World Help v. The Web Group
Claim Number: FA1608001687018
Complainant is World Help (“Complainant”), represented by Timothy D. Pecsenye of Blank Rome LLP, Pennsylvania, USA. Respondent is The Web Group (“Respondent”), represented by David Levin of UDRP.XYZ, District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worldhelp.org>, registered with 1API GmbH.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Michael A. Albert, David Sorkin, and Sandra J. Franklin as Panelists.
Complainant submitted a Complaint to the Forum electronically on August 4, 2016; the Forum received payment on August 4, 2016.
On August 8, 2016, 1API GmbH confirmed by e-mail to the Forum that the <worldhelp.org> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 August 8, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 2016 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@worldhelp.org. Also on August 8, 2016, 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.
Preliminary Issue: Deficient Response
A Response was received on September 12, 2016. According to Respondent in email correspondence, this Response was inadvertently left “blank,” and thereafter Respondent submitted a substantive Response on September 16, 2016.
The Panel, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response”); Pearson v. Domain Admin/Automattic, Inc., FA 1504001613723 (Forum July 3, 2015) (exercising the Panel’s discretion to consider a late filed Response “in the interest of justice”).
Correspondence from Respondent’s counsel indicates the blank response was filed due to a clerical error, which was promptly remedied after Complainant’s counsel informed Respondent’s counsel of the error. Complainant’s counsel alleges a general increase in time and cost due to the delay, but otherwise identifies no specific prejudice to Complainant. The Panel finds that the delay was not unreasonable and the clerical error explanation is plausible, and accordingly that the interest of justice warrants acceptance and consideration of Respondent’s substantive Response.
On September 28, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Michael A. Albert as Panel Chair and Sandra J. Franklin and David E. Sorkin as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, a corporation engaged in charitable fundraising, eleemosynary services, and evangelistic and ministerial services, holds itself out to the public with the WORLD HELP mark, and claims to have used the mark as early as November 1991. Complainant holds multiple service mark registrations for the WORLD HELP mark, the earliest of which was registered on December 29, 1998. Complainant asserts that its work has impacted millions of lives in sixty-eight countries, through projects including the distribution of over $124 million of humanitarian aid. Complainant further asserts that it owns common-law rights in the marks by virtue of its registrations and use of the marks in sixty-eight countries. Complainant alleges that Respondent’s <worldhelp.org> domain name is identical to Complainant’s mark because it incorporates the unaltered mark in its entirety and merely appends the “.org” generic top-level domain (“gTLD”).
Complainant further contends that Respondent has no rights or legitimate interests in or to the <worldhelp.org> domain name because Respondent is not commonly known by the disputed domain name and has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use through the <worldhelp.org> domain. Instead, Respondent has caused the domain name to resolve to a page of pay-to-click hyperlinks soliciting volunteer/charity services and organizations which are in the same industry as Complainant.
Finally, Complainant alleges that Respondent registered and used the disputed domain name in bad faith. First, Respondent’s identical domain name provides evidence it had actual knowledge of Complainant’s mark. Second, the fact that Respondent has a large domain name portfolio which includes domain names to which Respondent likely has no legitimate interests, coupled with the fact that Respondent has been found to have registered and used a domain name in bad faith in a previous UDRP dispute, indicate bad faith. Third, the registration of Complainant’s marks provided Respondent constructive knowledge of Complainant’s rights, from which an inference of bad faith can be drawn.
B. Respondent
Respondent takes no position as to whether Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Respondent contends that <worldhelp.org> consists of the common words “world” and “help,” which together form a descriptive term. Respondent’s registration of the domain name is consistent with its demonstrable practice over the past eighteen years of registering hundreds of generic and short domain names, including several incorporating the terms comprising the disputed domain name, because of their intrinsic meanings. Respondent also asserts that many other entities employ these terms in business names and similar domain name registrations, which demonstrates the descriptive nature of the domain name and establishes that Respondent has a legitimate interest in it.
Respondent additionally contends it has not engaged in bad faith because it had no knowledge of Complainant and its WORLD HELP mark when it registered the domain name, nor was there a reason it should have had such knowledge. Respondent registered the domain name on March 4 or 5, 2004, and Complainant’s only relevant mark registered before this date is stylized in bold and italic fonts. A review of a Google search for the phrase “world help” for pages prior to March 5, 2004 yields no results pertaining to Complainant in the top 100 returned. In addition, Complainant’s financial reports for 2003 indicate a total international “Fundraising Expense” of $416,462, a miniscule amount to allow for any effective national mass market advertising or promotion, further bolstering Respondent’s absence of knowledge of Complainant.
Respondent also contends that no evidence for bad faith can be found because it rejected Complainant’s previous unsolicited offer to purchase the domain name three years ago for a price exceeding out-of-pocket expenses. The offer to purchase also constitutes acknowledgement of Respondent’s rights in the domain name.
Furthermore, Respondent alleges that the domain name was registered by a third party, abandoned, and expired before Respondent registered it, which favors the conclusion that Respondent did not register the domain name in bad faith.
Finally, Complainant waited twelve years to pursue a proceeding under the Policy, which Respondent contends permits the inference that Complainant did not truly believe that Respondent had registered the domain name in bad faith.
C. Additional Submissions
Complainant and Respondent have submitted email correspondence on several occasions asserting their positions on whether or not the Response should be considered by the Panel, and reiterating arguments from the Complaint and Response. The substantive arguments in the correspondence are cumulative and do not change our decision. In addition, Respondent for the first time asks the Panel to find reverse domain name hijacking. The Panel deems this request waived by reason of having been omitted from Respondent’s initial response.
Complainant’s mark WorldHelp was registered on December 29, 1998 in stylized form.
Complainant’s mark WORLD HELP PRESENTS, CHILDREN OF THE WORLD was registered on July 23, 2002.
Respondent registered the <worldhelp.org> domain name no later than March 5, 2004.
Respondent’s other WORLD HELP marks were registered after March 5, 2004.
Complainant offered to purchase the <worldhelp.org> domain name on October 1, 2013, and Respondent declined.
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.
Complainant’s federal service mark registrations demonstrate its rights in the WORLD HELP mark. See Humor Rainbow, Inc. v. Lee, FA 1626154 (Forum Aug. 11, 2015) (noting that “[t]here exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark”).
Respondent’s <worldhelp.org> domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i) because it incorporates the unaltered mark in its entirety and merely appends the “.org” gTLD. See Dell Inc. v. Prot. of Private Person / Privacy Prot., FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Accordingly, the Panel finds that Complainant has met the first required element under the Policy.
Complainant must first establish a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Complainant argues that Respondent is not commonly known by the disputed domain name. Respondent does not contest this point, and in fact claims only to be a generic domain reseller.
Next, Complainant asserts that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use through the <worldhelp.org> domain. Instead, Respondent has caused the domain name to resolve to a page of pay-per-click hyperlinks soliciting volunteer/charity services and organizations that are in the same industry as Complainant. A respondent’s competing use of hyperlinks indicates that respondent does not have rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Complainant has thus established a prima facie case under Policy ¶ 4(a)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007)
(concluding that the complainant succeeded under Policy ¶ 4(c)(ii) because the respondent was not commonly known by the disputed domain name, and the disputed domain contained links and advertisements for products competing with those of the complainant).
In response, however, Respondent argues that it has consistently engaged, over the past eighteen years, in a demonstrable practice of registering hundreds of generic and short domain names, including several incorporating the terms comprising the disputed domain name, because of their intrinsic and non-infringing nature. Generic domain resellers may have a legitimate interest in domains for their intrinsic monetary value, rather than for their value as marks with goodwill built by a complainant. See Alphalogix Inc. v. DNS Servs., FA 491557 (Forum July 26, 2005) (“Respondent is in the business of creating and supplying names for new entities, including acquiring expired domain names. This is a legitimate activity in which there are numerous suppliers in the United States.”). Absent reason to doubt the veracity of Respondent’s representations, and any other indicia that its explanation is manufactured, the Panel finds that Respondent has established that it is engaged in the legitimate activity of domain acquisition and resale, without any particularized knowledge of Complainant’s rights in the mark at issue here. Respondent has thus rebutted Complainant’s prima facie case and possesses rights and legitimate interests in the <worldhelp.org> domain name. The Panel finds that Complainant fails to meet the second required element under the Policy.
As the Panel has concluded that Respondent possesses rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the Panel need not engage in a separate inquiry as to bad faith. 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 disputed domain name); Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel further concludes that Complainant has not established that Respondent registered or used the domain name in bad faith for the additional reasons below.
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s rights in the WORLD HELP mark when registering and using the disputed domain name, which shows bad faith pursuant to Policy ¶ 4(a)(iii). Complainant offers no evidence of actual knowledge, merely pointing to the similarity between the domain name and Complainant’s marks. However, mere assertions of bad faith are insufficient under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo Cell Tech. Ltd., FA 406512 (Forum Mar. 9, 2005). Constructive notice has not been considered a persuasive indication of bad faith by UDRP panels, particularly in situations where the mark is not so famous as to render claims of lack of knowledge implausible. 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.”).
Finally, Complainant alleges that Respondent’s domain portfolio and a prior UDRP panel’s finding of bad faith suggest bad faith here. While a pattern of conduct may in some circumstances indicate bad faith, see Policy ¶ 4(b)(ii), the instant facts, more fully discussed below, do not warrant such a conclusion.
For purposes of Policy ¶ 4(b)(iii), one must consider the respondent’s knowledge at the time of domain name registration. The Motley Fool, Inc. v. Domain Works, Inc., D2006-1625 (WIPO Mar. 20, 2007) (“[P]anelists have consistently held that for a complaint to succeed under the Policy the respondent’s intentions at time of registration must have been mala fide.”). Only two of Complainant’s five identified marks were registered before Respondent registered its domain name. One mark, WorldHelp, is in stylized form containing bold and italic font. The other, WORLD HELP PRESENTS, CHILDREN OF THE WORLD, contains additional words not present in the disputed domain name.
This timeline, along with the facts that many other entities employ use of the terms WORLD HELP in business names and similar domain name registrations, and that a Google search for “world help” before March 5, 2004 yielded no results pertaining to Complainant in the top 100, render persuasive Respondent’s assertion that it did not have actual knowledge of Complainant and its rights to the WORLD HELP mark at the time it registered the domain name.
In addition, the fact that Respondent rejected Complainant’s offer to purchase the domain name negates another indicator of bad faith, namely that Respondent registered the domain name with the intent to sell to Complainant.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <worldhelp.org> domain name REMAIN WITH Respondent.
Michael A. Albert, Panel Chair
David E. Sorkin, Panelist
Sandra J. Franklin, Panelist
Dated: October 12, 2016
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