Mercy Partners v. Kenneth DeWitt / Africa Mercy Partners / Africasupportpartners
Claim Number: FA1404001554831
Complainant is Mercy Partners (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Kenneth DeWitt / Africa Mercy Partners / Africasupportpartners (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <africamercypartners.com>, <africamercypartners.org>, <liberiamercypartners.com>, and <liberiamercypartners.org> (the “Domain Names”), registered with GoDaddy.com, LLC.
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.
Clive Elliott QC as Panelist.
On April 18, 2014 Complainant submitted a Complaint to the National Arbitration Forum electronically. On April 18, 2014 the National Arbitration Forum received payment.
On April 18, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <africamercypartners.com> <africamercypartners.org>, <liberiamercypartners.com>, and <liberiamercypartners.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 April 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@africamercypartners.com, postmaster@africamercypartners.org, postmaster@liberiamercypartners.com, and postmaster@liberiamercypartners.org.
Also on April 25, 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.
On May 8, 2014 a timely Response was received from Respondent and determined to be complete.
On May 14, 2014 Complainant filed an Additional Submission, which complies with Supplemental Rule 7.
On May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott 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.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that, according to GoDaddy's Whois database, the registrant of three of the Domain Names <africamercypartners.com>, <africamercypartners.org>, and <liberiamercypartners.com> is Mr. Kenneth DeWitt d/b/a Africa Mercy Partners, and the registrant of the fourth Domain Name <liberiamercypartners.org> is Mr. Kenneth DeWitt d/b/a Africa Support Partners.
Complainant submits that the Domain Names are all owned and/or registered by the same registrant, using the following aliases:
(1) Ken or Kenneth DeWitt;
(2) Africa Mercy Partners;
(3) Africa Support Partners; and
(4) Liberia Mercy Partners
(collectively hereinafter "Respondent")
Evidence in support of this submission is provided in Respondent's reply to Complainant's initial cease and desist letter outlining the aliases and signed on behalf of three out of the four aliases. Evidence of Respondent's use of alias, Africa Support Partners, is a printout of GoDaddy's Whois database search for the Domain Name <liberiamercypartners.org>.
Complainant states that on March 8, 2011 it registered the Domain Name <mercypartners.org> and began use of the service mark MERCYPARTNERS in connection with the services in International Class 36. Complainant further states and on September 18, 2011 it posted its website to <mercypartners.org> thereby establishing its global presence on the Internet using its MERCYPARTNERS service mark to identify its charitable fundraising services.
On December 11, 2012 the mark MERCYPARTNERS, was registered on the Principal Register and Complainant contends that as a result of this registration, as well as its longstanding use thereof, it acquired exclusive rights in the trademark.
Complainant asserts that Respondent's use of the Domain Names is confusingly similar to Complainant's registered MERCYPARTNERS mark in that the Domain Names merely add geographically descriptive terms (e.g., Africa and Liberia) to Complainant's mark and have no trademark significance.
It is asserted that Respondent's registration of the Domain Names has created initial interest confusion which occurs when Internet users enter the trademark or service mark as the Domain Names expecting to arrive at the owner of that trademark or service mark's website. When users arrive at the site, they are often confused, even if only momentarily, by the infringer's website.
Complainant points out that Respondent registered the Domain Names between November 2011 and August 2, 2012. It contends that Respondent registered and is using the Domain Names for the purpose of promoting confusion among Internet users looking for Complainant's services and to draw attention, by misdirecting traffic to its website, to its services offered in competition with those services provided by Complainant.
Complainant claims that Respondent has no rights or legitimate interests in the Domain Names and contends that Respondent has registered and is using the Domain Names in bad faith. It suggests that use of the Domain Names was initiated directly to disrupt the business of Complainant.
Complainant also asserts that two of the Domain Names <africamercypartners.com> and <liberiamercypartners.com> redirect to <liberiamercypartners.com>, which website offers charitable services of the type offered by Complainant.
Complainant contends that Respondent has knowingly infringed upon Complainant's service mark MERCYPARTNERS by registering and using the same in the Domain Names and merely adding geographically descriptive terms thereto for the purpose of diverting unsuspecting Internet users from Complainant's website to the websites of the Respondent. Complainant further contends that Respondent deceives Internet users who intend to access Complainant's site into believing that the charitable services offered by Respondent are in some manner associated, sponsored, or affiliated with those offered by the Complainant.
Further, Complainant submits that to the extent that Internet users realize after being redirected by Domain Names to the website located at <liberiamercypartners.com> that said website is not affiliated with Complainant, injury in the form of initial interest confusion has already occurred. It is for these reasons that Complainant asserts that the Domain Names should be transferred to it.
B. Respondent
Respondent acknowledges that the Domain Names were registered for Africa Mercy Partners by its President Kenneth DeWitt.
Respondent claims that the Domain Names <africamercypartners.org> and <liberiamercypartners.org> are not currently being used but were purchased and registered only to protect Respondent’s names and for use later if it appeared that it was needed. Respondent further claims that the website <africamercypartner.com> is redirected to the website <liberiamercypartners.com>. Respondent advises that the reason for this redirection is that an entity named Mercy Ships trademarked the name "Africa Mercy" a few months prior to the establishment of the name Africa Mercy Partners. Respondent asserts that on or about July of 2012, it was notified by Mercy Ships to cease using the name as it was trademarked. Respondent advises that because they were only working in Liberia they agreed that the redirection of their name from Africa Mercy Partners to Liberia Mercy Partners would be sufficient to eliminate any confusion.
Respondent states that in March of 2013 it was notified by Mr. Matthew Swyers of The Trademark Company that it was in violation of the trademark MERCYPARTNERS and it responded by letter dated March 10, 2013. Respondent claims that Africa Mercy Partners was using this name prior to the filing and issuance of the trademark MERCYPARTNERS (filed on 12/15/11, issued on 12/11/12). Respondent contends that since it was using that name prior to the filing and issuance in April 2011 it is entitled to continue using this name without violation of the trademark.
Respondent advises that the work being done by Africa Mercy Partners began in Liberia in 2007 under the name Hands of Mercy. Hands of Mercy works primarily in Mexico and they didn’t feel they wanted to continue the same type of work in Africa. Respondent further advises that when it began the separate new non-profit, they wanted to keep the word “Mercy” somewhere in the name and to identify geographically where the work was being done.
Respondent notes that if a search of the web using the term MERCYPARTNERS, was done you would find on Google, Bing, and Yahoo that MERCYPARTNERS appears on the first page of each search. Evidently, "Liberia Mercy Partners" comes up on the second page of each search. Respondent claims that this is not proof of confusion, especially since their name comes up with the first word "Liberia".
Respondent denies the allegation that they are using an identical name which is causing confusion because they have used the word "Liberia" which is location specific, and further that the short introduction to each website is very different.
Respondent acknowledges Complainant’s allegations it has no rights or legitimate interest in the Domain Names, however claims that it has been using the Names for over 2½ years without any complainant or confusion. Respondent asserts that it has been doing its work for almost 7 years in Liberia and it has registered our Domain Names in good faith and has ownership of the Domain Names in question.
Respondent denies the allegation of registering the Domain Names in bad faith and says further that until they received the letter from Complainant in 2013 concerning their trademark, it had no knowledge of Complainant’s existence.
Respondent asserts that it uses the website primarily for information purposes and it collects less than 1% of its donations from the website. Respondent states that it has never had a donation given to it via its website that it did not already have prior contact of and personal knowledge of, with the exception of one person whom it verified that they had an interest in Liberia. Respondent goes on to state that people of whom they have a personal knowledge write checks for donations.
Respondent notes that after 2½ years of the use of the Domain Names, the Complainant has provided no proof that there has been any instance of conflict, confusion or misrepresentation.
Respondent denies the allegations contained in the Complainants summary, that it established the Domain Names for the purpose of injuring Complainant and further submits that Complainant has given no proof of their allegation either of Respondent’s intent or of any incidents that may indicate thus.
C. Additional Submissions
Complainant filed extensive additional submissions, essentially re-casting or repeating what it had said before. This included noting that in its response Respondent had not challenged either Complainant's rights in its trademark MERCYPARTNERS or that Complainant acquired rights in its trademark prior to Respondent having registered the Domain Names and reiterating that Respondent's arguments were without merit.
Complainant again contended that Respondent had not set forth a date of first use that entitled it to rights prior to those of Complainant, being July 11, 2011.
Complainant also asserted that Respondent had contended that it initiated a legitimate business prior to receiving actual notice of Complainant's rights in its mark. However, it pointed out that this argument failed as actual notice is not required under the relevant provisions for a legitimate interest therein.
Moreover, Complainant asserted that Respondent also conceded Complainant's priority of use by admitting they had only used the names for 2½ years.
It concluded by repeating that Respondent had knowingly infringed upon Complainant's service mark MERCYPARTNERS by registering and using the same as Domain Names for the purpose of diverting unsuspecting Internet users from Complainant's website to the websites of Respondent.
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.
Identical or Confusingly Similar : Policy ¶ 4(a)(i).
Complainant states that it uses the MERCYPARTNERS mark in connection with charitable fundraising services. Complainant claims to owns rights to the MERCYPARTNERS mark through its registration with the USPTO (Reg. No. 4,256,430, filed Dec. 15, 2011, registered Dec. 11, 2012). The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the MERCYPARTNERS mark under Policy ¶ 4(a)(i) dating back to December 15, 2011.
Complainant argues that it began using the MERCYPARTNER service mark on March 8, 2011. See Complainant’s Ex. 9. Further, Complainant contends that on July 11, 2011, Complainant registered the domain name mercypartners.org, which began operating on or before September 18, 2011. See Complainant’s Ex. 8 and 9. The Panel notes that Complainant’s USPTO registration lists a first use in commerce date of July 11, 2011. See Complainant’s Ex. 11. In terms of the date of first use, the dates in Ex. 9 and 11 are thus contradictory.
The Panel is reluctant to rely on self-reported evidence as sufficient to prove secondary meaning and to find that Complainant has common law rights in the MERCYPARTNERS mark, dating back as far as July 11, 2011. It is also noted that in use on its website the mark is used in a logo form, accompanied by a heart shaped hand device (Complainant’s Ex. 10).
While Respondent argues that its registration of the <africamercypartners.com> and <africamercypartners.org> domain names predate Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the Domain Names are identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant next argues that the <africamercypartners.com>, <africamercypartners.org>, <liberiamercypartners.com>, and <liberiamercypartners.org> domain names are confusingly similar to the MERCYPARTNERS mark. Complainant urges that the Domain Names merely add geographically descriptive terms, including “Africa” and “Liberia,” to the mark. However, in terms of a comparison such alterations do not necessarily negate the confusing similarity of the Domain Names from the MERCYPARTNERS mark. Accordingly, the Panel finds the <africamercypartners.com>, <africamercypartners.org>, <liberiamercypartners.com>, and <liberiamercypartners.org> domain names confusingly similar to the MERCYPARTNERS mark pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interest : Policy ¶ 4(a)(ii)
Notwithstanding the above finding, the Panel is of the view that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the Domain Name).
Respondent argues that it does have rights and legitimate interests in the Domain Names. Specifically, Respondent uses the Domain Names in connection with a non-profit charity fundraising service. Respondent urges that its work in Liberia began in 2007 under the name Hands of Mercy. Complainant does not dispute this. Respondent later created a separate non-profit organization because Hands of Mercy, which worked primarily in Mexico, did not want to continue their work in Africa.
It is asserted that because Respondent wanted to retain the word “mercy” in some fashion, it was incorporated in the Domain Names. Respondent urges that the <africamercypartners.org> and <liberiamercypartners.org> domain names are not currently being used, but were registered only to protect Respondent’s name. The <africamercypartners.com> domain name redirects Internet users to <liberiamercypartners.com>. Respondent contends that the resolving page at issue is used to promote Respondent’s charitable services.
The Panel accepts that Respondent is a legitimate non profit entity providing fund raising services with a specific interest in Africa and Liberia and has long used the term “mercy”. It also refers to the concept of “partnering” on its website – as do other such entities. For example, reference is made to “Mercy Partners” a similar organization operating from Australia but apparently reaching beyond its borders. See Complainant’s Ex. 12.
On this basis, it is found Respondent is using the Domain Names to make a bona fide offering of goods or services. Accordingly, the Panel finds that Respondent has satisfied its burden in demonstrating rights and legitimate interests in the Domain Names. See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the Domain Name).
Registration and Use in Bad Faith : Policy ¶ 4(a)(iii)
Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the Domain Name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The reasons are as follows. Having concluded that Respondent has rights or legitimate interests in the Domain Names pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the Domain Names in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the Domain Name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the Domain Name, his registration is not in bad faith.”).
The Panel also finds that Respondent has not registered or used the Domain Names in bad faith having not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the Domain Name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent argues that it was using the Domain Names prior to the filing and issuance of Complainant’s MERCYPARTNERS mark, and therefore Respondent is entitled to continue using the names. Respondent urges that its work in Liberia began in 2007 under the name Hands of Mercy. Respondent contends that it created a separate non-profit because Hands of Mercy did not want to continue their work in Africa. Because Respondent wanted to retain the word “mercy,” it was incorporated in the Domain Names.
Respondent registered the <africamercypartners.com> domain name on November 4, 2011, <africamercypartners.org> on November 5, 2011, and both the <liberiamercypartners.com> and <liberiamercypartners.org> domain names on August 2, 2012. Respondent’s earliest domain registration predates Complainant’s trademark application date (filed December 15, 2011). In the absence of real and reliable evidence, the Panel is not prepared to infer or assume that Complainant has sufficient or any real common law rights.
Accordingly, the Panel finds that Respondent did not register some or all of the Domain Names in bad faith under Policy ¶ 4(a)(iii). See Reid v. Chao, FA 154587 (Nat. Arb. Forum May 29, 2003) (finding that the respondent could not have registered the Domain Name in bad faith where its registration came months before the complainant filed its trademark application and no evidence of common-law rights in the mark were submitted to the panel); see also TB Proprietary Corp. v. Village at La Quinta Realtors, FA 416462 (Nat. Arb. Forum Mar. 28, 2005) (concluding that because the respondent’s domain name registration predated the complainant’s trademark filing date and alleged date of first use, the panel found that “there was no bad faith on the part of Respondent when registering the subject domain name”).
Finally, Respondent contends that it was not aware of Complainant’s rights in the mark at the time the Domain Names were registered. Complainant alleges that it was using the African Mercy Partners name prior to the filing and issuance of Complainant’s MERCYPARTNERS mark. However, constructive knowledge does not necessarily support a finding of bad faith. See Way Int’l Inc. v. 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. The essence of the complaint is an allegation of bad faith, bad faith targeted at the complainant. For that bad faith to be present, the cybersquatter must have actual knowledge of the existence of the complainant, the trade mark owner.”).
Other Panels have held there can be no bad faith when there was no credible basis for finding the respondent could have been on notice as to the complainant’s rights. See Seaway Bolt & Specials Corp. v. Digital Income Inc., FA 114672 (Nat. Arb Forum Aug. 5, 2002) (finding that because the complainant’s mark was not particularly well-known outside of its field, and the complainant failed to show that the respondent knew or should have known about the complainant at the time of registration, the respondent did not register the domain name in bad faith).
Given the record the Panel is not in a position to reject Respondent’s contention that it was unaware of Complainant’s rights at the time of registration. For all the above reasons and on balance the Panel concludes that it has not been shown Respondent was acting in bad faith at the time of registration pursuant to Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Clive Elliott QC, Panelist
Dated: May 28, 2014
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