YMCA of the USA v. Gordon Herrera
Claim Number: FA2005001897355
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymcasomersetvalley.org>, registered with Network Solutions, 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 May 21, 2020; the Forum received payment on May 21, 2020.
On June 3, 2020, Network Solutions, LLC confirmed by e-mail to the Forum that the <ymcasomersetvalley.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 1, 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@ymcasomersetvalley.org. Also, on June 11, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2020, 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 one of America’s leading charitable organizations, having worked to strengthen communities through youth development, healthy living, and social responsibility throughout the country for over 160 years. Complainant has rights in the YMCA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 668,795, registered Oct. 21, 1958). Respondent’s <ymcasomersetvalley.org> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the geographic indicator “Somerset Valley.”
Respondents has no rights or legitimate interests in the <ymcasomersetvalley.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is diverting Internet users seeking Complainant to other third party hyperlinks.
Respondent registered and used the <ymcasomersetvalley.org> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by offering unrelated hyperlinks. Finally, Respondent had actual or constructive knowledge of Complainant’s rights in the YMCA mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is YMCA of the USA (“Complainant”), of Chicago, IL, USA. Complainant is the owner of the domestic registration for the mark YMCA and numerous variations thereof consisting of the family of YMCA marks. Complainant has continuously used its mark since at least as early as 1958 in connection with its provision of various products and services to youth, adults, and families in its promotion of greater community awareness and social welfare. Complainant is also the owner of numerous domain names that incorporate its mark at various gTLDs and including many with geographical indicators attached to the mark.
Respondent is Gordon Herrera (“Respondent”), whose address is listed as Asheville, NC, USA. Respondent’s registrar’s address is listed as Jacksonville, FL, USA. The Panel notes that the <ymcasomersetvalley.org> domain name was registered on or about February 24, 2000.
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 claims rights in the YMCA mark through its registration of the mark with the USPTO (e.g., Reg. No. 668,795, registered Oct. 21, 1958). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel here finds that the Complainant has rights in the YMCA mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <ymcasomersetvalley.org> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the geographic indicator “Somerset Valley.” The Panel also notes the “.org” generic top-level domain (“gTLD”) is also added. Adding a geographic term and a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel here finds Respondent’s <ymcasomersetvalley.org> domain name is confusingly similar to Complainant’s 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 notes 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), 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) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <ymcasomersetvalley.org> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here the WHOIS of record identifies the Respondent as “Gordon Herrera” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel here finds that Respondent has no rights or legitimate interests in the <ymcasomersetvalley.org> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <ymcasomersetvalley.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is diverting Internet users seeking Complainant to other third-party hyperlinks. Using a disputed domain name to divert Internet users seeking a complainant’s goods or service to a site offering unrelated hyperlinks may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Here, Complainant provides a screenshot of <ymcasomersetvalley.org> domain name’s resolving webpage, which provides articles with imbedded links to unrelated health products. The Panel here finds Respondent fails to use the <ymcasomersetvalley.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues Respondent registered and used the <ymcasomersetvalley.org> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by offering unrelated hyperlinks. Registering a disputed domain name so to attract Internet users for commercial gain by offering unrelated hyperlinks may be evidence of bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). The Panel again notes that Complainant provides a screenshot of <ymcasomersetvalley.org> domain name’s resolving webpage, which provides articles with imbedded links to unrelated health products. The Panel here finds Respondent registered and used the <ymcasomersetvalley.org> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the YMCA mark at the time of registering the <ymcasomersetvalley.org> domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”), see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support its assertion, Complainant points to its long history and trademark registrations. The Panel here finds that Respondent did have actual knowledge of Complainant’s right in its mark, which further supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
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 <ymcasomersetvalley.org> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 20, 2020
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