The International Hyperbarics Association v. Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 1282298
Claim Number: FA1801001769993
Complainant is The International Hyperbarics Association (“Complainant”), represented by Sunil A. Brahmbhatt of Law Office of Sunil A. Brahmbhatt, PLC., California, USA. Respondent is Direct Privacy / Domain Name Proxy Service, Inc Privacy ID# 1282298 (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ihausa.org>, registered with DNC Holdings, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on January 31, 2018; the Forum received payment on January 31, 2018.
On February 2, 2018, DNC Holdings, Inc. confirmed by e-mail to the Forum that the <ihausa.org> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. 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 February 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2018 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 postmaster@ihausa.org. Also on February 8, 2018, 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 March 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A, Kuechenmeister 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 non-profit unincorporated association whose goods and services include education relating to the benefits of portable hyperbaric chambers. Complainant has been in operation since April 2002, operating an educational and charitable business focusing on the needs of the hyperbaric community. Complainant has rights in the IHA mark, IHA being the acronym for Complainant’s name, through its continuous use of the mark in commerce since 2002. Complainant has registered its business with the Secretary of State of the State of California and has obtained a 501(c)(3) designation from the U. S. Treasury. Complainant has built a reputation and consumer base through its use of the mark since 2002. Complainant was the original registrant of the <ihausa.org> domain name (the “Domain Name”), which it acquired in April 2002 and used for its business operations since then until some unstated time, when it discovered that the ownership of the Domain Name, without Complainant’s knowledge or consent, had been changed to an unknown entity other than Complainant. The registrar has refused to provide any information as to the identity of the current registrant. The Domain Name is identical or confusingly similar to Complainant’s mark in that it incorporates the mark entirely, adding the term “usa” and the generic top-level domain (“gTLD”) “.org” to it.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by that name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its IHA mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant is the original registrant of the Domain Name at issue, and Respondent has failed to develop it in any way.
Respondent registered and uses the Domain Name in bad faith. Complainant used to own and operate the Domain Name for its own legitimate business, and Respondent managed in some way unknown to Complainant to change its registration from Complainant to Respondent. Respondent makes no use of the Domain Name on its own account, as the web site resolving from it continues to be the same as it was before the registration in Respondent’s name occurred. Respondent clearly had knowledge of Complainant’s rights when it registered the Domain Name in its name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 will decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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. 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 Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant does not hold a trademark registration for its IHA mark, but Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant claims rights in the IHA mark through its continuous use of the mark since 2002. Complainant registered its business with the Secretary of State of the State of California in 2001 (See, Complaint Exhibit 2). State registrations can confer rights in a mark (MadisonFlatFeeHomes.Com. LLC v. Stuart Meland, FA 1724843 (Forum May 10, 2017) (“Registration of a mark with a state authority can sufficiently evince rights in a mark.”), but Complainant’s Secretary of State registration refers only to its full name, THE INTERNATIONAL HYPERBARICS ASSOCIATION, and while its mark is an acronym for Complainant’s full name, the state registration contains no reference to the IHA mark itself. The WHOIS information for the Domain Name submitted as Exhibit 1 to the Complaint states that the Domain Name was created in July 2002. While it does not demonstrate that Complainant is the person who registered it at that time, it does tend to corroborate Complainant’s statement that it registered the Domain Name at that time. A screenshot of Complainant’s web site contains numerous references to Complainant as IHA and the copyright reference “© 2002-2016” at the bottom of the page, which also tends to corroborate its claim that it has built a reputation and consumer base through its use of the mark since 2002. See, Complaint Exhibit 5. Complainant also submitted a screenshot of the Google search page for the term “ihausa” showing several references to Complainant and its operations. See, Complaint Exhibit 6. Complainant did not, however, submit any evidence showing Complainant’s promotion of itself under the IHA mark over the 16 or 17 years since the Domain Name was first registered. The screenshots of Complainant’s web site and the Google search page are not dated, and Complainant submitted no archived screenshots of its web site showing its content at various times over the past years. Nor did it submit any independent documentary evidence that it is the person who originally registered the Domain Name in 2002. The evidence of common law rights in the IHA mark is very thin. Were Complainant not a non-profit organization, the Panel would be inclined to find that it has not demonstrated its rights in that mark for the purposes of Policy ¶ 4(a)(i). The Panel also understands, however, that as a non-profit organization, Complainant probably has a very limited advertising and promotions budget, if indeed it has any funds available for those purposes. Based primarily on the fact that IHA is an obvious acronym for Complainant’s full name, the presence of “IHA” as referring to Complainant in the web site resolving from the Domain Name, and the fact that the Google search page responded as it did to the inquiry about “ihausa,” the Panel finds that Complainant has demonstrated sufficient rights in the IHA mark for the purposes of Policy ¶ 4(a)(i).
The Domain Name is confusingly similar to Complainant’s IHA mark as it incorporates that mark in its entirety, only adding the term “usa” and the gTLD “.org.” These types of changes have routinely been held not to distinguish a domain name from a complainant’s mark for the purposes of Policy ¶4(a)(i). Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”), Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the IHA mark, in which Complainant has rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not authorized Respondent to use its IHA mark, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web site is exactly the same as it was before the change in registration. These allegations are supported by competent evidence. The WHOIS identifies “Direct Privacy/Domain Name Proxy Service, Inc., Privacy ID# 1282298” as the registrant of the Domain Name. See, Complaint Exhibit 1. In the absence of facts indicating otherwise, this is reliable evidence that Respondent is not known by the Domain Name. Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Complainant states that it has never authorized Respondent to use its IHA mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Name resolves to a web site which features a description of Complainant and its services and offers explanation about hyperbaric treatment. The contact information given on the web site is that of Complainant. See, Complaint Exhibit 5. There is no indication of any impersonation here—this site appears in all respects to be the web site of Complainant. It follows, then, that Respondent is making no use of the Domain Name on its own account. Merely holding a confusingly similar domain name without making an active use of it cannot and does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)”). Respondent is not currently using the Domain Name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
As demonstrated above in connection with the rights and legitimate interests analysis, Respondent does not use the Domain Name for any purpose whatever. Although the web site resolving from the Domain Name is not inactive, it is for all intents and purposes the web site of Complainant, and there is no apparent use thereof being made by or on behalf of Respondent. Registering and holding a confusingly similar domain name without making any use thereof is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Further, Complainant alleges that it owned the Domain Name until Respondent registered it in its name, at a time unknown to Complainant. Complainant submitted no direct evidence in support of that statement, but as discussed above, the screenshots of the web site resolving from the Domain Name (Complaint Exhibit 5) and the Google search page (Complaint Exhibit 6) are circumstantial evidence that Complainant’s claims in this regard are accurate. Registration of a domain name previously owned by a complainant is evidence of bad faith on the part of respondent. John Dilks v. PRIVACY ADMINISTRATOR / ANONYMIZE, INC., FA1506001623023 (Forum July 10, 2015) (Where the complainant was the former owner of the domain name, this raises a rebuttable presumption of bad faith registration). The Panel finds that Respondent obtained the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Finally, from the fact that Respondent registered an existing domain name previously owned by another entity, the Panel concludes that Respondent had actual knowledge of Complainant's rights in that name prior to registering it. Registering a confusingly similar domain name with actual knowledge of a complainant's rights is evidence of bad faith for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ihausa> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: March 7, 2018
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