The Annie E. Casey Foundation v. Charles Rollins / Flashpoint
Claim Number: FA2005001897038
Complainant is The Annie E. Casey Foundation (“Complainant”), represented by W. Drew Kastner of Schnader Harrison Segal & Lewis, LLP, US. Respondent is Charles Rollins / Flashpoint (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <allkidzcount.com>, registered with GoDaddy.com, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2020; the Forum received payment on May 19, 2020.
On May 20, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <allkidzcount.com> 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 (“Policy”).
On May 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 2020 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@allkidzcount.com. Also on May 21, 2020, 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.
A Response was received which the Forum found to be non-compliant with paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”).
On June 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
On June 9, 2020, a hard copy of the Response was received by the Forum, subsequent to which the Response was electronically received after the twenty (20) day deadline. The Forum did not consider the Response to be in compliance with paragraph 5 of the Rules which states that:
5. The Response
(a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.
(b) The response shall be submitted in electronic form...
It followed that an electronic copy of the Response had not been transmitted to Complainant in a timely manner in accordance with the Rules.
Nonetheless, the Panel has a residual discretion to accept and consider the Response.[i] In this instance the Panel has read and taken the Response into account in reaching the Decision. That said, the Response is not well prepared and the Panel has been required to make certain findings based on reasonable inference. This is detailed in the Discussion below.
A. Complainant
Complainant asserts trademark rights in KIDS COUNT. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no right or legitimate interests in the disputed domain name; rather it has used a confusingly similar name in a manner directly competitive with Complainant’s interests.
Complainant further alleges that Respondent registered and used the disputed domain name in bad faith. In particular, Complainant claims to have used the trademark before registration of the disputed domain name and submits that the website resolving from the domain name shows that Respondent was aware of and sought to take advantage of Complainant’s trademark.
B. Respondent
Respondent asserts that the disputed domain name is not confusingly similar to the trademark. It submits that inclusion of the word “all” creates a sufficient difference to avoid confusing similarity. It submits that many other groups involved in children’s welfare use the words “kids” and “count.”
Respondent claims that it has lobbied on behalf of children’s welfare in the State of Alaska since 1996, and so has rights to and a legitimate interest in the disputed domain name. It follows that it could not have registered the domain name in bad faith.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a charity foundation which uses the trademark, KIDS COUNT;
2. the trademark is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 3,884,890, registered December 7, 2010;
3. the disputed domain name was registered on May 6, 2004;
4. the domain name resolves to a website concerned with a children’s welfare non-profit organization; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating its trademark.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii] Since Complainant evidences its registration of the trademark KIDS COUNT with the USPTO the Panel finds that it has shown trademark rights.
The disputed domain name is a trivial misspelling of the trademark to which is prefixed the adverb, “all”, and appended the non-distinctive gTLD, “.com”. The Panel finds that the disputed domain name is confusingly similar to the trademark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
For the reasons which follow no finding is required as to rights or legitimate interests.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
The Panel finds no evidence which would support a finding of registration and use in bad faith based on any of those four scenarios. Rather, the key question in this case is whether the domain name was registered in bad faith. If there was no bad faith registration, argument as to bad faith use becomes irrelevant.[iii]
Arbitrations under the Policy are offered not just by the Forum by the other providers, including the Arbitration and Mediation Center of the World Intellectual Property Office (“WIPO”). In common with the Forum, WIPO panels seek to ensure that the Policy operates in a fair and predictable manner and so, in its present third iteration, WIPO publishes its so-called WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Jurisprudential Overview 3.0”) which summarizes consensus panel views on a range of important substantive and procedural issues. Paragraph 3.8.1 of the WIPO Jurisprudential Overview 3.0 states:
“… where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent”,
Further, paragraph 3.8.2 of the WIPO Jurisprudential Overview 3.0 states:
“As an exception to the general proposition described above in 3.8.1, in certain limited circumstances where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalize on the complainant’s nascent (typically as yet unregistered) trademark rights, panels have been prepared to find that the respondent has acted in bad faith.
Such scenarios include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge (e.g., a former employee), (iii) further to significant media attention (e.g., in connection with a product launch or prominent event), or (iv) following the complainant’s filing of a trademark application.”
Having regard to those statements the Panel takes as its starting point the details of Complainant’s USPTO trademark registration. As noted above, registration was secured on December 7, 2010, more than six years after registration of the disputed domain name on May 6, 2004. Registration of the disputed domain name also significantly predates the filing date on which the USPTO application for trademark registration was made, being September 16, 2009.
The Panel notes that the USPTO trademark application was made on a “use in commerce” basis where the claimed date of first use of the trademark was December 31, 1989. In broad terms the USPTO examination process will require in support of a “use in commerce” basis for application that the applicant provides a specimen (example) showing how it actually uses its mark in commerce. The Panel elaborates that process for the reason that registration of Complainant’s trademark based on claimed use since the last day of 1989 is not proof of use since that date or proof of use of a common law trademark reputation at any point in time.
Complainant makes a number of unsubstantiated claims, as follows:
(i) “Complainant has been using the KIDS COUNT mark across all classes of its services since December 31, 1989.”
The Panel observes that the only basis for that claim is the date of first use in commerce, discussed. There is no evidence of actual use in 1989 or later.
(ii) “Complainant has used its KIDS COUNT mark in connection with its grant-making services in Alaska since 1995. … Complainant has continuously used its KIDS COUNT mark nationwide since December 1989, and in Alaska since 1995.”
These unsworn statements are not corroborated in any way. It follows that Complainant’s conclusory remarks that its “use of its KIDS COUNT mark significantly predates Respondent’s registration of the disputed domain” and that it is the “undisputed prior user of the KIDS COUNT mark, and its trademark rights are superior to those of junior users such as Respondent” are only supported by the (unexamined) date of claimed first use in commerce found in the USPTO registration.
There are difficulties, too, with the Response not least because Respondent at times attempts to distance itself from the use of the disputed domain name, but other times appears to argue some advantage based on that use. For example, the publicly available WhoIs information lists the registrant of the disputed domain name as the privacy service, Domains By Proxy, LLC. In consequence of these administrative proceedings the Registrar revealed the underlying domain name holder as “Charles Rollins”. The Response has been signed by Charles Rollins but at one point the Response reads:
“They say ROLLINS They must be talking about my mother and not me. … Elizabeth Rollins is my mother and President of All Kids Count. Charles Rollins is her son is the sole owner of ALLKIDZCOUNT.COM. The complainant has never said anything to me about the domain name before filing this. I am sole owner of the domain, I registered it. I paid for it. This is not about the non-profit; this is about a domain name. I cannot speak officially on the non-profit. My mother cannot speak on the domain.”
At other places in the Response the use on the resolving website is seemingly called in aid of an argument that Respondent has rights to or a legitimate interest in the domain name.
The Complaint treats Respondent’s mother as the relevant user of the domain name. It states, for example, that “[a]n internet search of the Respondent’s organization shows Elizabeth H. Rollins as the Director and President of Respondent” and pre-Complaint correspondence provided with the Complaint is between Complainant’s legal representative and Elizabeth Rollins in her capacity as a director of the non-profit corporation going by the registered name “ALL KIDS COUNT”.
That said, accompanying the Complaint is an extract from the Alaska Secretary of State website,[iv] showing a dissolved corporation by that name with directors listed as Respondent and Elizabeth Rollins. In the result, the Panel has treated the use of the domain name as use by or with the permission of Respondent.
However, as stated already, the Panel has identified the critical issue as being whether or not the disputed domain name was registered in bad faith. The broader factual background under consideration informs that decision. Whilst the Alaska Secretary of State website extract does not show the date of dissolution, it does show that the corporation was formed on April 25, 2001. So, although incorporation of ALL KIDS COUNT predates registration of the domain name by three years it nevertheless demonstrates Respondent’s engagement in a non-profit corporation using a quasi-identical name to the domain name. Further, albeit unsupported by evidence, Respondent submits that from 1996 onwards it has lobbied or testified on behalf of children in the foster care system in Alaska. Those efforts are frequently described as “the cause” and it is impossible on the evidence as presented and potentially 14 years later for the Panel to know whether those efforts were made using the name “All Kids Count” / “All Kidz Count”. It appears not since the final piece of noteworthy evidence is Respondent’s July 14, 2017 response to Complainant’s letter of demand wherein Respondent stated that “ ‘All Kids Count’ was organised in 1999” and described itself as “a small and somewhat insignificant group of volunteers [in Alaska] who support and assist children, ….”, going on to characterise the letter of demand as “unsettling” and expressing disbelief that Respondent’s activities had even come to Complainant’s notice.
The Panel has weighed the evidence before it carefully. Albeit that the trademark is registered with the USPTO and the Panel has found the disputed domain name to be confusingly similar to the trademark, the Panel observes that the USPTO registration carries a disclaimer of monopoly in the word “kids”, per se, indicative that at one level the term is commonplace and may be used by other traders. It is not inconceivable that two like businesses in this field may have independently coined similar marks of this kind.
Complainant must satisfy all elements of the Policy to a particular standard – the balance of probabilities. Thus, Complainant must show, inter alia, that it was more likely than not that Respondent registered the domain name in bad faith. The Panel finds that it has failed to do so. Complainant has not met the evidentiary onus to prove that Respondent targeted Complainant or its trademark at the time of registration.[v]
Whilst these findings stand on their own, the Panel notes that the Complaint was made 16 years after registration of the domain name. Although Respondent did not raise an argument of laches, a “defense” which has received mixed reception under the Policy, panelists have remarked on many occasions that the passage of time will likely have an impact on how evidence might be assessed.
The Panel finds no evidence of registration in bad faith and that conclusion is determinative of the matter. The Complainant has not established the third element of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <allkidzcount.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: June 30, 2020
[i] See, for example, Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”; see contra, Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) electing to not accept and not consider the response as the response was not in compliance with Rule 5).
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”)
[iv] See https://www.commerce.alaska.gov/cbp/main/Search/EntityDetail/73036D 1/2
[v] See, for example, Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”)
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