U.S. Green Building Council v. Christopher McCann
Claim Number: FA1810001811878
Complainant is U.S. Green Building Council (“Complainant”), represented by Amanda L. DeFord of McGuireWoods LLP, Virginia, USA. Respondent is Christopher McCann (“Respondent”), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usgbcri.org>, registered with DropCatch.com 873 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2018; the Forum received payment on October 15, 2018.
On October 18, 2018, DropCatch.com 873 LLC confirmed by e-mail to the Forum that the <usgbcri.org> domain name is registered with DropCatch.com 873 LLC and that Respondent is the current registrant of the name. DropCatch.com 873 LLC has verified that Respondent is bound by the DropCatch.com 873 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 October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@usgbcri.org. Also on October 24, 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 November 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 famous membership-based, nonprofit organization that promotes sustainable, green building through its famous LEED certification program all around the world. Founded in 1993, its membership base has grown to over 12,000 corporate members and nearly 12,000 community members worldwide. Complainant has rights in the USGBC mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,763,994, registered Sep. 16, 2003). Respondent’s <usgbcri.org> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the geographically descriptive term “ri” and the “.org” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <usgbcri.org> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name in attempts to pass off as Complainant to confuse users into believing Respondent is Complainant or otherwise affiliated with Complainant.
Respondent registered and uses the <usgbcri.org> domain name in bad faith. Respondent uses the domain name to host webpages containing a series of articles and blog entries authored by Respondent and to display content designed to mislead consumers into believing that Respondent and the content of its website are affiliated with the official USGBC Rhode Island chapter. Further, as the USGBC mark has no meaning other than as an identifier of USGBC and its goods and services, there can be little doubt that Respondent registered the domain name with Complainant’s USGBC mark squarely in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is U.S. Green Building Council, of Washington, DC, USA. Complainant is the owner of domestic and international registrations for the mark USGBC, and variations thereof, comprising the family of USGBC marks. Complainant has used the USGBC mark continuously since at least as early as 2003, in connection with its provision of certification programs promoting sustainable green building throughout the world. Complainant also maintains a significant internet presence as the owner of more than 80 domain name registrations incorporating the USGBC mark.
Respondent is Christopher McCann, of Minneapolis, Minnesota, USA. Respondent’s registrar’s address is listed as Denver, Colorado, USA. The Panel notes that Respondent registered the <usgbcri.org> domain name on or about November 10, 2016.
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 rights in the USGBC mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,763,994, registered Sep. 16, 2003). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel here finds that Complainant has established rights in the USGBC mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <usgbcri.org> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the geographically descriptive term “ri” and the “.org” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). The Panel here finds that the <usgbcri.org> domain name is confusingly similar to the USGBC mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the <usgbcri.org> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See 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). The WHOIS identifies “Christopher McMann” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the USGBC mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. The Panel here finds that Respondent is not commonly known by the <usgbcri.org> domain name under Policy ¶ 4(c)(ii).
Next, Complainant claims Respondent uses the domain name in attempts to pass off as Complainant to confuse users into believing Respondent is Complainant or otherwise affiliated with Complainant. Using a confusingly similar domain name to pass off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving webpage, which displays the title “US GBCRI” and contains an article on moving, along with links to “GREEN BUILDING NEWS.” The Panel here finds that Respondent attempts to pass off as Complainant, failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant claims that Respondent uses the domain name to host webpages containing a series of articles and blog entries authored by Respondent and to display content designed to mislead consumers into believing that Respondent and the content of its website are affiliated with the official USGBC Rhode Island chapter. Using a disputed domain name that trades upon the goodwill of a complainant, likely for commercial gain, can evince bad faith under Policy ¶ 4(b)(iv). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). As previously noted, Complainant provides a screenshot of the resolving webpage, which displays the title “US GBCRI” and contains an article on moving, along with links to “GREEN BUILDING NEWS.” The Panel here finds that Respondent attempted to trade off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <usgbcri.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 28, 2018
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