Oxfam America, Inc. v. J Lee
Claim
Number: FA0503000435768
Complainant is Oxfam America, Inc. (“Complainant”), represented
by Andrew J. Ferren, of Goulston and Storrs, P.C.,
400 Atlantic Ave., Boston, MA 02111.
Respondent is J. Lee (“Respondent”),
18 Salisbury Road, Kowloon, HK.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain name at issue are <oxfamaerica.com>, <oxfamaerica.org>,
<oxfamameric.org>, <oxfamamarica.org>, <oxfamamirica.org>,
<oxfamzmerica.org>, <oxfamamerics.org>, <ioxfamamerica.org>,
<poxfamamerica.org>, <oxfamameria.com>, <oxfamameria.org>, <oxfamamerca.org>,
<oxfamamercia.org>, <oxfamemerica.org>, <oxfamanerica.org>,
<oxfamameriac.org>, <koxfamamerica.org> and <loxfamamerica.org>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 11, 2005.
On
March 8, 2005, Iholdings.com, Inc.
d/b/a Dotregistrar.com confirmed by e-mail to the National Arbitration Forum
that the domain names <oxfamaerica.com>, <oxfamaerica.org>,
<oxfamameric.org>, <oxfamamarica.org>, <oxfamamirica.org>,
<oxfamzmerica.org>, <oxfamamerics.org>, <ioxfamamerica.org>,
<poxfamamerica.org>, <oxfamameria.com>, <oxfamameria.org>, <oxfamamerca.org>,
<oxfamamercia.org>, <oxfamemerica.org>, <oxfamanerica.org>,
<oxfamameriac.org>, <koxfamamerica.org> and <loxfamamerica.org>
are registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com registration agreement and has thereby agreed to
resolve domain name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
March 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 2005 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@oxfamaerica.com, postmaster@oxfamaerica.org,
postmaster@oxfamameric.org. postmaster@oxfamamarica.org,
postmaster@oxfamamirica.org, postmaster@oxfamzmerica.org,
postmaster@oxfamamerics.org, postmaster@ioxfamamerica.org,
postmaster@poxfamamerica.org, postmaster@oxfamameria.com,
postmaster@oxfamameria.org, postmaster@oxfamamerca.org,
postmaster@oxfamamercia.org, postmaster@oxfamemerica.org,
postmaster@oxfamanerica.org, postmaster@oxfamameriac.org, postmaster@koxfamamerica.org,
and postmaster@loxfamamerica.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 8, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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." 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 names be cancelled.
A. Complainant makes the following assertions:
1. Respondent’s <oxfamaerica.com>,
<oxfamaerica.org>, <oxfamameric.org>, <oxfamamarica.org>,
<oxfamamirica.org>, <oxfamzmerica.org>, <oxfamamerics.org>,
<ioxfamamerica.org>, <poxfamamerica.org>, <oxfamameria.com>,
<oxfamameria.org>, <oxfamamerca.org>,
<oxfamamercia.org>, <oxfamemerica.org>, <oxfamanerica.org>,
<oxfamameriac.org>, <koxfamamerica.org> and <loxfamamerica.org>
domain names are confusingly similar to Complainant’s OXFAM AMERICA mark.
2. Respondent does not have any rights or
legitimate interests in the <oxfamaerica.com>, <oxfamaerica.org>,
<oxfamameric.org>, <oxfamamarica.org>, <oxfamamirica.org>,
<oxfamzmerica.org>, <oxfamamerics.org>, <ioxfamamerica.org>,
<poxfamamerica.org>, <oxfamameria.com>, <oxfamameria.org>, <oxfamamerca.org>,
<oxfamamercia.org>, <oxfamemerica.org>, <oxfamanerica.org>,
<oxfamameriac.org>, <koxfamamerica.org> and <loxfamamerica.org>
domain names.
3. Respondent registered and used the <oxfamaerica.com>,
<oxfamaerica.org>, <oxfamameric.org>, <oxfamamarica.org>,
<oxfamamirica.org>, <oxfamzmerica.org>, <oxfamamerics.org>,
<ioxfamamerica.org>, <poxfamamerica.org>, <oxfamameria.com>,
<oxfamameria.org>, <oxfamamerca.org>,
<oxfamamercia.org>, <oxfamemerica.org>, <oxfamanerica.org>,
<oxfamameriac.org>, <koxfamamerica.org> and <loxfamamerica.org>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Oxfam America, Inc., is a Boston-based international development and relief
agency and an affiliate of Oxfam International. Working with local partners,
Complainant delivers development programs and emergency relief services, and
campaigns for change in global practices and policies that keep people in
poverty.
Complainant
holds several trademark registrations with the United States Patent and Trademark
Office for the OXFAM AMERICA mark (Reg. No. 2,656,009 issued December 3, 2002;
Reg. No. 2,651,506 issued November 19, 2002; and Reg. No. 2,638,918 issued
October 22, 2002). Complainant has
continuously used the OXFAM AMERICA mark since 1971 for a variety of programs
and relief services.
Complainant’s
main website is operated at the <oxfamamerica.org> domain name.
Respondent
registered the disputed domain names between January 3 and 5, 2005. Respondent is using the domain names to
direct Internet users to a parking website that features sponsored links from
charitable organizations that are in direct competition with Complainant’s
services.
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 that it has rights in the OXFAM AMERICA mark through
registration with the United States Patent and Trademark Office (“USPTO”) and
through continuous use of the mark over the last thirty-four years. Registration of the mark with the USPTO is prima
facie evidence that Complainant has rights in a valid trademark. See 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.”); see also 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 that a respondent has the burden of refuting this assumption); see
also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was established).
The disputed domain names
are confusingly similar to Complainant’s OXFAM AMERICA registered trademark
because the disputed domain names are all various misspellings of Complainant’s
mark. Each disputed domain name
contains the “Oxfam” moniker within the domain name, a misspelling of the word
“america” and four of the domain names include an extra letter at the
beginning. The addition of an extra
letter, a generic top-level domain (“gTLD”) “.com” or .”org” and a misspelling
of the word “america” have consistently been found to be inconsequential in
determining the similarity between a mark and a domain name. See Victoria’s Secret v.
Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to the complainant’s marks); see
also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com>, are common
misspellings and therefore confusingly similar); see also Am. Online, Inc. v. Tencent Communications
Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that
<oicq.net> and <oicq.com> are confusingly similar to Complainant’s
mark, ICQ); see also VeriSign,
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and
Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); see also JVC
Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the
domain name registered by the respondent, <jvc-america.com>, is
substantially similar to, and nearly identical to Complainant's JVC mark).
Therefore,
Complainant has established that the disputed domain names are all confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain names. Because Complainant’s evidence and arguments are unopposed, the
Panel accepts all reasonable inferences made in the Complaint as true. See
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.”); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that a complainant’s allegations are
true unless clearly contradicted by the evidence).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain names. See
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once a complainant asserts that a respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to the respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, a respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Respondent is
not authorized or licensed by Complainant to use the OXFAM AMERICA mark in the
domain names. The only evidence in the
record that relates to the Panel’s determination of whether Respondent is
commonly known by the disputed domain names is the WHOIS registration
information for the respective domain names.
However, the WHOIS information for all of the domain names lists the
domain name registrant as “J Lee,” not by anything remotely similar to any of
the domain names. Therefore, the Panel
finds that the evidence fails to indicate that Respondent is commonly known by
the domain names pursuant to Policy ¶ 4(c)(ii) based on the foregoing. See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where a respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; and (3) the respondent is not commonly known by
the domain name in question).
Furthermore, all
of the disputed domain names are confusingly similar to Complainant’s OXFAM
AMERICA mark and are used to redirect Internet users to websites that offer
sponsored links to charitable donation sites that compete with Complainant’s
services. Respondent’s use of domain
names that are confusingly similar to Complainants’ mark dilute Complainant’s
mark by diverting Internet users to websites unrelated to the mark and
therefore are not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate or noncommercial or fair
use of the domain names pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s
diversionary use of a complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of the
complainant, was not a bona fide offering of goods or services); see also Telstra Corp. v. Nuclear Marshmallow,
D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has
not licensed or otherwise permitted the respondent to use any of its trademarks
and (ii) the fact that the word TELSTRA appears to be an invented word, and as
such is not one traders would legitimately choose unless seeking to create an
impression of an association with the complainant, demonstrate that the
respondent lacks rights or legitimate interests in the domain name); see
also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June
23, 2003) (holding that a respondent’s appropriation of a complainant’s mark to
market products that compete with the complainant’s goods does not constitute a
bona fide offering of goods and services).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent uses
the disputed
domain names to expose Internet users to links for charitable organizations
that are in direct competition with Complainant’s services. Complainant’s business is focused on
international development and relief services.
The Panel finds that, by creating confusion around Complainant’s OXFAM
AMERICA mark, Respondent is attempting to disrupt the business of a
competitor. Respondent’s use of domain
names confusingly similar to Complainant’s mark to offer services similar to
Complainant’s services is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding a respondent acted in bad faith
by attracting Internet users to a website that competes with a complainant’s
business); see also EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of variation from a complainant's marks
suggests that the respondent, the complainant’s competitor, registered the
names primarily for the purpose of disrupting the complainant's business); see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that a respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Additionally,
Respondent’s registration of the disputed domain names, domain names that
incorporate Complainant’s mark and simply ad a misspelling of the geographic
term “america” and/or add an extra beginning letter, suggests that Respondent
knew of Complainant’s rights in the OXFAM AMERICA mark. Furthermore, Complainant’s registration of
its mark with the USPTO confers constructive knowledge on anyone attempting to
use the mark. Thus, the Panel
determines that Respondent chose the disputed domain names based on the distinctive
qualities of Complainant’s mark, which evidences bad faith registration and use
pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum
Apr. 17, 2000) (finding that evidence of bad faith includes actual or
constructive knowledge of a commonly known mark at the time of registration); see
also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
“domain names are so obviously connected with the Complainants that the use or
registration by anyone other than Complainants suggests ‘opportunistic bad
faith’”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof”).
Therefore,
Complainant has established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <oxfamaerica.com>, <oxfamaerica.org>,
<oxfamameric.org>, <oxfamamarica.org>, <oxfamamirica.org>,
<oxfamzmerica.org>, <oxfamamerics.org>, <ioxfamamerica.org>,
<poxfamamerica.org>, <oxfamameria.com>, <oxfamameria.org>, <oxfamamerca.org>,
<oxfamamercia.org>, <oxfamemerica.org>, <oxfamanerica.org>,
<oxfamameriac.org>, <koxfamamerica.org> and <loxfamamerica.org>
domain names be CANCELLED.
Louis E. Condon, Panelist
Dated: April 22, 2005
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