National Geographic Society v. ICS Inc
Claim Number: FA1501001598195
Complainant is National Geographic Society (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is ICS Inc (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <natgeokids.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2015; the National Arbitration Forum received payment on January 9, 2015.
On January 6, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <natgeokids.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2015 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@natgeokids.org. Also on January 9, 2015, 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 February 5, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant National Geographic Society, headquartered in Washington, D.C. in the United States, is one of the largest nonprofit scientific and educational institutions in the world and is the owner of the famous NAT GEO trademarks in their multiple versions (collectively, the “NAT GEO Marks”). Its interests include geography, archaeology and natural science, the promotion of environmental and historical conservation, and the study of world culture and history. Complainant sponsors and funds scientific research and exploration including the works of Jane Goodall (studied chimpanzees); Louis and Mary Leakey (discovered some of the most famous pre-human fossils), and Jacques-Yves Cousteau (famous for his undersea exploration) and Bob Ballard (found and filmed the wreck of the Titanic). The Society also publishes “National Geographic,” “Nat Geo Wild,” and “Nat Geo Kids” magazines, maintains the www.NationalGeographic.org and www.NatGeoTV.com websites, and produces television programs under the NAT GEO Marks (which are globally available in multiple languages on the National Geographic Channel and through other outlets). Complainant publishes books in multiple languages for children and adults, as well as maintains a museum for the public in its Washington, D.C., headquarters and sells educational and decorative items that support Complainant’s mission through its website, catalogs, and a number of physical retail stores. National Geographic magazine, one of Complainant’s most famous properties, has been published continuously since its first issue in 1888, nine months after the Society itself was founded. The magazine is known for its thick square-bound glossy format with a yellow rectangular border and its extensive use of dramatic photographs. Commencing in 2002 Complainant began using the NAT GEO Marks in relation to certain of its publications and video programs and also as a keyword for its content on the www.AOL.com website. Since their inception, the NAT GEO Marks have been used continually by Complainant and its licensees in interstate and international commerce.
Complainant extensively promotes the NAT GEO Marks through a variety of advertising and promotional mediums. It utilizes ads in other magazines, on a variety of television networks, on websites and social media pages, and even on billboards.
As a result of the long usage and promotion of the NAT GEO Marks, they have become overwhelmingly famous and widely recognized around the world.
Further, the NAT GEO Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations around the world for the NAT GEO Marks, including European Community, International, and United States Trademark Registrations as follows:
Mark Goods and Services Reg. No. (Country) Reg. Date
NATGEO Classes 9, 16, 18, 25, 28, 38, and 41 (See below) 3503943 (CTM) 18-May-2005 (Filed 31-Oct-2003)
IC 9 Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer game programs; computer programs downloadable from a global computer network; electronic units that identify bird species and bird calls.
IC 16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; books; magazines; calendars; maps; globes; posters; art prints; charge cards, credit cards, debit cards and pre-paid telephone calling cards, not magnetically encoded; accessory bags made of cellophane.
IC 18 Backpacks, luggage, travel trunks; duffel bags; athletic bags, messenger bags, hanging garment bags; cosmetic bags sold empty; utility cases sold empty; luggage tags; accessory bags, tote bags, fanny packs, purses, wallets, briefcases, attache cases; business card cases and umbrellas.
IC 25 Clothing, footwear, headgear.
IC 28 Toys; games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; electronic game units; Christmas stockings; Christmas stocking holders; playing cards; children's craft kits.
IC 38 Television and radio broadcasting services, cable television broadcasting services; television narrowcasting services; audio and video broadcasting via the Internet; telecommunications; providing online discussion forums featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, tecnology and travel topics.
IC 41 Educational and entertainment services; providing of training; cultural activities; production of television programs; providing online audio records, information, lesson plans, photographs, videos, and webcasts featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, technology, and travel topics, providing online games and activities for children, providing online maps and schedules for live events and exhibitions.
NAT GEO WILD Logo Classes 38 and 41 (see below) 948720 (Int’l Reg) 25-Oct-2007
IC 38 Telecommunications; television and radio broadcasting services; cable television broadcasting services; television narrowcasting services; audio and video broadcasting via the Internet; providing access to online discussion forums featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, wildlife, nature, and environmental topics.
IC 41 Educational and entertainment services; providing of training; cultural activities; production of television programs; providing online audio records, information, lesson plans, photographs, videos and webcasts featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, wildlife, nature, and environmental topics; providing online games and activities for children, providing online maps and schedules for live events and exhibitions.
NAT GEO ADVENTURE Classes 38 and 41 (see below) 6058879 (CTM) 25-Jul-2008 (Filed 2-Jul-2007)
IC 38 Television and radio broadcasting services; cable television broadcasting services; television narrowcasting services; audio and video broadcasting via the Internet; telecommunications; providing online discussion forums featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, scientific, wildlife, nature, and environmental topics.
IC 41 Educational and entertainment services; providing of training; cultural activities; production of television programs; providing online audio records, lesson plans, photographs, videos and webcasts featuring a wide range of adventure, cultural, educational, entertainment, exploration, general interest, geography, natural history, wildlife, nature, and environmental topics; providing online information relating to entertainment and education featuring general interest and environmental topics in the field of science, technology, natural science, ecology, social studies, archaeology, astronomy, geology, anthropology, zoology, botany and the environment; providing online games and activities for children, providing online maps and schedules for live events and exhibitions.
NAT GEO MUSIC Logo Classes 9, 38, and 41 (See below) 6308472 (CTM) 15-Sep-2008 (Filed 25-Sep-2007)
IC 9 Pre-recorded motion picture films; pre-recorded data carriers, namely, records, discs, tapes, audio cassettes, DVDs, CD-ROMs, cartridges, digital audio and video compression software files, all featuring entertainment, education, cultural or music topics; pre-recorded motion picture soundtracks; downloadable ring tones, music, MP3s, graphics, games, images and videos for wireless communication devices.
IC 38 Audio broadcasting; cable television broadcasting; direct broadcast satellite television; television broadcasting; video broadcasting; radio broadcasting; radio programming; pod casting; electronic transmission of information, text, sound and images; satellite transmission services; cable radio transmission and broadcasting; broadcasting and transmission of radio and television programs via computer or communications networks; video-on-demand transmission services; electronic transmission of sound, images and data, including streaming audio and video material across broad band networks and a global computer network; electronic transmission via computer of sound, images, data and radio and television programs; wireless communication services, namely transmission of ring tones, logo graphics, games, sound, music, information and data to mobile telephones, wireless devices and personal communications devices.
IC 41 Motion picture films, television and radio programs; on-line content in the fields of music, culture, entertainment and education; music production; motion picture soundtracks; providing a wide range of entertainment, educational, cultural and music topics via the Internet.
NAT GEO IC 038. US 100 101 104. G & S: direct broadcast satellite television and satellite transmission services. FIRST USE: 20021001. FIRST USE IN COMMERCE: 20021001 4298455 (US) 5-Mar-2013 (Filed 20-Nov-2009)
NAT GEO IC 038. US 100 101 104. G & S: Electronic and digital transmission of data, images, signals, and messages OR text and numeric wireless digital messaging services OR wireless communications services, namely, transmission of graphics to mobile telephones and mobile wireless electronic devices OR mobile media services in the nature of electronic transmission of entertainment media content OR video broadcasting OR electronic transmission of information, text, sound and images OR broadcasting and transmission of television programs via computer or communications networks OR video-on-demand transmission services OR electronic transmission of sound, images and data, including streaming audio and video material across broad band networks and a global computer network OR electronic transmission via computer of sound, images, data and radio and television programs OR wireless communication services, namely, transmission of ring tones, logo graphics, games, sound, information and data to mobile telephones, wireless devices and personal communications devices. FIRST USE: 20071000. FIRST USE IN COMMERCE: 20071000 4109420 (US) 6-Mar-2012 (Filed 20-Nov-2009)
Respondent’s registration of the <NatGeoKids.org> violates the Policy.
The <NatGeoKids.org> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <NatGeoKids.org> domain is confusingly similar, on its face, to Complainant’s registered NAT GEO Marks. Since the terms NAT GEO is a world-famous and arbitrary term that is only used as a brand name and is not in common parlance, searchers will almost certainly be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the <NatGeoKids.org> domain.
Numerous Panel decisions have held that the addition of generic or other words to a complainant’s trademark, creates a confusingly similar domain name. See, e.g., Comerica Bank v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-0529 (In ordering the domain <comericaonline.com> transferred, the Panelist held that, “[i]n accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.”); Expedia, Inc. v. Expedia India Tours, NAF Claim No. FA 1459323 (2012) (In relation to the domain expediaindiatours.com, the Panel stated “[t]hese alterations of the mark, made in forming the domain name, fail to distinguish the domain name from Complainant’s mark under the standards of the Policy.”); Expedia, Inc. v. Inertia 3D, NAF Claim No. 1118154 (2008) (Panel ordered a transfer of the domain expediahosting.com noting that “the disputed domain name includes the entire mark and merely adds the generic term “hosting” and the generic top-level domain ‘.com.’ These additions are insufficient to distinguish the domain name from the mark under Policy ¶4(a)(i).”)
Further, it has been held, in decisions too numerous to mention, that a generic top-level domain is typically not considered when examining whether a domain is confusingly similar to a complainant’s trademark. See, e.g., Higher Education Loan Authority of the State of Missouri (MOHELA) v. To Thi Thanh Tam / Vietnam Domain Privacy Services, WIPO Case No. D2014-1602 (“the generic Top-Level Domain suffix ‘.com’ is not taken into account for these purposes ”); Alstom and ABB Asea Brown Boveri Ltd v. Claudette Drakes, Name Equities, WIPO Case No. D2014-1489 (“The addition of generic Top-Level Domains (i.e. the ‘.com’ suffix) may be disregarded when comparing the similarities between a domain name and a trade mark.”)
Similar to the above-cited decisions, the Respondent in the present dispute merely adds the word “kids” and the “.org” gTLD to Complainant’s NAT GEO Mark and merely adds to its NAT GEO Mark thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers eventually discover they are not at Complainant’s site, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <NatGeoKids.org> website. As in Athanasios, Respondent here uses the Marks in its sites’ domain names as well as in the title and body of its websites. It only makes sense that if searchers see the Marks listed in the body of the <NatGeoKids.org> web page they will be confused and led to believe that Respondent’s website originates with Complainant or is at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <NatGeoKids.org> domain under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <NatGeoKids.org> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent’s website under the <NatGeoKids.org> domain is a classic pay-per-click site displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and, in some cases, may be associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
With respect to Policy ¶4(c)(ii), upon information and belief, Respondent is not commonly known by the <NatGeoKids.org> domain or the names “NAT GEO” or “NAT GEO KIDS” nor does Respondent operate a business or other organization under these Marks or names and does not own any trademark or service mark rights in the “NAT GEO” or “NAT GEO KIDS” name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”). Similarly, by using a one or more whois privacy services Respondent has refrained from associating itself with the <NatGeoKids.org> and it cannot obtain any legitimate interests therein as a result. Nike, Inc. v. Elah Blake / N/A, NAF Claim No. FA 1580701 (2014) (“Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has not publicly associated itself with the domain name, which means it cannot acquire any rights from owing the domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <NatGeoKids.org> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s NAT GEO goods and services, who used the <NatGeoKids.org> domain would be confused and think they were visiting a site of the Complainant’s until they discovered that they were forwarded to other websites offering related or competing goods and services. Such use cannot be considered fair.
Finally, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the NAT GEO Marks with the quality goods and services offered under the Marks by Complainant by using the Marks in association with unrelated sites which provide goods and services not associated with or related to Complainant’s quality branded products and services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control.
(c) Respondent registered the <NatGeoKids.org> domain in bad faith under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Respondent was on actual notice of Complainant’s rights in the world-famous NAT GEO Marks through Complainant’s Trademark Registrations/Applications, its common-law trademark rights, and its extensive, global use of the Marks which predate the creation dates of each of the <NatGeoKids.org>. See, National Geographic Society v Stonybrook Investments, LTD., NAF Claim No. FA 96263 (2001) (“Complainant holds certificates of registration for numerous marks including NATIONAL GEOGRAPHIC and NATIONALGEOGRAPHIC.COM”). In fact, the text of the <NatGeoKids.org> domain makes no sense on its own and so it could only have been copied from Complainant’s NAT GEO Marks. Therefore, Respondent knowingly and intentionally used the Marks with knowledge of, and in violation of Complainant’s rights in the Marks.
Respondent is obtaining commercial gain from its use of the <NatGeoKids.org> website. When a visitor to the <NatGeoKids.org> website clicks on one of the links which appear there, Respondent receives compensation from the various website owners who are forwarded from the <NatGeoKids.org> site. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the <NatGeoKids.org> site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of forwarding fees from its <NatGeoKids.org> domain results from pay-per-click links and alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the <NatGeoKids.org> domain and its website results in a commercial gain for others by forwarding visitors to third parties, some of whom are potential competitors of Complainant. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were forwarded from the website of the <NatGeoKids.org> domain. There is no other rational explanation for Respondent having registered and maintained the <NatGeoKids.org> domain and resolved it to a pay-per-click site or having it redirect to other commercial sites. Respondent’s use of the domain name is commercial because the various companies forwarded from the <NatGeoKids.org> benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <NatGeoKids.org> domain, Respondent is entirely and solely responsible for the content of its website and the functioning of its domain. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged. Policy ¶4(b)(ii). It is apparent that Respondent is a well-known cybersquatter and is engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Over 170 prior UDRP cases have been successfully brought against Respondent including the following examples:
Case No. Domain(s) Case Name Status Decision Date
1582864 (NAF) bsuinessweek.com Bloomberg L.P. v. ICS Inc Transferred 18-Dec-2014
1573914
(NAF) tdautofianace.com The Toronto-Dominion Bank v. ICS INC Transferred 8-Sep-2014
D2013-2098 (WIPO) accenturepeople.com Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org Transfer 17-Feb-2014
1535973 (NAF) toromower.com The Toro Company v. ICS INC. Transferred 29-Jan-2014
D2013-2010 (WIPO) merckvacccines.com Merck Sharp & Dohme Corp. MSD Consumer Care, Inc. v. ICS Inc. PrivacyProtect.org Transfer 20-Jan-2014
1533422 (NAF) advcanceautoparts.com Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. ICS INC. Transferred 15-Jan-2014
1532366 (NAF) wwwstatefarme.com State Farm Mutual Automobile Insurance Company v. ICS INC. Transferred 14-Jan-2014
D2013-1887 (WIPO) connectmgrawhill.com McGraw-Hill Global Education Holdings LLC v. PrivacyProtect.org/ ICS INC. Transfer 30-Dec-2013
1509306 (NAF) morganstanleyclietserv.com Morgan Stanley v. ICS INC. Transferred 24-Aug-2013
1507602 (NAF) lockheenmartin.com Lockheed Martin Corporation v. ICS INC. Transferred 7-Aug-2013
1495044 (NAF) jetnet-aa.com American Airlines, Inc. v. ICS INC. Transferred 28-May-2013
1480653 (NAF) christianimingle.com
christianminghle.com
christianmiongle.com Spark Network USA, LLC v. ICS INC. Transferred 3-Apr-2013
1478522 (NAF) mgrainger.com W.W. Grainger, Inc. v. ICS INC. Transferred 14-Feb-2013
D2012-2070 (WIPO) v-valium.com F. Hoffmann-La Roche AG v. ICS INC. / PrivacyProtect.org Transfer 24-Dec-2012
1458525 (NAF) baylorheath.com Baylor University v. ICS INC. Transferred 2-Oct-2012
1450778 (NAF) nationstardm.com Nationstar Mortgage LLC v. ICS INC. Transferred 7-Aug-2012
D2012-0649 (WIPO) johnloscott.com John L. Scott, Inc. v. PrivacyProtect.org / ICS INC. Transfer 16-May-2012
1428474 (NAF) qvcqvc.com ER Marks, Inc. and QVC, Inc. v. ICS INC. Transferred 20-Mar-2012
These prior decisions against Respondent are highly relevant to the consideration of bad faith in the present case since they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others. In particular, in CHEAPCARIBBEAN.COM, Inc. v. ICS INC, NAF Claim No. FA 1582257 (2014), the Panel stated:
Complainant also argues that Respondent has engaged in a pattern of bad faith registrations. The Panel notes Shoedazzle.com, Inc. v. ICS INC., FA 1557085 (Nat. Arb. Forum June 18, 2014). The Panel finds that this adverse decision against Respondent, along with others provided by Complainant, demonstrate Respondent’s pattern of bad faith registration under Policy ¶4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations).
Id. See also, Assurant, Inc. v. ICS INC, NAF Claim No. FA 1470246 (2012) (“Respondent has been held to have registered domain names in bad faith in at least three prior UDRP proceedings submitted by Complainant. Respondent has also had numerous other adverse UDRP decisions regarding complainants other than the instant one.”)
Apart from the above, Respondent’s true identity was only discovered after its Registrar removed the privacy protection for the whois information relating to the <NatGeoKids.org> domain[1]. Such use of a privacy service is further evidence of Respondent’s bad faith registration and use as was held in Beijing Qunar Information Technology Co., Ltd. v. Premium Registration Service / Zheng ZhongXing, WIPO Case No. D2013-0281 (“the fact that the disputed domain name was registered anonymously and protected by Premium Registration Service is consistent with bad faith in this Panel’s view”)
Even after Complainant sent a demand letter to Respondent on August 29, 2014 and a follow-up letter on and October 3, 2014 and October 7, 2014 at the email address listed in the whois records for the <NatGeoKids.org> domain, Respondent has remained silent. Failure to respond to a cease and desist letter indicates bad faith registration and use of a domain name. See, Encyclopedia Britannica v. Zuccarini, WIPO Case No. D2000-0330 (failure to positively respond provides “strong support for a determination of ‘bad faith’ registration and use.”); RRI Financial, Inc., v. Chen, WIPO Case No. D2001-1242 (finding bad faith where “The Complainant alleges that it sent numerous cease and desist letters to [r]espondent without receiving a response”).
Finally, as more fully set forth above, by infringing upon Complainant’s internationally famous NAT GEO Marks, Respondent intentionally uses the Marks in its domain name to attract Internet searchers by creating a strong likelihood of confusion. This conclusively shows its bad faith intent.
Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <NatGeoKids.org> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 uses the NAT GEO mark to identify its scientific and education offerings, which take form in research, exploration, conservation, magazines, websites, and television programs. Complainant registered NAT GEO with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,109,420, registered Mar. 6, 2012), inter alia. Such trademark registrations with a governmental authority adequately demonstrate Complainant’s rights in the mark for purposes of Policy ¶4(a)(i), even though Respondent resides in the Cayman Islands. See Homer TLC, Inc. v. Song Bin, FA 1505218 (Nat. Arb. Forum July 30, 2013) (“Complainant’s USPTO registration sufficiently establishes its rights in the HOME DEPOT mark under Policy ¶4(a)(i), despite the fact Respondent resides outside of the United States.”). At this stage of the proceedings, it is not necessary for Complainant to prove it has superior rights to Respondent. Complainant need only prove it has SOME rights to the mark.
Complainant claims the <natgeokids.org> domain name is confusingly similar to the NAT GEO mark because the domain name merely adds the term “kids” and the “.org” gTLD to the NAT GEO mark. The domain name also omits the space between the two-word mark. Omitting spaces in a domain name must be disregarded because spaces are not valid characters in a domain name. Likewise, adding a gTLD or a ccTLD must be disregarded for the purposes of a confusing similarity analysis because all domain names must contain a gTLD or ccTLD. 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)). To hold otherwise would be to eviscerate the UDRP. Adding a generic term to a mark in a domain name does not adequately distinguish the disputed domain name from the mark, especially where the generic term relates to the mark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Complainant publishes a “Nat Geo Kids” magazine. The added term “kids” relates to Complainant’s offerings, and only serves to increase the likelihood of confusion. The <natgeokids.org> domain name is confusingly similar to the NAT GEO mark as the domain name pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <natgeokids.org> domain name. Respondent is not commonly known by the disputed domain name or any variant of NAT GEO. The WHOIS information merely lists “ICS Inc” as registrant, which seems to bear no obvious relationship to the domain name. Respondent has not presented any evidence Respondent is commonly known by the disputed domain name under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The Panel finds Respondent is not commonly known by the disputed domain name.
Respondent is not making a bona fide offering of goods or services through the disputed domain name, nor a legitimate noncommercial or fair use. The disputed domain name redirects users to a pay-per-click dynamic parking website. Presumably Respondent generates revenue from the promoted links (or at least gets free domain parking), some of which relate to Complainant’s competitors. The disputed domain name resolves to links including, “Childrens Games,” “Magazines Kids,” and “Games Mag.” Respondent’s web site directs users to third-party links, both related and unrelated to Complainant. This means there is no Policy ¶4(c)(i) bona fide offering of goods or services, nor is the domain name used for a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has a history of bad faith, as demonstrated by prior UDRP proceedings, which constitutes a pattern pursuant to Policy ¶4(b)(ii). This Panel must respectfully disagree. Complainant is able to reflect its mark in a domain name (such as NatGeo.com), which is an indispensable element under Policy ¶4(b)(ii). Every respondent has an opportunity to present its case. The Panel will not prejudge respondent’s case simply based upon its track record in prior cases.
Respondent is likely receiving click-through fees by directing users via the confusingly similar domain name to various commercial links, including those of Complainant’s competitors. Respondent does not deny this. Such conduct constitutes bad faith registration and use under Policy ¶4(b)(iv) where the respondent is using a confusingly similar domain name to feature competing or related pay-per-click hyperlinks. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent registered the disputed domain name with actual knowledge of the NAT GEO mark. It seems unlikely Respondent would have registered this domain name if Respondent didn’t know about Complainant’s children’s magazine. This would amount to bad faith registration under Policy ¶4(a)(iii) Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”).
The Panel sees no evidence Respondent registered the disputed domain name using a privacy service, despite Complainant’s representation to the contrary.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <natgeokids.org> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, February 9, 2015
[1] A prior complaint was filed against the <NatGeoKids.org> domain and one other while both were using the same privacy service but it was later discovered that each domain was under separate ownership. It was after the filing of this prior complaint that the Registrar revealed the true owner of the Respondent in the present case.
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