Melinda Gates v. Bruce B
Claim Number: FA1706001738284
Complainant is Melinda Gates (“Complainant”), represented by David J. Byer of K&L Gates LLP, Massachusetts, USA. Respondent is Bruce B (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <melindagates.org>, registered with GoDaddy.com, LLC.
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 J. Franklin, Jonathan Agmon, and Paul M. DeCicco (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on June 30, 2017; the Forum received payment on June 30, 2017.
On July 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <melindagates.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on July 11, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 August 7, 2017, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed
Sandra J. Franklin as Panelist;
Jonathan Agmon as Panelist; and
Paul M. DeCicco as Panelist and Chair.
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.
Complainant contends as follows:
Complainant has common law rights in the MELINDA GATES mark as the mark is associated with Complainant—a well-known business person, philanthropist, and advocate.
Respondent’s <melindagates.org> is identical to the mark as it merely eliminates the spacing between words and adds the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in or to <melindagates.org>. Respondent is not commonly known by <melindagates.org> and Complainant has given no authorization, license, or permission to Respondent to use the MELINDA GATES mark. Furthermore, Respondent’s <melindagates.org> resolves to a parked directory site featuring links to unrelated third-party websites, which constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent registered and used <melindagates.org> in bad faith. Respondent presumably gains commercial profit from parking the domain name for free using GoDaddy’s parking service—indicating bad faith under Policy ¶ 4(b)(iv). Respondent had actual or constructive knowledge of Complainant due to the fame and notoriety associated with the MELINDA GATES mark.
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the MELINDA GATES mark.
Respondent acquired the at-issue domain name after Complainant acquired rights in MELINDA GATES.
Respondent’s <melindagates.org> addresses a parking page displaying links to unrelated third parties.
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.”).
The disputed domain name is identical to a trademark in which Complainant has rights.
There is no requirement under the Policy that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (“Complainant does not claim to own a trademark registered with a governmental authority. However, Policy ¶ 4(a)(i) does not require such registration if a complainant can demonstrate having common law rights.”). In the instant case, Complainant proffers evidence of the MELINDA GATES mark’s having acquired secondary meaning through continuous use of such mark over a period of years dating back to 1999. As set out in Complainant’s sworn declaration, the MELINDA GATES mark was, and is, used in support of Complainant’s various and extensive philanthropic and humanitarian causes. In light of the foregoing, the Panel finds that Complainant has acquired common law trademark rights in the MELINDA GATES mark that predate Respondent’s acquisition of the <melindagates.org> domain name. See David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA 1734414 (Forum July 4, 2017) (“Complainant has adequately pled its rights and interests in and the common law mark DAVID DUCHOVNY dating to on or before 1990, prior to Respondent’s registration of the dispute domain name, <davidduchovny.com>.”); see also Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Finding “Complainant has provided evidence of secondary meaning . . . displaying Complainant’s business registration with the state of Tennessee, showing use of the 745-CASH mark since July 2005 . . . showing the creation date as March 30, 2004 of Complainant’s own website <745cash.com>. Complainant also urges that its business phone number is 745-CASH.).
The disputed domain name contains Complainant’s entire MELINDA GATES trademark, less its space, followed by a necessary top-level domain name, here “.org” The negligible differences between Respondent’s domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purpose of the Policy. Therefore, the Panel finds Respondent’s <melindagates.org> domain name to be identical to Complainant’s MELINDA GATES trademark pursuant to Policy ¶ 4(a)(i). See International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy.”).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to a trademark in which the Complainant has rights.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
The Panel finds that Complainant has established a prima facie case in this regard, due to the evidence presented by Complainant and the other facts as further discussed below.
Respondent lacks both rights and legitimate interests in respect of the disputed domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the disputed domain name.
The WHOIS information for the disputed domain name lists “Bruce B” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <melindagates.org> domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name 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 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).
Respondent’s <melindagates.org> domain name points to a parking page offering links to unrelated third parties. The domain name’s use in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of such domain name under Policy ¶ 4(c)(iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”); see also State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”).
Given the foregoing, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the disputed domain name.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant must show that Respondent registered and is using the disputed domain names in bad faith (Policy, paragraph 4(a)(iii)). As discussed below, Policy ¶4(b) when specific bad faith circumstances as well as other circumstance are present the Panel is compelled to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Complainant has submitted ample evidence, which shows that Respondent registered the disputed domain name long after Complainant has become well-known. According to the evidence filed by Complainant, the MELINDA GATES mark acquired secondary meaning through continuous use since at least 1999. It is suggestive in these particular circumstances that Respondent acquired <melindagates.org> knowing that Complainant had trademark rights in the MELINDA GATES trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark. Respondent’s selection of the disputed domain name, which incorporates the name of Complainant in its entirety, in which Complainant has trademark rights, cannot be a coincidence. There is no other conceivable reason for Respondent’s registration and use of the disputed domain name other than one in bad faith. It is thus clear that Respondent intentionally acquired (and Respondent’s predecessor in interest registered) the disputed domain name to improperly exploit Complainant’s trademark, rather than for some benign reason. Respondent’s prior knowledge indicates that Respondent registered and used the <melindagates.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Moreover, Respondent presumably benefits from links displayed on <melindagates.org> parking page. These circumstances demonstrate bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the disputed domain name was registered and is used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <melindagates.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin as Panelist;
Jonathan Agmon as Panelist; and
Paul M. DeCicco as Panelist (Chair)
Dated: August 17, 2017
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