The Cannon Foundation, Inc. v. John Bonk / Land Merchandising Corp
Claim Number: FA1705001733159
Complainant is The Cannon Foundation, Inc. ("Complainant"), represented by Tiffani D. Otey of Womble Carlyle Sandridge & Rice PLLC, North Carolina, U.S.A. Respondent is John Bonk / Land Merchandising Corp ("Respondent"), Tennessee, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thecannonfoundationinc.org>, registered with Network Solutions, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2017; the Forum received payment on May 24, 2017.
On May 25, 2017, Network Solutions, LLC confirmed by email to the Forum that the <thecannonfoundationinc.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@thecannonfoundationinc.org. Also on May 26, 2017, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant is a foundation that provides charitable grants to other non-profit organizations. Complainant has used the term THE CANNON FOUNDATION in connection with its charitable services continuously for more than 70 years, over which period it has provided more than $270 million in grants. Complainant asserts that THE CANNON FOUNDATION has acquired distinctiveness as an identifier of the source of Complainant's charitable services as a result of this longstanding continuous use, and that Complainant has thereby established common law rights in the mark.
Complainant states further that it was the registrant of the disputed domain name <thecannonfoundationinc.org> from 1999 to 2016. In 2013 Complainant developed a new website at <cannonfoundation.org> and thereafter caused the disputed domain name to redirect visitors to the new website. However, Complainant states that it lost control of the disputed domain name following the death of a staff member whose contact information had been associated with the domain name.
Respondent registered the disputed domain name <thecannonfoundationinc.org> on or about September 13, 2016. The domain name resolves to a website titled "The Cannon Foundation," which contains what appear to be pay-per-click links to third-party websites relating to charitable grants and grant writing. Complainant asserts further that Respondent has a history of registering domain names incorporating the business names and trademarks of others under similar circumstances, and has lost several previous disputes under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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."
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 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(f), 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 (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.").
Complainant claims common law rights in THE CANNON FOUNDATION based upon its longstanding use of that term in connection with charitable services. The Panel finds that Complainant has provided a sufficient basis for its claim of common law rights in the claimed mark. See, e.g., Russian American Foundation, Inc. v. William Bianco, FA 1471790 (Forum Jan. 4, 2013) (finding common law trademark rights in RUSSIAN AMERICAN FOUNDATION based upon 15 years of use); The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, D2006-0516 (WIPO Aug. 14, 2006) (finding common law rights in HIGHLAND STREET FOUNDATION and related marks based upon 17 years of use for a family foundation, with total grants of $47 million).
The disputed domain name <thecannonfoundationinc.org> corresponds to Complainant's mark, omitting the spaces and adding the generic corporate descriptor "Inc." and the ".org" top-level domain. These alterations do not significantly diminish the similarity between the domain name and Complainant's mark for purposes of paragraph 4(a)(i) of the Policy. See, e.g., The Capital Group Companies, Inc. v. Richard Martinez, FA 1604417 (Forum Mar. 24, 2015) (finding <thecapitalgroupinc.com> confusingly similar to CAPITAL GROUP); The Highland Street Connection dba Highland Street Foundation v. Chris McGrath, supra (finding <highlandstreetfoundation.org> identical or confusingly similar to HIGHLAND STREET FOUNDATION).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
Under the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name corresponds to Complainant's name and mark, and its sole apparent use has been in connection with a website comprised of sponsored advertising links related to Complainant's industry. Such use does not give rise to rights or legitimate interests. See, e.g., State Farm Mutual Automobile Insurance Co. v. Tulip Co. / Tulip Trading Co., FA 1681653 (Forum Aug. 2, 2016) (finding lack of rights or legitimate interests in similar circumstances); Norgren, Inc. v. Intdomain / Apexed, FA 1640075 (Forum Oct. 28, 2015) (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using a domain name that corresponds to Complainant's mark for the sole apparent purpose of profiting from the display of pay-per-click links related to Complainant's industry. Absent any indications to the contrary, the Panel infers that Respondent acquired the domain name with such use in mind. Furthermore, Respondent appears to be an experienced domain name registrant and investor. See Rentfaster.ca Inc. & Darren Paddock v. Land Merchandising Corp, FA 1430628 (Forum Apr. 16, 2012) ("Respondent's business is purchasing, selling, and monetizing domain names. . . . Respondent argues that prior UDRP cases do not demonstrate a pattern of bad faith registration and use because Respondent failed to respond due to economic reasons."); see also Bed Bath & Beyond Procurement Co. Inc. (n/k/a Liberty Procurement Co. Inc.) v. John Bonk / Land Merchandising Corp, FA 1567950 (Forum Aug. 5, 2014) (referring to Respondent's "pattern of cybersquatting behavior"). The Panel therefore considers it reasonable to infer that Respondent was aware, at the time he registered or acquired the disputed domain name, of Complainant's prior registration and use of the domain name. See, e.g., Memorial Sloan-Kettering Cancer Center v. — a/k/a John Bonk, FA 1323580 (Forum June 24, 2010) (inferring bad faith in similar circumstances).
The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thecannonfoundationinc.org> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 22, 2017
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