JustLeadershipUSA, Inc. v. PebbleBridge Tech / PebbleBridge Technologies
Claim Number: FA1912001873671
Complainant is JustLeadershipUSA, Inc. (“Complainant”), represented by Russell Payne, United States. Respondent is PebbleBridge Tech / PebbleBridge Technologies (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <closerikers.org>, registered with DropCatch.com 500 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 3, 2019, naming TSANJ as Respondent; the Forum received payment on December 3, 2019.
On December 4, 2019, DropCatch.com 500 LLC confirmed by e-mail to the Forum that the <closerikers.org> domain name is registered with DropCatch.com 500 LLC and that Respondent, PebbleBridge Tech / PebbleBridge Technologies, is the current registrant of the name. DropCatch.com 500 LLC has verified that Respondent is bound by the DropCatch.com 500 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 December 5, 2019 the Forum invited Complainant to amend the Complaint and on December 7, 2019 Complainant submitted an amended Complaint, naming PebbleBridge Tech / PebbleBridge Technologies as Respondent.
On December 9, 2019, the Forum served the Complaint, as amended, and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@closerikers.org. Also on December 9, 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.
On December 10, 2019 the Respondent sent an email to the Forum. No formal Response was submitted within the deadline. Having received no formal Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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 formal 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 formal Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a nonprofit organization dedicated to cutting the United States’ correctional population in half while reducing crime. In 2016 Complainant launched #CLOSErikers, a campaign to close the prison at Rikers Island, New York and registered the <closerikers.org> domain name to host and support it. The campaign gained notoriety in several media outlets and publications.
On June 20, 2015, the <closerikers.org> domain name was created and, according to the Complaint, “registered personally to Respondent [sic], then CEO of Complainant”. On or before April 14, 2016, Complainant launched its website at the domain name, which it used continuously and exclusively until September 3, 2019. Complainant then lost control of the domain name and on or about October 4, 2019, Respondent gained control of the domain name.
Complainant has common law rights in the #CLOSErikers and CLOSERIKERS marks dating back to at least April 14, 2016 through its consistent and continuous use of the <closerikers.org> domain name and promotion of the mark and associated campaign through social media, including the @CLOSErikers handle on Twitter.
The <closerikers.org> domain name is identical to Complainant’s #CLOSErikers and CLOSERIKERS marks.
Respondent does not have rights or legitimate interests in the <closerikers.org> domain name. Respondent is not commonly known by the domain name. The website resolving from the <closerikers.org> domain name indicates Respondent is known as "TSANJ Supplements". Respondent currently makes use of the domain name to divert Internet users to an unrelated commercial "review" website at <tsanj.org/supplements> which provides "reviews" for various supplements, with purchase links from which Respondent presumably gains commercially through affiliate benefits. Such use constitutes neither a bona fide commercial offering, nor a legitimate noncommercial or fair use.
Respondent is using the <closerikers.org> domain name in bad faith per Policy ¶¶ 4(b)(ii) and (iii) to redirect Internet users from Complainant to Respondent and harm Complainant's image and business. Such redirection for commercial gain is a textbook example of bad faith under the Policy.
Respondent also registered the <closerikers.org> domain name in bad faith with full knowledge of Complainant and the CLOSERIKERS mark at the time Respondent registered the domain name. Rikers Island is an infamous prison which has been in the news, largely as the result of Complainant's activism. "Rikers" is not a dictionary term, and the combination of the words "close" and "Rikers" does not have any logical meaning beyond that which is represented by Complainant's campaign. Furthermore, Respondent's use of the domain name to resolve to a webpage which indicates that the "Closerikers.org Team will work on Tsanj.org Reviews & Guides" indicates Respondent had actual knowledge of a Closerikers.org team, and thus was aware of Complainant and its rights. It strains credibility that Respondent chose the <closerikers.org> domain name for any reason other than to capitalize on the CLOSERIKERS mark and the goodwill that Complainant has built around it. It is therefore clear Respondent had actual knowledge of the mark and Complainant's rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 formal 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”).
The evidence of longstanding use and public recognition provided by Complainant satisfies the Panel that Complainant has common law rights in the #CLOSErikers and CLOSERIKERS marks. The domain name <closerikers.org> is identical to the CLOSERIKERS mark and confusingly similar to the #CLOSErikers mark. The addition of the “.org” gTLD is insufficient to distinguish a mark for purposes of policy ¶4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017).
Complainant has established this element.
Even assuming that the reference in the Complaint to the domain name being “created and registered personally to Respondent, then CEO of Complainant” in 2015 is correct and not, as is likely, a mistake, that registration expired in September 2019. For the purposes of this proceeding, the relevant registration occurred when Respondent registered the domain name on October 4, 2019, since when it has been used to resolve to a website at “www.tsanj.org” promoting health products, headed TSANJ and stating:
“CloseRikers.org Acquired by TSANJ Supplements
CloseRikers.org Acquired by TSANJ Supplement & Reviews Portal.
Now Closerikers.org Team will work on Tsanj.org Reviews & Guides.
Tsanj primarily working on Mens Supplements & Health Products.
Closerikers.org has assigned to review blood sugar supplements & Products.”
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent 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) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011).
The Panel finds Complainant’s assertions suffice to establish a prima facie case of absence of rights or legitimate interests in the domain name on the part of Respondent. There is no evidence to support a finding under Policy ¶¶ 4(c)(i) or (ii). As to Policy ¶ 4(c)(iii), given that Rikers is the name of a notorious prison, the Panel cannot envisage any plausible use of the words “close Rikers” in connection with a website promoting supplements and health products, other than misleadingly to divert Internet users seeking Complainant’s website to Respondent’s website for commercial gain. Hence Respondent’s use of the domain name does not come within the circumstances of Policy ¶ 4(c)(iii).
Complainant has established this element.
The reference on Respondent’s website to “Closerikers.org Team” indicates strongly that Respondent was aware of Complainant’s mark and of its campaign to close Rikers Island prison when registering the domain name. The statement “CloseRikers.org Acquired by TSANJ Supplements” indicates that Respondent was aware that the domain name had previously been registered to someone else. Respondent would most likely have searched the Wayback Machine before purchasing it, to see what use had been made of the domain name by the previous registrant. And since the domain name does not include the capital letter “R”, the use by Respondent of the expression “CloseRikers.org” is a further indication that Respondent was well aware of Complainant’s mark and of Complainant’s prior use of the domain name when Respondent registered it.
Accordingly, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the affiliation or endorsement of Respondent’s website and of products on its website. This is evidence of both bad faith registration and bad faith use.
Complainant has established this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <closerikers.org> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 14, 2020
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