Institute for Human Rights and Business, Ltd. v. Eustace Onuegbu / Institute of Human Rights and Business Africa
Claim Number: FA1509001639399
Complainant is Institute for Human Rights and Business, Ltd. (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., District of Columbia, USA. Respondent is Eustace Onuegbu / Institute of Human Rights and Business Africa (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ihrbafrica.org> (“the Domain Name”), registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA (“the Registrar”).
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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 25, 2015; the Forum received payment on September 25, 2015.
On September 25, 2015, the Registrar confirmed by e-mail to the Forum that the Domain Name is registered with the Registrar and that Respondent is the current registrant of the Domain Name. The Registrar has verified that Respondent is bound by the Registrar’s 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”).
In response to a deficiency notification from the Forum dated September 25, 2015, Complainant submitted to the Forum an Amended Complaint on September 28, 2015.
On September 28, 2015, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 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@ihrbafrica.org. Also on September 28, 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.
A timely Response was received and determined to be complete on October 19, 2015.
On October 26, 2015 the Forum received an Additional Submission from Complainant which the Forum found to be compliant with the Forum’s Supplemental Rule 7.
On October 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Founded in 2009 and based in the United Kingdom, Complainant is one of the world’s leading non-governmental organizations in international human rights as such rights relate to business.
Complainant’s activities stretch across the globe. Complainant operates a subsidiary in Washington, D.C. and has established affiliates in Colombia, Kenya, and Myanmar. Complainant has close business relationships around the globe and offers programs and produces regional reports in many countries, including those in Africa.
Since April 2009 Complainant has been using the trademarks INSTITUTE FOR HUMAN RIGHTS AND BUSINESS and IHRB to identify itself and its activities. Complainant has created tremendous goodwill in those marks and owns substantial common law rights in them. Since its inception, Complainant has extensively promoted its activities and initiatives through email newsletters, speeches and publications, digital media, other electronic and social media channels and on its website located at <www.ihrb.org>.
Complainant says Respondent registered the Domain Name on March 22, 2015; that it is confusingly similar to Complainant’s IHRB mark; and that Respondent has no rights or legitimate interests in respect of the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, Complainant neither authorized Respondent to register the IHRB mark in connection with domain name registrations, nor has Respondent been commonly known by the Domain Name. A comparison of the parties’ websites shows that Respondent presents itself as a subsidiary of Complainant via the Domain Name. Respondent therefore has attempted to act as a competitor of Complainant, diverting Internet users and also perpetuating a fraudulent scheme to phish for Internet users’ personal information via email. Such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under the Policy.
Respondent’s website lists fictitious UK and US business addresses, seeking further to cloak its non-existent affiliation with Complainant. Respondent uses the Domain Name on social media sites, such as LinkedIn and Facebook. On Facebook, Respondent created a page under Complainant’s name and mark “Institute for Human Rights and Business.” On LinkedIn, Respondent uses the name “Institute of Human Rights and Business Africa,” but that name is utterly misleading given Complainant’s presence on LinkedIn.
As to bad faith, by making infringing use of Complainant’s marks – both in the Domain Name and on Respondent’s website and social media profiles – Respondent is intentionally holding itself out as associated or affiliated with Complainant, as well as falsely implying a relationship or connection with Complainant that does not exist. Respondent’s use of the Domain Name is clearly intended to create a likelihood of confusion.
Respondent has gone to great lengths to create a false association with Complainant. This ruse, naturally enough, exponentially increases the chances that Respondent will be successful in diverting donations and sponsorship funding from individuals, governments, and businesses who mistakenly believe that Respondent is or is otherwise affiliated with Complainant.
Respondent’s use of the Domain Name to present itself as a subsidiary of Complainant imputes bad faith disruption under Policy ¶ 4(b)(iii). It is through this disruptive use that Respondent presumably solicits donations and sponsorship, demonstrating bad faith attraction, for commercial gain pursuant to Policy ¶ 4(b)(iv). Respondent’s dissemination of phishing emails to Complainant’s known constituents and use of the Domain Name, along with Complainant’s consistent demonstration of rights in the IHRB mark indicate that Respondent registered and used the Domain Name with actual knowledge under a non-exclusivity analysis of Policy ¶ 4(a)(iii).
B. Respondent
There is no data to support the claim that Complainant is the world’s leading non-governmental organization in international human rights in the area of business.
Respondent accepts that Complainant may have recently formed an affiliate company in Kenya, an East African country and may also have affiliations and partnerships with other companies around the world. Respondent has similar working relationships, affiliations and partnerships with a number of organizations in every country in Africa and in all continents of the globe. Respondent is hosting the 1st International Conference on Business and Human Rights. Partners for the conference include over 100 international institutions and organizations operating in Africa. They are either making contributions as resource persons or sending delegates.
Respondent arguably has the best goodwill in the promotion of human rights at workplace in Africa and is presently consulting for some of the largest companies in Africa on Human Rights Due Diligence.
Respondent says it is important to partner with organizations around the world to accomplish the goal of making Africa a better place to live and work. Respondent criticizes the manner in which Complainant does business, saying Complainant shows no regard to the poor victimized Africans in seeking transfer to it of a website which aims to improve lives.
Respondent says both organizations are working on similar objectives. Complainant knew about Respondent’s website and activities since April 2015 or soon after Respondent launched its online presence. Only now that Complainant believes that Respondent is established is it trying to acquire an initiative that it did [not] form, to the detriment of ordinary Africans.
Respondent’s website <ihrbafrica.org> started in March 2015 and is still under construction. Respondent has partnered with human rights journalists to investigate the operations of some 30 multinational and transnational organizations in the region. It has reports from victims and witnesses for over 44 companies. It is presently in contact with almost all African countries through their embassies and diplomatic missions regarding the forthcoming International Conference. Respondent is in partnership with some the world’s leading consultants and advisors in international law and corporate social responsibility. Respondent is becoming very popular with trade unions and financial institutions some of whom are to present papers at the forthcoming conference. It is expected that by the end of 2016, Respondent will have an office in every country in Africa. This is what Respondent does and it wants to make Africa a better place to live and work.
Complainant has no authority to determine how Respondent designs its website or otherwise. It is absolutely irrelevant to this matter and the [Panel] should disregard Complainant’s comments. Respondent’s published UK office address belongs to a family member and when agreement could not be reached on terms, the address was delisted. The US office address belongs to Respondent’s business partner but was wrongly entered by the IT Consultant. Respondent will replace the address with current partners and representatives in United States.
At no time has Respondent misrepresented its operations to be linked directly or indirectly to that of Complainant. Respondent considers it an insult that Complainant believes Respondent intended to present itself as an associated company, subsidiary or branch. Respondent is an original African initiative even though it works with international companies but will never hold itself out as an associated company. That will defeat the purpose and objects of the organization in trying to form a proper African based advocacy and consultancy centre. The organization was formed with no intention to affect any work being carried out by any other organization, rather to champion the affairs of the people of Africa in Respondent’s own way.
Complainant has not contested the legitimacy of the company which is legally registered in the Gambia as an international company to avoid the cost of re-registration in all African countries.
Respondent uses the Domain Name as a funding application in the name of Africa. The Domain Name presents an original African initiative and does not hold itself out as an associated company with Complainant. Therefore, Respondent has made a bona fide offering of goods or services under Policy ¶ 4(c)(i).
Respondent registered and used the Domain Name in good faith and without actual knowledge of Complainant as it learned of Complainant subsequent to the Domain Name registration on January 20, 2015.
The Domain Name belongs to a legitimate organization known as Institute of Human Rights and Business Africa, therefore it is legally registered.
Complainant’s request should be rejected as baseless, biased, insensitive and profit-driven. Upon due consultation with key stakeholders and if Complainant would make a binding declaration for transparency in its operations in Africa, appoint Africans as Directors of all African projects and apologize to Respondent for false accusations, Respondent will consider selling the Domain Name to Complainant for a fee that will cover costs for a transfer to another domain name and tremendous goodwill already created. Any amount paid for goodwill will be used by Respondent only for projects and nothing more, not even as salaries to staff in line with Respondent’s values.
C. Complainant’s Additional Submission
Respondent takes greater issue with Complainant’s alleged business shortcomings in Africa than it does with the underlying merits of Complainant’s UDRP complaint. Respondent does not dispute three critical issues, namely that (1) the Domain Name is confusingly similar to Complainant’s IHRB name and trademark; (2) Respondent had no prior existing rights or legitimate business interests in the Domain Name; and (3) Respondent knew of Complainant prior to registering the Domain Name.
Further, Respondent’s Response and own exhibits provide ample support for a finding of bad faith registration. Respondent does not explain why it adopted the name “IHRB Africa,” i.e., simply adding the geographic descriptor “Africa” to an organizational name in the area of business human rights in which Respondent indisputably operates.
Complainant welcomes the efforts of all people and organizations that dedicate their time and resources to championing business human rights issues. However, if Respondent wants to operate in such space, it needs to do so under a distinctly different name and not Complainant’s name.
Complainant has established all the elements required to entitle it to relief.
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 the 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.
Having regard to these three elements, it is unnecessary for the Panel to determine whether Complainant is the world’s leading non-governmental organization in international human rights in the area of business nor whether Respondent’s criticisms of Complainant are well founded.
Complainant asserts common law rights in the unregistered IHRB mark.
To succeed in a complaint under the Policy in relation to an unregistered mark, it is necessary for Complainant to prove that the mark is in fact a trademark, with evidence proving that, prior to the filing of the Complaint, it has provided goods or services under the unregistered mark and thereby acquired a reputation such that members of the public associate those goods or services with Complainant and not with others not authorized by Complainant to use the mark. See British Heart Foundation .v. Harold A Meyer III (eResolution Case No. AF0957). See also AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”).
The evidence provided by Complainant of its use, since 2009, of the IHRB mark, including advertising and media recognition, satisfies the Panel that the IHRB mark has acquired secondary meaning and that Complainant has common law rights in that mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”)
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See Energy Source Inc. v. Your Energy Source, FA 0096364 (Nat. Arb. Forum, Feb. 19, 2001). See also Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121, and the cases there cited.
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?”: SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007‑0648.
The Domain Name comprises Complainant’s IHRB mark together with the geographic identifier “Africa” and the inconsequential gTLD “.org.” Panels have agreed that such additions fail to distinguish a disputed domain name from a mark in which a complainant has established rights. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s IHRB mark under Policy ¶ 4(a)(i).
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate its rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
It is clear from the parties’ respective websites and conceded by Respondent, that both organizations are working on similar objectives, namely to further observance of internationally recognized human rights in business. In order to engage in such worthy activities in relation to businesses operating in Africa, Respondent seeks funds from donors in other countries around the world and thus competes for such funds with Complainant. The Panel finds that the IHRB mark is distinctive and is well known to entities around the world engaged in providing funds for such activities.
Accordingly Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
The WHOIS page exhibited to the Amended Complaint (Ex. 2) shows that the Domain Name was created on January 20, 2015. In the absence of any contrary evidence, the Panel takes this as the date on which Respondent registered the Domain Name, not March 22, 2015 as asserted by Complainant.
Respondent says it is registered in Gambia and has been in operation for less than one year. There is no evidence under Policy ¶ 4(c)(ii) that, prior to the registration of the Domain Name, Respondent was commonly known by the Domain Name.
Respondent claims its use of the Domain Name constitutes a bona fide offering of goods or services, under Policy ¶ 4(c)(i) and contends, contrary to Complainant’s assertion, that it did not become aware of Complainant’s mark until after it had registered the Domain Name in January, 2015.
For the following reasons the Panel finds it to be more likely than not that Respondent was aware of Complainant’s mark before Respondent registered the Domain Name. First, Complainant has shown that, prior to the registration of the Domain Name, Complainant and its IHRB mark were known around the world to donors and potential donors of funds to further the observance of internationally recognized human rights in business. Second, to such donors and potential donors the Domain Name falsely conveys the meaning that it is the African arm of Complainant’s activities and that, accordingly, the registrant is associated with Complainant. Third, Respondent’s website, which started in March, 2015, appears derived from that of Complainant both in appearance and content. Fourth, it is implausible that, before deciding to enter this field of activity in January, 2015, Respondent would have failed to identify Complainant as a likely competitor for funding. Last, in seeking to register the Domain Name <ihrbafrica.org> it is unlikely Respondent would have failed to come across Complainant’s domain name <ihrb.org>.
Accordingly the Panel finds that the use by Respondent of the Domain Name in competition with Complainant for funds, with knowledge of Complainant and its IHRB mark and of the Domain Name’s confusing similarity to Complainant’s mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). Further, that such use is not a legitimate non-commercial or fair use of the Domain Name under Policy ¶ 4(c)(iii).
Hence Complainant has established that Respondent has no rights to or legitimate interests in the Domain Name.
Policy ¶ 4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Name in bad faith for purposes of Policy ¶ 4(a)(iii), i.e.
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
As to Policy ¶ 4(b)(i), the Panel does not consider Respondent’s conditional willingness, expressed in its Response, to sell the Domain Name to Complainant indicates that such sale was Respondent’s primary purpose in registering the Domain Name.
There is no suggestion that Policy ¶ 4(b)(ii) applies.
As to Policy ¶ 4(b)(iii), the Panel notes from the exhibits to the Amended Complaint and from the exhibits to the Response that Respondent used the Domain Name to email solicitations to donors and potential donors who were already familiar with Complainant and who were likely to be misled by the Domain Name into thinking Respondent was affiliated with Complainant. Accordingly the Panel accepts Complainant’s contention that such use of the Domain Name indicates that Respondent registered the Domain Name primarily for the purpose of disrupting the business of Complainant.
As to Policy ¶ 4(b)(iv), the confusing similarity between the Domain Name and Complainant’s mark and a comparison of the parties’ websites lead the Panel to conclude that Respondent has intentionally attempted to attract, for commercial gain (in the form of donations to fund its undeniably philanthropic activities), Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Further, bearing in mind that the circumstances set out in Policy ¶ 4(b) are not exhaustive, the Panel finds that Respondent registered and has used the Domain Name in bad faith for the purpose of soliciting donations by email under the guise of being affiliated with Complainant.
For the above reasons, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.
Final comment
The aim of seeking funding so as to ensure observance of internationally recognized human rights in business in Africa is laudable and nothing in this decision under the Policy should be taken to discourage Respondent from pursuing such activity, provided that, in doing so, it does not represent that it has an affiliation with Complainant that it does not have.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ihrbafrica.org> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Alan L. Limbury, Panelist
Dated: November 9, 2015
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