United Service Organizations, Inc. v.
Deborah Moore
Claim
Number: FA0508000543451
Complainant is United Service Organizations, Inc. (“Complainant”),
represented by Keith A. Barritt, of Fish & Richardson P.C.,
1425 K Street, N.W., Suite 1100, Washington, DC 20005. Respondent is Deborah Moore (“Respondent”), PSC 817, Box 49, FPO, AE, NY 09622.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com>, registered with
Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 electronically on August
18, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 19, 2005.
On
August 18, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the <uso-european-region.org>,
<uso-hotel-booking.org>, <uso-hawaii.org>, <uso-japan.org>,
<uso-keflavik.org>, <uso-kuwait.org>, <uso-naples.org>,
<uso-paris.org>, <uso-rome.org>, and <usovicenza.com>
domain names are registered with Melbourne It, Ltd. d/b/a Internet Names
Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names
Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a
Internet Names Worldwide 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
August 22, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 12, 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@uso-european-region.org,
postmaster@uso-hotel-booking.org, postmaster@uso-hawaii.org,
postmaster@uso-japan.org, postmaster@uso-keflavik.org, postmaster@uso-kuwait.org,
postmaster@uso-naples.org, postmaster@uso-paris.org, postmaster@uso-rome.org,
postmaster@usovicenza.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 20, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Sandra Franklin 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 <uso-european-region.org>,
<uso-hotel-booking.org>, <uso-hawaii.org>, <uso-japan.org>,
<uso-keflavik.org>, <uso-kuwait.org>, <uso-naples.org>,
<uso-paris.org>, <uso-rome.org>, and <usovicenza.com>
domain names are confusingly similar to Complainant’s USO mark.
2. Respondent does not have any rights or
legitimate interests in the <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com> domain names.
3. Respondent registered and used the <uso-european-region.org>,
<uso-hotel-booking.org>, <uso-hawaii.org>, <uso-japan.org>,
<uso-keflavik.org>, <uso-kuwait.org>, <uso-naples.org>,
<uso-paris.org>, <uso-rome.org>, and <usovicenza.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
United Service Organizations, Inc., is a congressionally chartered non-profit
private organization that provides a wide range of services to members of the
United States armed forces. For over 60
years, Complainant has been providing comfort and assistance to military
personnel and their families. One service
that Complainant provides is support services to United States armed forces
personnel in the continental United States and overseas, namely providing
travellers’ information, aid and tours to military personnel and their
families.
Complainant
holds several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) for the USO mark (i.e., Reg. No. 703,682
issued August 30, 1960).
Respondent
registered the <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org> domain names on October 23, 2004, and the <usovicenza.com>
domain name on November 6, 2004. Respondent
is using the <uso-european-region.org> domain name to redirect
Internet users to Respondent’s commercial website featuring recreational travel
services for members of the United States armed forces personnel stationed
overseas that compete with Complainant’s services. Respondent is currently making no use of the <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com> domain names.
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
established rights in the USO mark through registration of the mark with the
USPTO. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s disputed
domain names are confusingly
similar to Complainant’s USO mark because Respondent’s domain names incorporate
Complainant’s mark in its entirety, add common terms and geographic
identifiers, hyphens and the generic top-level domain “.org” and “.com” to the
mark. Furthermore, the common terms
“hotel” and “booking” describe Complainant’s services. The Panel finds that such minor alterations
to Complainant’s registered mark do not negate the confusingly similar aspects
of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Space Imaging
LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that the <hoylecasino.net> domain name is confusingly similar to
the complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see
also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000)
(finding that the respondent’s domain name <net2phone-europe.com> is
confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a
domain name from being found confusingly similar"); see also
VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding
confusing similarity between the complainant’s VERISIGN mark and the
<verisignindia.com> and <verisignindia.net> domain names where the
respondent added the word “India” to the complainant’s mark); see also
Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1,
2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in
the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see
also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding
that the top level of the domain name such as “.net” or “.com” does not affect
the domain name for the purpose of determining whether it is identical or
confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <uso-european-region.org>,
<uso-hotel-booking.org>, <uso-hawaii.org>, <uso-japan.org>,
<uso-keflavik.org>, <uso-kuwait.org>, <uso-naples.org>,
<uso-paris.org>, <uso-rome.org>, and <usovicenza.com>
domain names. Once Complainant
makes a prima facie case in support of its allegations, the burden
shifts to Respondent to prove that it does have rights or legitimate interests
pursuant to Policy ¶ 4(a)(ii). Due to
Respondent’s failure to respond to the Complaint, the Panel assumes that
Respondent does not have rights or legitimate interests in the disputed domain
names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding that, where the complainant has asserted that respondent does
not have rights or legitimate interests with respect to the domain name, it is
incumbent on respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist).
Respondent is
using the <uso-european-region.org> domain name to redirect Internet users to
Respondent’s commercial website featuring recreational travel services for
members of the United States armed forces personnel stationed overseas that
compete with Complainant’s services.
Respondent’s use of a domain name that is confusingly similar to
Complainant’s USO mark to redirect Internet users interested in Complainant’s
products to a website that offers similar services in competition with
Complainant’s services is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”); see also Or. State
Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001)
(“Respondent's advertising of legal services and sale of law-related books
under Complainant's name is not a bona fide offering of goods and services
because Respondent is using a mark confusingly similar to the Complainant's to
sell competing goods.”).
Respondent has made no use of the <uso-hotel-booking.org>, <uso-hawaii.org>, <uso-japan.org>,
<uso-keflavik.org>, <uso-kuwait.org>, <uso-naples.org>,
<uso-paris.org>, <uso-rome.org>, and <usovicenza.com>
domain names. Simply registering the domain names is not
sufficient to establish rights or legitimate interests. When Respondent makes no use of the domain
names, it can neither be said that they are being used for a bona fide
use under Policy ¶ 4(c)(i) nor as 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 the respondent failed to submit a response to the complaint and
had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v.
Kahveci, D2000-1244 (WIPO Nov. 11, 2000) ( “[M]erely registering the domain
name is not sufficient to establish rights or legitimate interests for purposes
of paragraph 4(a)(ii) of the Policy.”); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no
rights in the domain name where the respondent claimed to be using the domain
name for a non-commercial purpose but had made no actual use of the domain
name).
Moreover,
Respondent has offered no evidence and there is no evidence in the record
suggesting that Respondent is commonly known by the <uso-european-region.org>,
<uso-hotel-booking.org>, <uso-hawaii.org>, <uso-japan.org>,
<uso-keflavik.org>, <uso-kuwait.org>, <uso-naples.org>,
<uso-paris.org>, <uso-rome.org>, or <usovicenza.com>
domain name. Thus, Respondent has not established rights
or legitimate interests in the <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com> domain names
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests 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 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 Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding
no rights or legitimate interests because the respondent was not commonly known
by the disputed domain name nor was the respondent using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <uso-european-region.org> domain name, which is confusingly similar to
Complainant’s USO mark, to redirect Internet users to Respondent’s commercial
website that features services that compete with Complainant’s services. The Panel finds that such use constitutes
disruption and 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 the respondent acted in bad faith by attracting
Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent has
made no use of the <uso-hotel-booking.org>, <uso-hawaii.org>,
<uso-japan.org>, <uso-keflavik.org>, <uso-kuwait.org>,
<uso-naples.org>, <uso-paris.org>, <uso-rome.org>,
and <usovicenza.com> domain names. The failure of Respondent to make use of the disputed domain
names constitutes passive holding, and thus the Panel finds that Respondent’s
registration and use of the <uso-hotel-booking.org>, <uso-hawaii.org>,
<uso-japan.org>, <uso-keflavik.org>, <uso-kuwait.org>,
<uso-naples.org>, <uso-paris.org>, <uso-rome.org>,
and <usovicenza.com> domain names is in bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000)
(concluding that the respondent’s passive holding of the domain name satisfies
the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith); see also Caravan Club v.
Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the
respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
Furthermore,
Respondent registered the <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com> domain names
with constructive knowledge of Complainant’s rights in the USO mark due to
Complainant’s registration of the mark with the USPTO. Moreover, the Panel finds that Respondent registered
the <uso-european-region.org> domain name with actual knowledge of
Complainant’s rights in the mark because of the obvious link between
Complainant and the services advertised at Respondent’s <uso-european-region.org>
domain name. Thus, Respondent
registered and used the <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com> domain names in
bad faith 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 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.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
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 <uso-european-region.org>, <uso-hotel-booking.org>,
<uso-hawaii.org>, <uso-japan.org>, <uso-keflavik.org>,
<uso-kuwait.org>, <uso-naples.org>, <uso-paris.org>,
<uso-rome.org>, and <usovicenza.com> domain names be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
September 27, 2005
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