Catholic Charities USA v. Josh Ward
Claim Number: FA1906001847985
Complainant is Catholic Charities USA (“Complainant”), represented by Thorne Maginnis of Arent Fox LLP, Washington DC, USA. Respondent is Josh Ward (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catholic-charities-foundation.com> (“Domain Name”), registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 14, 2019; the Forum received payment on June 14, 2019.
On June 15, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <catholic-charities-foundation.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 June 21, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2019 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@catholic-charities-foundation.com. Also on June 21, 2019, 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 June 15, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 well-known organization whose mission is to provide services to people in need and to advocate for social justice in connection with a wide range of issues. Complainant has rights in the CATHOLIC CHARITIES USA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 4,181,985, registered July 31, 2012). Respondent’s <catholic-charities-foundation.com> domain name is identical or confusingly similar to Complainant’s CATHOLIC CHARITIES USA mark as it incorporates the dominant portion of the mark while adding the term “foundation” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use the CATHOLIC CHARITIES USA mark.
Respondent registered and uses the <catholic-charities-foundation.com> domain name in bad faith. Respondent uses the Domain Name to pass off as Complainant, presumably for financial gain. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the mark given: (1) the longstanding fame and notoriety of the mark; (2) Respondent’s inclusion of the dominant portion of Complainant’s mark in the Domain Name; and (3) Respondent’s use of the Domain Name to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CATHOLIC CHARITIES USA mark. The Domain Name is confusingly similar to Complainant’s CATHOLIC CHARITIES USA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the CATHOLIC CHARITIES USA mark based upon registration of the mark with the USPTO (e.g. Reg. No. 4,181,985, registered July 31, 2012). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Panel finds that the <catholic-charities-foundation.com> domain name is confusingly similar to the CATHOLIC CHARITIES USA mark as it incorporates the dominant portion of the mark (separated by hyphens) while adding the term “foundation” and the “.com” gTLD. These changes are insufficient to distinguish the Domain Name from the CATHOLIC CHARITIES USA mark under Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); 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 the domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CATHOLIC CHARITIES USA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Josh Ward” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive however prior to the commencement of proceedings resolved to a website under the name “Catholic Charities Foundation”. There is no evidence before the Panel as to the existence of such a foundation and/or its connection to the Catholic Church. The Panel also notes that the website at the Domain Name had a similar look and feel to that operated by the Complainant. In the absence of any evidence from Respondent as to the legitimacy (or even the existence) of the “Catholic Charities Foundation” (or an active website for the Panel to review), the Panel finds that Complainant has established, on the balance of probabilities, that Respondent has used the Domain Name to divert internet users to a website that purports to offer competing charitable services but does not appear to be connected to a legitimate entity. Using a domain name to divert internet users to a competing website is not indicative of a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) and (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, November 13, 2018, Respondent had actual knowledge of Complainant’s CATHOLIC CHARITIES USA mark. Given the similarities in the look and feel of the respective websites and the reputation of Complainant as a Catholic charitable body, it highly unlikely that Respondent registered the Domain Name other than in awareness of Complainant’s CATHOLIC CHARITIES USA mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s CATHOLIC CHARITIES USA mark for commercial gain by using the confusingly similar Domain Name to resolve to a website purporting to provide competing charitable services to that offered by Complainant. Use of a confusingly similar domain name to redirect Internet users to a website containing competing services for commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme): see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel notes that in the absence of supporting documentation, it does not make a finding with respect to Complainant’s allegations that Respondent has engaged in fraudulent conduct with respect to the acquisition of personal or financial information.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catholic-charities-foundation.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 17, 2019
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