and helps them achieve their goals. The organization derives its name from the famous book by Sheryl Sandberg, Lean In: Women, Work, and the Will to Lead. The book, which discusses women in the workplace and the current state of feminism, garnered instant attention following publication on March 11, 2013 and subsequently became a best seller. Plans are underway to make the book into a movie and have been highly publicized. See Complainant’s Annex C. Complainant has rights in the LEAN IN mark by virtue of its registration and extensive use of the mark. Complainant is the owner of the registration with the European Union’s Office for the Harmonization in the Internal Market (“OHIM”) for the LEAN IN mark (Reg. No. 11,677,424 registered October 22, 2013). See Complainant’s Annex E. Additionally, Complainant has spent substantial time and effort promoting the LEAN IN mark throughout the United States and has seven applications pending with the United States Patent and Trademark Office (“USPTO”) for the mark. The mark has become distinctive and uniquely associated with Complainant and its services.
b) The disputed domain names are confusingly similar to the LEAN IN mark. The domain names each incorporate the LEAN IN mark, minus the spacing between words, as well as some of the following: a hyphen, generic or descriptive terms, “sucks,” and a generic top-level domain (“gTLD”).
c) Respondent has no connection to or affiliation with Complainant, and Respondent was never known by any name that incorporates the terms of the LEAN IN mark. Further, the WHOIS records for the disputed domain names do not identify Respondent as any derivation of the LEAN IN mark.
d) The disputed domain names resolve to parked websites that feature links to other websites or to GoDaddy parked page including unrelated advertisement links to purchasing domain names. See Complainant’s Annex F.
e) The fact that Respondent registered 15 domain names incorporating the LEAN IN mark is evidence of bad faith.
f) The incorporation of the LEAN IN mark in the domain names create initial interest confusion that attracts Internet users to the disputed domain names when they were seeking Complainant’s genuine website. Respondent’s use of the domain names to resolve to directory advertisement and links pages is demonstrative of bad faith.
g) Due to the fame and attention given to the LEAN IN book, a LEAN IN movie is being made. This was announced on Jan 24, 2014, just four days prior to Respondent’s registration of 15 domain names related to the LEAN IN mark, many of which specifically reference the movie. See Complainant’s Annex C.
h) The disputed domain names were registered with full knowledge of Complainant’s rights in the LEAN IN mark. The LEAN IN mark is famous, and Respondent registered it in 15 domain names some of which incorporating mark-specific terms.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an organization that promotes personal development and leadership in women based on the book by Sheryl Sandberg, Lean In: Women, Work, and the Will to Lead, now proposed to be made into a film.
2. Complainant has rights in the LEAN IN trademark registered with the European Union’s Office for the Harmonization in the Internal Market (“OHIM”) for the LEAN IN mark (Reg. No. 11,677,424 registered October 22, 2013).
3. The <lean-in.biz>, <lean-in-the-movie.biz>, <lean-in-the-movie.info>, <lean-in-the-movie.org>, <lean-in-the-movie.com>, <lean-insucks.info>, <lean-insucks.org>, <lean-insucks.com>, <leaninsucks.biz>, <leaninsucks.info>, <leaninsucks.org>, <leaninsucks.com>, <leaninthemovie.biz>, <leaninthemovie.info>, and <leaninthemovie.org> domain names were registered on January 28, 2014.
4. The disputed domain names resolve to parked websites that feature links to other websites or to GoDaddy parked page including unrelated advertising links to purchasing domain names.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant claims that it is a global organization that empowers people and helps them achieve their goals. Complainant explains that the organization derives its name from the famous book by Sheryl Sandberg, Lean In: Women, Work, and the Will to Lead. The book, Complainant notes, which discusses women in the workplace and the current state of feminism, garnered instant attention following publication on March 11, 2013 and subsequently became a best seller. Complainant claims that plans are underway to make the book into a movie and have been highly publicized. See Complainant’s Annex C. Complainant contends that it has rights in the LEAN IN mark by virtue of its registration and extensive use of the mark. Complainant is the owner of the registration with the European Union’s OHIM for the LEAN IN mark (Reg. No. 11,677,424 registered October 22, 2013). See Complainant’s Annex E. Additionally, Complainant notes that it has spent substantial time and effort promoting the LEAN IN mark throughout the United States and has seven applications pending with the USPTO for the mark. Complainant asserts that the mark has become distinctive and uniquely associated with Complainant and its services. Panels have found that the registration of a mark with a trademark authority confers rights under Policy ¶ 4(a)(i), despite the location of the registration. See Direct Mktg. Co. S.p.A. v. Morelli, D2010-1335 (WIPO Sept. 6, 2010) (finding Complainant’s European Union Office for the Harmonization of the Internal Market (“OHIM”) trademark registration sufficient to establish complainant’s rights in its GIORNO NOTTE mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the LEAN IN mark pursuant to Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s LEAN IN mark. Complainant next alleges that the disputed domain names are confusingly similar to the LEAN IN mark. Complainant notes that the domain names each incorporate the LEAN IN mark, minus the spacing between words, as well as some of the following: a hyphen, generic or descriptive terms, “sucks,” and a gTLD. The Panel finds that these changes fail to create a meaningful distinction between the mark and the disputed domain names. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument). Therefore, the Panel finds that the <lean-in.biz>, <lean-in-the-movie.biz>, <lean-in-the-movie.info>, <lean-in-the-movie.org>, <lean-in-the-movie.com>, <lean-insucks.info>, <lean-insucks.org>, <lean-insucks.com>, <leaninsucks.biz>, <leaninsucks.info>, <leaninsucks.org>, <leaninsucks.com>, <leaninthemovie.biz>, <leaninthemovie.info>, and <leaninthemovie.org> domain names are confusingly similar to the LEAN IN mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LEAN IN mark and
to use it in its domain names, making only the alterations and additions
to the trademark referred to above when incorporating it into the domain names;
(b) The disputed domain names resolve to parked websites that feature links to other websites or to GoDaddy parked page including unrelated advertisement links to purchasing domain names;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant asserts that Respondent has no connection to or affiliation with Complainant, and Respondent was never known by any name that incorporates the terms of the LEAN IN mark. Further, Complainant notes that the WHOIS records for the disputed domain names do not identify Respondent as any derivation of the LEAN IN mark. The Panel notes that the WHOIS records for the disputed domain names list “James Miller” as the domain names’ registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. Similarly, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii):
(e) Complainant next alleges that the disputed domain names resolve to parked websites that feature links to other websites or to GoDaddy parked page including unrelated advertisement links to purchasing domain names. See Complainant’s Annex F. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007), found that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). As such, the Panel finds that Respondent’s use of the disputed domain names does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
names were registered and used in bad faith. That is so for the following
reasons.
First, Complainant asserts that the fact that Respondent registered 15 domain names incorporating the LEAN IN mark is evidence of bad faith. In Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), the panel found that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii). Therefore, the Panel finds that Respondent’s registration of 15 domain names is evidence of a pattern of bad faith that allows for an inference in this dispute pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant next argues that the incorporation of the LEAN IN mark in the domain names create initial interest confusion that attracts Internet users to the disputed domain names when they were seeking Complainant’s genuine website. Complainant asserts that Respondent’s use of the domain names to resolve to directory advertisement and links pages is demonstrative of bad faith because these monetized hyperlinks generate profits for Respondent. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel stated, “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).” Therefore, the Panel finds that Respondent intentionally attempted to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv).
Thirdly, Complainant states that due to the fame and attention given to the LEAN IN book, a LEAN IN movie is being made. Complainant notes that this was announced on Jan 24, 2014, just four days prior to Respondent’s registration of 15 domain names related to the LEAN IN mark, many of which specifically reference the movie. See Complainant’s Annex C. The Panel finds that the timing of the registration of the domain name demonstrates Respondent’s opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
Fourthly, Complainant lastly alleges that the disputed domain names were registered with full knowledge of Complainant’s rights in the LEAN IN mark. Complainant argues that the LEAN IN mark is famous, and Respondent registered it in 15 domain names some of which incorporating mark-specific terms. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the LEAN IN mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lean-in.biz>, <lean-in-the-movie.biz>, <lean-in-the-movie.info>, <lean-in-the-movie.org>, <lean-in-the-movie.com>, <lean-insucks.info>, <lean-insucks.org>, <lean-insucks.com>, <leaninsucks.biz>, <leaninsucks.info>, <leaninsucks.org>, <leaninsucks.com>, <leaninthemovie.biz>, <leaninthemovie.info>, and <leaninthemovie.org> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 18, 2014
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