Focus on the Family v. Web Development Group Ltd.
Claim Number: FA0510000578410
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 Web Development Group Ltd. (“Respondent”), represented by Howard M. Neu, 1152 North University Drive, Pembroke Pines, FL 33024.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <whitsend.com>, registered with Tucows 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 17, 2005.
On October 17, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <whitsend.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 October 20, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 9, 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@whitsend.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <whitsend.com> domain name is identical to Complainant’s WHIT’S END mark.
2. Respondent does not have any rights or legitimate interests in the <whitsend.com> domain name.
3. Respondent registered and used the <whitsend.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Focus on the Family, is a Christian ministry headquartered in Colorado Springs,
Colorado, with millions of constituents and seventeen affiliated ministry
offices around the world. As part of
its ministry, Complainant produces educational seminars, periodic publications,
books, pamphlets, brochures, audio books, audio cassettes, videotape cassettes,
compact discs, motion pictures, websites, television and radio programs, and
other promotional items as well as book publishing, motion picture and
videotape production services, all relating to issues concerning the
family. Complainant holds the
registrations for the ADVENTURES IN ODYSSEY and FOCUS ON THE FAMILY marks.
Complainant began using its WHIT’S END trademark as the name of a fictional restaurant on its international award-winning children's radio and video dramatic series, Adventures in Odyssey, on January 5, 1987, and has used the mark continuously since that time. On the show, the character John Avery Whitaker created a “soda shop and discovery emporium” in the fictional city of Odyssey, and named the shop “Whit’s End.”
Complainant currently holds two registered marks for WHIT’S END, (Reg. Nos. 2,853,865 and 2,853,853), both filed on June 26, 2003 and registered on June 15, 2004.
In addition, Complainant has maintained a website for its popular radio and video series for children entitled Adventures in Odyssey at <whitsend.org> since 1999. Complainant recently discovered infringement of its WHIT'S END marks when a constituent accidentally typed "whitsend.com" instead of "whitsend.org" and was directed to Respondent's website. This person sent in a comment to Complainant’s feedback page, attaching a screen shot of the website associated with Respondent’s domain name.
Respondent, Web Development Group, registered the <whitsend.com> domain name on August 14, 2000. The website associated with Respondent’s domain name displays categories of links. These links include references to Complainant’s marks; in the “popular categories” section, the links include “Odyssey” and “Focus on the Family.” In addition, the other links refer to, inter alia, others’ trademarks, i.e. “Disney.com,” and “Music,” “Airline Tickets,” “Jewish Singles,” and “Battleship.”
On May 6, 2005, Complainant sent a cease and desist letter to Respondent. Respondent changed its website content to no longer refer to Complainant. Respondent’s subsequent website offered links to dating sites, including “Discreet Adult Dating,” “Match.com,” and “Meet Jewish Singles.”
Respondent subsequently offered to sell the domain name registration for $1,375, which it alleges were its costs for purchasing the registration and developing 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’s registration of the WHIT’S END mark post dates
Respondent’s registration of the <whitsend.com> domain name. In instances such as this, panels look to see
if Complainant has common law rights that predate the disputed domain
name. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
May 18, 2001) (“The Policy does not require that a trademark be registered by a
governmental authority for such rights to exist.”); British Broad. Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
Complainant has submitted evidence of use of the WHIT’S END
mark in conjunction with a educational seminars, periodic publications, books,
pamphlets, brochures, audio books, audio cassettes, videotape cassettes,
compact discs, motion pictures, book publishing, motion picture and videotape
production services, websites, television and radio programs, and other
promotional items, all relating to issues concerning the family. The Panel finds
that this use is adequate to establish secondary meaning in the WHIT’S END
mark. See S.A. Bendheim Co., Inc. v.
Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that
the complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL
BANK] in connection with its banking business, it has acquired rights under the
common law.”).
The Panel finds that the <whitsend.com> domain
name is identical to Complainant’s mark.
The only difference is the addition of the “.com” top-level domain,
which does not significantly distinguish the domain name from the mark. See Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant); Snow Fun, Inc. v. O'Connor, FA 96578
(Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark).
Complainant has established Policy ¶ 4(a)(i).
Respondent is wholly appropriating Complainant’s mark to
refer Internet traffic to Complainant and third-party domain names relating to
travel, gambling, and Jewish dating.
The Panel infers that Respondent is receiving click-through fees. The Panel finds that compiling and offering
eclectic links for commercial gain is not a bona fide offering of a good
or service pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy); Seiko
Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003)
(“Diverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”).
There is nothing in the record, including the WHOIS
registration information, that indicates that Respondent is commonly known by
the disputed 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) does not apply); 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).
Complainant has established Policy ¶ 4(a)(ii).
Respondent is appropriating Complainant’s mark to refer
Internet users to Complainant and third-party links. The Panel infers that Respondent receives revenues for its
referrals, Therefore, the Panel finds
that Respondent is generating commercial gain by siphoning Internet traffic by
creating confusion with Complainant’s mark, which is evidence of bad faith
registration and use. See Anne of Green Gable Licensing Auth., Inc. v.
Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the
respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used
the complainant’s well-known mark to attract users to the respondent's
website); ESPN, Inc. v. Ballerini, FA
95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent
linked the domain name to another domain name, <iwin.com>, presumably
receiving a portion of the advertising revenue from the site by directing
Internet traffic there, thus using a domain name to attract Internet users for
commercial gain).
The Panel also finds that there is nothing in the record to
demonstrate how Respondent’s costs for purchasing the domain name registration
and maintaining the associated website could amount to $1,375. Therefore, because Respondent’s offer to
sell the domain name was for consideration in excess of it out-of-pocket costs,
the Panel finds that Respondent has exhibited bad faith registration and use
pursuant to Policy ¶ 4(a)(i). See Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated
bad faith when he requested monetary compensation beyond out-of-pocket costs in
exchange for the registered domain name); Tech.
Props., Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding
bad faith where the respondent verbally offered the domain names for sale for
$2,000).
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 <whitsend.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 30, 2005
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