YouthBuild USA v. ARCH
Claim
Number: FA0505000474826
Complainant is YouthBuild USA (“Complainant”), represented
by Andrew J. Ferren, of Goulston and Storrs, P.C.,
400 Atlantic Avenue, Boston, MA 02110.
Respondent is ARCH (“Respondent”),
2309 Martin Luther King Blvd., Washington, D.C. 20020.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <youthbuildinternational.org>, <youthbuildintl.org>,
and <youthbuildintl.com>, registered with Go Daddy Software,
Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 11, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <youthbuildinternational.org>,
<youthbuildintl.org>, and <youthbuildintl.com> are
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the names. Go Daddy Software, Inc. has verified that Respondent
is bound by the Go Daddy Software, Inc. 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
May 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 8, 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@youthbuildinternational.org,
postmaster@youthbuildintl.org, and postmaster@youthbuildintl.com 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
June 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (Ret.) 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 transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <youthbuildinternational.org>,
<youthbuildintl.org>, and <youthbuildintl.com> domain
names are confusingly similar to Complainant’s YOUTHBUILD marks.
2. Respondent does not have any rights or
legitimate interests in the <youthbuildinternational.org>, <youthbuildintl.org>,
and <youthbuildintl.com> domain names.
3. Respondent registered and used the <youthbuildinternational.org>,
<youthbuildintl.org>, and <youthbuildintl.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant owns
multiple U.S. federal trademark registrations for its YOUTHBUILD related
marks. Most importantly, Complainant
registered the YOUTHBUILD mark on November 16, 1993 in connection with
“educational services; namely conducting courses of instruction to train others
to conduct programs to assist young people in learning trades and skills,
including training and leadership skills and consultation related
thereto.” Complainant began using the
YOUTHBUILD mark in commerce in 1989.
As of October
15, 2003, Respondent was an affiliate of Complainant’s organization. On October 21, 2003, Respondent registered
the disputed domain names, <youthbuildinternational.org>, <youthbuildintl.org>,
and <youthbuildintl.com>.
The domain names resolve to “parking” web pages sponsored by the
registrar, Go Daddy Software, Inc., which advertises the registrar’s
services. The registrar includes the
following statement at the top of the resolved web pages: “This Web page is
parked free, courtesy of GoDaddy.com!”
Complainant
objected to Respondent’s registration of the disputed domain names. On March 23, 2005, Complainant sent a cease
and desist letter to Respondent.
Respondent replied to Complainant’s letter by stating, “I already have a
bidder from Europe that is willing to take over the names for a payment of
$5,000 . . . If YouthBuild USA would like to enter the bidding, please contact
me.” Complaint Exhibit 6.
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.
In the absence of a response, the Panel may
accept all reasonable allegations set forth in the Complaint, and may draw
reasonable inferences derived from those allegations, unless clearly
contradicted by the evidence. See Desotec
N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that Complainant's allegations are true unless clearly contradicted
by the evidence);
see also Vert. Solutions Mgmt., Inc. v. Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the Complaint to be deemed true).
Complainant has
established a presumption of valid trademark rights in the YOUTHBUILD mark as
the result of its federal trademark registrations. In the absence of a response, this presumption stands. Therefore, Complainant has established valid
trademark rights in the YOUTHBUILD mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption); see
also Am. Online, Inc. v. Thomas P.
Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the United States Patent and Trademark Office creates a presumption of
rights in a mark).
Complainant
alleges that the disputed domain names, <youthbuildinternational.org>,
<youthbuildintl.org>, and <youthbuildintl.com>, are
confusingly similar to Complainant’s YOUTHBUILD mark pursuant to Policy ¶
4(a)(i). Each of the domain names
incorporates Complainant’s mark in its entirety. The domain names simply contain the additional term
“international,” and the common abbreviation for that term, “intl.” Panels have held that the addition of the
term “international” to a third-party mark in a domain name is confusingly
similar to the mark under Policy ¶ 4(a)(i).
See State Farm Mut. Auto. Ins. Co. v. J Lee, FA 436815 (Nat. Arb.
Forum Apr. 21, 2005) (finding the <statefarminternational.com> domain
name confusingly similar to the complainant’s STATE FARM mark); see also
Travelers Express Co., Inc. v. Tsung, FA 275511 (Nat. Arb. Forum July 7,
2004) (finding the <moneygraminternational.com> domain name confusingly
similar to the complainant’s MONEYGRAM mark).
In the absence
of a response, and consistent with prior decisions under the Policy, the Panel
finds that the disputed domain names, <youthbuildinternational.org>,
<youthbuildintl.org>, and <youthbuildintl.com>, are
confusingly similar to Complainant’s YOUTHBUILD mark pursuant to Policy ¶
4(a)(i).
Complainant has
established Policy ¶ 4(a)(i).
The fact that Respondent failed to respond to
the Complaint is construed as an implicit admission that Respondent lacks
rights and legitimate interests in the disputed domain name. See
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 interests in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s reasonable
allegations are true.”).
The disputed
domain names simply resolve to websites sponsored by the registrar, Go Daddy
Software, Inc. Complainant refers to
this as a “parking” page. Prior
decisions under the Policy evidence the common practice of registrars in resolving
registered domain names to their own sponsored web pages pending a registrant’s
actual use of a domain name. In the
absence of a response, the Panel finds that Respondent’s web page, sponsored by
the registrar, qualifies as passive holding.
See State Farm Mut. Auto. Ins.
Co. v. DuBois, FA
339599
(Nat. Arb. Forum Dec. 1, 2004) (finding that the respondent was passively
holding a domain name because the domain name merely resolved to the
registrar’s web page and stated that the page was being parked for free by
GoDaddy.com); see also Todito.com, S.A. de C.V. v. Guerra, D2002-0619
(WIPO Sept. 13, 2002) (finding
that where a domain name resolves to a “place-holder” website pertaining to the
registrar, the panel may conclude that respondent is passively holding the
domain name).
Passively
holding a domain name does not constitute evidence of a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia &
Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where Respondent failed to submit a Response to the
Complaint and had made no use of the domain name in question); see also TMP
Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's passive holding of the domain
name does not establish rights or legitimate interests pursuant to Policy ¶
4(a)(ii).”).
Moreover, there is no assertion in the record
that Respondent is commonly known by the disputed domain names. The WHOIS registration information lists the
registrant as being “Kevin Pryor” and “ARCH,” neither of which indicate
Respondent is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent
is not commonly known by the disputed domain names pursuant to Policy ¶
4(c)(ii).
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) does not apply); see also Compagnie de Saint Gobain
v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
Complainant has
established Policy ¶ 4(a)(ii).
Complainant
contends that Respondent registered and used the disputed domain names in bad
faith. In part, Complainant relies on
the alleged fact that Respondent “is maintaining and attempting to sell the
registrations in bad faith.” Complaint
at 8 ¶ d.
Policy ¶ 4(b)(i)
outlines the indicators of bad faith as it relates to the sale of domain name
registrations. In particular, bad faith
is evidenced by circumstances that indicate a respondent registered or acquired
the domain name primarily to sell the domain name registration to a complainant
or to a competitor of that complainant, for valuable consideration in excess of
documented out-of-pocket costs directly related to the domain name. In short, a panel must examine the
“circumstances” to determine the purpose underlying a respondent’s
registration.
In this case,
Respondent never formally offered the domain name for sale to Complainant. It was only after Complainant contacted
Respondent and requested the transfer of the disputed domain name registrations
that Respondent replied, “I already have a bidder from Europe that is willing
to take over the names for a payment of $5,000 . . . If YouthBuild USA would
like to enter the bidding, please contact me.”
This is merely an invitation for an offer. This is not, however, dispositive of the issue under Policy ¶
4(b)(i). The plain language of Policy ¶
4(b)(i) does not require an offer for a finding of bad faith registration and
use.
The uncontested
allegations indicate that Respondent was affiliated with Complainant’s
organization prior to registering the disputed domain names. Therefore, Respondent had actual knowledge
of Complainant’s organization and rights in the YOUTHBUILD mark at the time of
registering the domain names. The fact
that Respondent registered three domain names it knew were confusingly similar
to Complainant’s mark, is strong indicia that Respondent registered the domain
names for purposes relating to Complainant.
Moreover,
although Respondent claimed an alternate buyer was willing to pay $5,000 for
the domain name registrations, the Panel is not entirely convinced. Based on the surrounding circumstances, it
is likely that Complainant used this “alternate buyer” merely as a bargaining
chip in its communications with Complainant.
Respondent has failed to respond and provide documentation relating to
its out-of-pocket expenses directly related to the disputed domain names. Therefore, the Panel finds that Respondent
tried selling the domain name registrations for valuable consideration in
excess of its out-of-pocket costs directly related to the domain name. As a result, Complainant has established
that Respondent is in violation of Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mkt’g Group, Inc.,
FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a
domain [name] bad faith is some accompanying evidence that the domain name was
registered because of its value that is in some way dependent on the trademark
of another, and then an offer to sell it to the trademark owner or a competitor
of the trademark owner.").
Furthermore,
Respondent’s actual knowledge of Complainant’s rights in the YOUTHBUILD mark at
the time of registering the disputed domain names is also evidence of bad faith
pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.”).
Finally, the
fact that Respondent has passively held the disputed domain names, in
combination with the circumstances indicating its willingness to sell the
domain name registrations, is further evidence of Respondent’s bad faith
registration and use. See Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name owner’s conduct creates the
impression that the name is for sale); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that a general offer of sale combined with no legitimate use of the
domain name constitutes registration and use in bad faith).
Complainant has
established 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 <youthbuildinternational.org>, <youthbuildintl.org>,
and <youthbuildintl.com> domain names be TRANSFERRED from
Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
June 30, 2005
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