HOPE worldwide, Ltd. v. Jeniper Jin
Claim
Number: FA0409000320379
Complainant is HOPE worldwide, Ltd. (“Complainant”), represented
by Michael J. Remington, of Drinker Biddle & Reath LLP, 1500 K St., N.W., Suite 1100, Washington, DC 20005. Respondent is Jeniper Jin (“Respondent”), 1004 Yangjae-dong, Seocho-gu, Seoul,
Korea 137130.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hope-worldwide.org>, registered with Wooho
T & C Ltd. d/b/a rgnames.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 1, 2004; the Forum received a hard copy of the
Complaint on September 3, 2004.
On
September 28, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 18, 2004 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@hope-worldwide.org by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted to
the parties a Notification of Respondent Default.
On
November 1, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin 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."
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 makes the following assertions:
1. Respondent’s <hope-worldwide.org>
domain name is confusingly similar to Complainant’s HOPE WORLDWIDE mark.
2. Respondent does not have any rights or
legitimate interests in the <hope-worldwide.org> domain name.
3. Respondent registered and used the <hope-worldwide.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
non-profit charity headquartered in Wayne, Pennsylvania. Complainant serves more than 2 million needy
people annually in 75 nations providing programs that serve disadvantaged
children and the elderly. Complainant
registered the HOPE WORLDWIDE mark with the U.S. Patent and Trademark Office
(“USPTO”) on August 3, 1999 (Reg. No. 2,266,588).
Respondent
registered the <hope-worldwide.org> domain name on July 3,
2004. The domain name resolves to a
website that appropriates Complainant’s website. Respondent’s website fools Internet users into sharing personal
financial data so that identities can be stolen, fraudulent bills are run up,
and spam e-mail is sent. This scam is
known as “phishing.”
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."
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.
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 has
established rights in the HOPE WORLDWIDE mark through registration with the
USPTO. See Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive, and Respondent has the
burden of refuting this assumption; see
also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb.
Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”).
Respondent’s <hope-worldwide.org>
domain name is confusingly similar to Complainant’s HOPE WORLDWIDE mark
because the domain name merely omits the space between the words of the mark
and adds a hyphen. The Panel finds that
the mere omission of the space and the addition of the hyphen are insufficient
to distinguish the domain name from Complainant’s mark. See Hannover Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”;
see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16,
2000) finding that the domain name <wembleystadium.net> is identical to
the WEMBLEY STADIUM mark; see also
InfoSpace.com, Inc. v. Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (“[t]he domain name ‘info-space.com’ is
identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and
.com are not distinguishing features”); see
also Easyjet Airline Co. Ltd. v. Harding, D2000-0398 (WIPO June
22, 2000) finding it obvious that the domain name <easy-jet.net> was
virtually identical to Complainant's EASYJET mark and therefore that they are
confusingly similar.
Furthermore,
the addition of the generic top-level domain “.org” is insufficient to
distinguish the domain name from Complainant’s mark. See Microsoft Corp. v. Mehrotra, D2000-0053
(WIPO Apr. 10, 2000) finding that the domain name <microsoft.org> is
identical to Complainant’s mark; see
also Koninklijke Philips Elecs. NV
v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) finding that the domain name
<philips.org> is identical to Complainant’s PHILIPS mark.
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to provide a Response, the Panel presumes that Respondent
lacks rights and legitimate interests in the <hope-worldwide.org> domain
name. See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) finding that by not submitting
a Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name; see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) finding that Respondents’ failure to respond can be construed as
an admission that they have no legitimate interest in the domain names.
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <hope-worldwide.org>
domain name. Therefore, the Panel
concludes that Respondent lacks rights and legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) has not been
established; see also Gallup
Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark.
In addition,
Respondent’s <hope-worldwide.org> domain name is confusingly
similar to Complainant’s mark, redirects Internet users to a website that
imitates Complainant’s website, and is used to acquire personal information
from Complainant’s potential associates fraudulently. Respondent’s use of the domain name does not constitute a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Am. Int’l Group, Inc. v. Busby, FA
156251 (Nat. Arb. Forum May 30, 2003) finding that as Respondent attempted to
pass itself off as Complainant online, through wholesale copying of
Complainant’s website, Respondent had no rights or legitimate interests in the
disputed domain name; see also Vivendi Universal Games v. Ballard, FA
146621 (Nat. Arb. Forum Mar. 13, 2002) stating that where Respondent copied
Complainant’s website in order to steal account information from Complainant’s
customers, that Respondent’s “exploitation of the goodwill and consumer trust
surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights
and legitimate interests in the disputed domain name”.
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <hope-worldwide.org>
domain name is confusingly similar to Complainant’s mark, redirects
Internet users to a website that imitates Complainant’s website, and is used to
acquire personal information from Complainant’s potential associates
fraudulently. Respondent’s use of the
domain name is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Monsanto Co. v.
Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) finding
that Respondent's use of <monsantos.com> to misrepresent itself as
Complainant and to provide misleading information to the public
supported a finding of bad faith; see
also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb.
Forum Mar. 13, 2002) finding that where Complainant’s mark was appropriated at
registration, and a copy of Complainant’s website was used at the domain name
in order to facilitate the interception of Complainant’s customer’s account information,
Respondent’s behavior evidenced bad faith use and registration of the domain
name.
Moreover,
Respondent presumably commercially benefits from acquiring the personal
information via the misleading domain name, which is evidence that Respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See
H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum
Jan. 8, 2003) finding that the disputed domain name was registered and used in
bad faith pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and
use of the infringing domain name to intentionally attempt to attract Internet
users to its fraudulent website by using Complainant’s famous marks and
likeness; see also Kmart v.
Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if Respondent
profits from its diversionary use of Complainant's mark when the domain name
resolves to commercial websites and Respondent fails to contest the Complaint,
it may be concluded that Respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <hope-worldwide.org> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
November 11, 2004
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