Goodwill Community Foundation, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1509001638196
Complainant is Goodwill Community Foundation, Inc. (“Complainant”), represented by Neil C. Magnuson of Williams Mullen, North Carolina, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND <GCFLERNFREE.ORG> DOMAIN NAME
The domain name at issue is <gcflernfree.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 17, 2015; the Forum received payment on September 17, 2015.
On September 18, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <gcflernfree.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 September 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@gcflernfree.org. Also on September 25, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant Goodwill Community Foundation, Inc. owns numerous marks through registration with the United States Patent and Trademark Office (“USPTO”), including the GCFLEARNFREE.ORG mark (e.g., Reg. No. 3,389,401, registered Feb. 26, 2008) and the GCF mark (e.g. Reg. No. 2,560,391, registered Apr. 9, 2002). The <gcflernfree.org> domain name was registered August 13, 2006
2. Complainant uses the GCFLEARNFREE.ORG mark in connection with its educational services, namely, providing classroom and internet-based training programs and the GCF mark in connection with its charitable fundraising services.
3. The <gcflernfree.org> domain name is confusingly similar to Complainant’s GCFLEARNFREE.ORG and GCF marks. The <gcflernfree.org> domain name misspells the GCFLEARNFREE.ORG mark by removing the letter “a.” The <gcflernfree.org> domain name varies from the GCF mark by adding the generic terms “lernfree,” and attaches the generic top-level domain (“gTLD”) “.org” to the domain name.
4. Respondent has no rights or legitimate interests in the <gcflernfree.org> domain name. Respondent is not commonly known by the <gcflernfree.org> domain name, as Respondent has no license, permission, or authorization from Complainant to use the GCFLEARNFREE.ORG or GCF marks.
5. Further, Respondent lacks rights or legitimate interests in the <gcflernfree.org> domain name, as evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a click-through advertising website that contains competing hyperlinks, diverting Internet users who are seeking Complainant’s website to Complainant’s competitors.
6. Respondent has engaged in bad faith registration and use of the <gcflernfree.org> domain name. Respondent’s use of the domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GCFLEARNFREE.ORG or GCF marks. Respondent’s domain name is confusingly similar to Complainant’s GCFLEARNFREE.ORG or GCF marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <gcflernfree.org> domain name, and that Respondent registered and uses the domain name 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 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 un<gcflernfree.org> 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 Goodwill Community Foundation, Inc. owns numerous marks through registration with the USPTO, including the GCFLEARNFREE.ORG mark (e.g., Reg. No. 3,389,401, registered Feb. 26, 2008) and the GCF mark (e.g. Reg. No. 2,560,391, registered Apr. 9, 2002). Complainant uses the GCFLEARNFREE.ORG mark in connection with its educational services, namely, providing classroom and internet-based training programs and the GCF mark in connection with its charitable fundraising services. Registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a 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). Accordingly, even though Respondent reportedly resides in Saint Vincent and the Grenadines, the Panel finds that Complainant’s USPTO registrations are sufficient under Policy ¶ 4(a)(i), and that the GCF mark suffieciently predates Respondent’s registration of the <gcflernfree.org> domain name.
Complainant argues that the <gcflernfree.org> domain name is confusingly similar to Complainant’s GCFLEARNFREE.ORG and GCF marks. The <gcflernfree.org> domain name misspells the GCFLEARNFREE.ORG mark by removing the letter “a.” If a respondent misspells a registered mark simply by removing a single character, then the domain name is confusingly similar under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The <gcflernfree.org> domain name varies from the GCF mark by adding the misspelled term “lernfree,” and attaches the gTLD “.org” to the domain name. The addition of a generic term is insufficient to create distinctiveness. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). In addition, attaching a gTLD is irrelevant to the analysis of confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds the <gcflernfree.org> domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the domain name at issue in this proceeding. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <gcflernfree.org> domain name. In so arguing, Complainant alleges that Respondent is not commonly known by the domain name, as Respondent has no license, permission, or authorization from Complainant to use the GCFLEARNFREE.ORG or GCF marks. The WHOIS information for the <gcflernfree.org> domain name refers to “Domain Admin / Private Registrations Aktien Gesellschaft” as the registrant of record. As Respondent has failed to present any evidence to the contrary, the Panel finds that Complainant’s contentions are sufficient to establish that Respondent is not commonly known by the <gcflernfree.org> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Complainant argues that Respondent lacks rights or legitimate interests in the <gcflernfree.org> domain name, as evidenced by Respondent’s failure to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. According to the record, Respondent’s <gcflernfree.org> domain name resolves to a click-through advertising website that contains competing hyperlinks, diverting Internet users who are seeking Complainant’s website to Complainant’s competitors. Users may click on hyperlinks such as “Computer Lessons” and “MS Office Courses.” A respondent’s use of competing hyperlinks is neither a bona fide offering of goods or services nor for a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s . . . 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 domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel concludes that Respondent’s actions here are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent’s use of the <gcflernfree.org> domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant claims that Respondent registered the domain name solely to redirect individuals who have mistakenly reached Respondent’s domain name rather than Complainant’s website, to businesses that compete with Complainant. Internet users may reach websites such as <navexglobal.com/training> and <phoenix.com>, Complainant’s competitors, by clicking on these links. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). This Panel concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant claims that the <gcflernfree.org> domain name serves no other purpose than to generate advertising revenue through the use of a domain name that is confusingly similar to Complainant’s marks which is clear evidence of bad faith registration and use under Policy ¶ 4(b)(iv). Click-through websites are typically associated with referral fees, and a respondent’s use of hyperlinks is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). The Panel finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gcflernfree.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 2, 2015
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