Focus on the Family v. NEOG Inc. c/o
Domain Admins
Claim
Number: FA0506000493130
Complainant is Focus on the Family (“Complainant”), represented
by Cynthia A. Casby of Holland & Knight LLP,
633 W. Fifth Street, Suite 2100, Los Angeles, CA 90071. Respondent is NEOG Inc. c/o Domain Admins (“Respondent”), Sorena
Tah. 4167, Istanbul, Turkey 48705.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <fokuspadakeluarga.net>, registered with Onlinenic,
Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 9, 2005.
On
June 9, 2005, Onlinenic, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <fokuspadakeluarga.net> is registered
with Onlinenic, Inc. and that Respondent is the current registrant of the
name. Onlinenic, Inc. has verified that
Respondent is bound by the Onlinenic, 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
June 16, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 6, 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@fokuspadakeluarga.net 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
July 13, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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 name be transferred from Respondent to Complainant.
A.
Complainant makes the following
assertions:
1. Respondent’s <fokuspadakeluarga.net>
domain name is identical to Complainant’s FOKUS PADA KELUARGA mark.
2. Respondent does not have any rights or
legitimate interests in the <fokuspadakeluarga.net> domain name.
3. Respondent registered and used the <fokuspadakeluarga.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Focus on the Family, is a Christian ministry
with its headquarters in Colorado Springs, CO.
Complainant has millions of constituents and seventeen affiliated
ministry offices throughout the world.
Complainant’s Indonesian affiliate opened on January 18, 1995 and is
well-known locally by its FOKUS PADA KELUARGA mark. Complainant began using its famous FOCUS ON THE FAMILY mark in
1977 and has used its FOKUS PADA KELUARGA mark since at least April 1996.
Complainant holds numerous registrations throughout the world and with
the United States Patent and Trademark Office for its FOCUS ON THE FAMILY mark
(Reg. No. 1,104,503 issued October 17, 1978 and Reg. No. 1,130,379 issued
February 5, 1980) and corresponding foreign translations. Complainant’s FOKUS PADA KELUARGA mark (Reg.
No. 377990 registered August 4, 1997 and Reg. No. 377989 registered August 4,
1997) is registered in Indonesia with the Department of Justice of the Republic
of Indonesia.
Respondent registered the <fokuspadakeluarga.net> domain name on September 2, 2004. The disputed domain name resolves to a
website that displays adult-oriented material and charges Internet users who
wish to gain access to more adult-oriented material. Prior to Respondent’s registration of the disputed domain name,
Complainant had used the domain name to post information about its ministry for
its constituents. However, in the
summer of 2004, Complainant allowed the disputed domain name to expire, at
which time Respondent was able to register the domain name.
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. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also 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.”).
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
provided evidence that it registered the FOKUS PADA KELUARGA mark with the
Department of Justice of the Republic of Indonesia, which establishes a prima
facie case of Complainant’s rights in the mark that can be rebutted by
Respondent. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (“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. Respondent has the burden of refuting this assumption.”); see also Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”). Since
Respondent has not filed a response, Complainant’s prima facie case of
rights in the mark has gone uncontested, and the Panel determines that
Complainant has established rights in the FOKUS PADA KELUARGA mark for the purposes
of Policy ¶ 4(a)(i).
The <fokuspadakeluarga.net>
domain name includes Complainant’s FOKUS PADA KELUARGA mark in its entirety and
differs from the mark only with the omission of the spaces between the words of
the mark and the addition of the generic top-level domain (“gTLD”) “.net.” Simply adding a gTLD to, and omitting spaces
from, a complainant’s mark to form a domain name are not sufficient to create a
distinct mark, because domain name registrants are required to add a TLD of
some kind and cannot include spaces in domain names. See Isleworth Land Co. v. Lost in
Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is a
“well established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”); see also 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”).
Therefore, the Panel finds that the disputed domain name is identical to
Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
It has been established
under the Policy that the complainant has the initial burden of proving that
the respondent lacks rights and legitimate interests in the disputed domain
name. In Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001),
the panel held:
Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for respondents to seek to bring themselves within one of
the examples of paragraph 4(c) or put forward some other reason why they can
fairly be said to have a relevant right or legitimate interests in respect of
the domain name in question.
Id.; see also Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the
respondent”). Having found that
Complainant has met its initial burden in establishing a prima facie
case, the Panel will now conduct an analysis of whether Respondent has met its
burden to establish why it should be considered as having rights or legitimate
interests in the disputed domain name under Policy ¶ 4(c).
Complainant
contends that Respondent is not commonly known by the <fokuspadakeluarga.net>
domain name and that Respondent is not affiliated in any way with Complainant or
its mark. The Panel has not received a
response from Respondent to refute Complainant’s allegations, and the record
does not contain any evidence that Respondent is commonly known by the disputed
domain name. Thus, Respondent has
failed to establish rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the 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 Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately apparent to the panel and the respondent did not
come forward to suggest any right or interest it may have possessed).
Furthermore,
Respondent is using the <fokuspadakeluarga.net> domain name to
divert Internet users who may be searching for a website affiliated with
Complainant’s Christian ministry to an adult-oriented website that charges fees
to link users to various forms of adult-oriented material. Respondent’s use of a domain name that
contains Complainant’s mark to host an adult-oriented website does not
constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii),
especially where the material on the website is clearly at odds with
Complainant’s use of its FOKUS PADA KELUARGA mark for Christian ministry
work. See Isleworth Land Co.
v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding
that the respondent’s use of its domain name to link unsuspecting
Internet traffic to an adult orientated website, containing images of scantily
clad women in provocative poses, did not constitute a connection with a bona
fide offering of goods or services or a noncommercial or fair use); see
also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to
pornography is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and
(iii).”). Additionally, Respondent has
not offered any arguments to contest Complainant’s contentions that Responent
has not made a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name, which leads the Panel to the
conclusion that Respondent has not established rights or legitmate interests
under Policy ¶ 4(c)(i) or (iii). See
BIC Deutschland GmbH & Co. KG
v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response,
Respondent has failed to invoke any circumstance which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the
domain name”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is
using the <fokuspadakeluarga.net> domain name, which is identical
to Complainant’s FOKUS PADA KELUARGA mark, to resolve to a website that
displays adult-oriented material and charges Internet users fees to gain access
to various other forms of adult-oriented material. By using Complainant’s mark in the domain name to create a
likelihood of confusion, Respondent is attempting to attract Internet users who
are searching for Complainant’s products and services to Respondent’s website
for Respondent’s commercial benefit.
Respondent’s activities are evidence of bad faith regisration and use under
Policy ¶ 4(b)(iv). See Bank
of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3,
2003) (stating that “[s]ince the disputed domain names contain entire versions
of Complainant’s marks and are used for something completely unrelated to their
descriptive quality, a consumer searching for Complainant would become confused
as to Complainant’s affiliation with the resulting search engine website” in
holding that the domain names were registered and used in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
The Policy
provides that a complainant may satisfy the bad faith registration and use
requirement of Policy ¶ 4(a)(iii) by providing evidence of one of the listed
circumstances found under Policy ¶ 4(b).
However, the Policy states explicity that a panel is not limited to the
provided list in making a determination of bad faith registration and use. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see
also Twentieth Century Fox Film Corp.
v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):
The requirement in the ICANN Policy that
a complainant prove that domain names are being used in bad faith does not
require that it prove in every instance that a respondent is taking positive
action. Use in bad faith can be inferred from the totality of the circumstances
even when the registrant has done nothing more than register the names.
Id.
Thus, the Panel will make findings of bad faith based on the totality of
the circumstances.
Panels have
found that a respondent’s use of an infringing domain name to resolve to an
adult-oriented website can alone constitute evidence of bad faith registration
and use, especially where a respondent fails to provide any evidence to
contradict this contention.
Furthermore, in this instance, where Complainant is a Christian ministry
and has used the <fokuspadakeluarga.net> domain name in
association with a website that displayed information about Complainant’s
ministry for its constituents, the Panel finds that using Complainant’s mark
for an adult-oriented website is damaging to the goodwill Complainant has
acquired in its mark. Thus,
Respondent’s use of the disputed domain name to divert Internet users who may
be searching for information about Complainant to an adult-oriented website is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party
Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect
Internet users to adult-oriented websites was evidence that the domain names
were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148
(WIPO Apr. 26, 2000) (finding that where the complainant “has placed
substantial emphasis on the damage that it will suffer as a result of the
linkage of its own trade mark” to a website that displays adult-oriented
material, “this association
with a pornographic web site can itself constitute a bad faith”).
Furthermore,
Complainant contends that it previously held the registration for the <fokuspadakeluarga.net>
domain name and operated a website at the domain name, which is further
evidence that Respondent registered and used the disputed domain name in bad
faith. Without any response from
Respondent to rebut this evidence, the Panel finds that Respondent’s
registration of the disputed domain name, which contains Complainant’s mark,
after Complainant allowed its registration to lapse is evidence of bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See InTest
Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the
domain name has been previously used by the Complainant, subsequent
registration of the domain name by anyone else indicates bad faith, absent
evidence to the contrary.”); see also Aurbach v. Saronski, FA
155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was
previously held, developed and used by Complainant, opportunistic registration
of the domain name by another party indicates bad faith, absent any
justification that illustrates legitimate use.”).
The Panel finds
that Complainant has satisfied 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 <fokuspadakeluarga.net> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: July 26, 2005
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