American Lebanese Syrian Associated Charities, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2211002019851
Complainant is American Lebanese Syrian Associated Charities, Inc., (“Complainant”), United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gofundmestjude.com> (the “disputed domain name”), registered with GoDaddy.com, LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on November 10, 2022; Forum received payment on November 10, 2022.
On November 11, 2022, the Registrar confirmed by e-mail to Forum that the <gofundmestjude.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. The Registrar 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 (the “Policy”).
On November 16, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2022 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@gofundmestjude.com. Also on November 16, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 12, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the fundraising and awareness organization for St. Jude Children’s Research Hospital (“St. Jude”). Founded in 1962, St. Jude is a pediatric treatment and research facility focused on children’s catastrophic diseases, particularly leukemia and other cancers.
Complainant owns a trademark registration for the ST. JUDE word mark in class 36 for charitable fund-raising services through the United States Patent and Trademark Office (“USPTO”) (United States Registration No. 2,861,618). Complainant has been using the ST. JUDE trademark in connection with charitable fundraising services in the United States since as early as 1987. Complainant also owns additional trademarks incorporating the ST. JUDE trademark in the United States, as well as in numerous jurisdictions worldwide. The foregoing trademarks will hereinafter collectively be referred to as the “ST. JUDE Mark”.
Complainant owns the domain name <stjude.org>, and also owns a number of domain names incorporating the ST. JUDE Mark, including <stjude.biz>, and <stjude.blog>.
Complainant contends that Respondent’s <gofundmestjude.com> disputed domain name is confusingly similar to Complainant’s ST. JUDE Mark because it includes the mark in its entirety, removes the period, adds the term “gofundme” that precedes the mark, and adds the generic top-level domain name (“gTLD”) “.com”. Complainant also claims that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
The disputed domain name was registered on September 23, 2022 and resolves to a landing page which contains pay-per-click (“PPC”) sponsored hyperlinks that compete with the services provided by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the ST. JUDE Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s ST. JUDE Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used 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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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”).
The Panel finds that Complainant has rights in the ST. JUDE Mark through its registration with the USPTO (e.g., United States Registration No. 2,861,618, registered on July 6, 2004). Registration of a trademark with the USPTO, is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish complainant’s rights in the HOME DEPOT mark).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to the ST. JUDE Mark under Policy ¶ 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, only differing by the omission of a period between the words in the mark, and the addition of the term “gofundme“ preceding the mark, followed by the “.com” gTLD.
The addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Similarly, the removal of punctuation from a complainant’s mark is insufficient to distinguish a disputed domain name from complainant’s mark per Policy ¶ 4(a)(i). See Yahoo! Inc. v. HEIDI BUI, FA 1638878 (Forum Oct. 26, 2015) (finding that punctuation is not significant in determining the similarity of a domain name and mark). Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s ST. JUDE Mark under Policy ¶ 4(a)(i).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
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 disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it has 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 interests 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.”).
Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the ST. JUDE Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Further, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name is currently parked and the resolving website displays pay-per-click (“PPC”) sponsored hyperlinks. The links are advertisements for searches related to the disputed domain name, which, once clicked on, display advertisements for entities selling goods or services competitive to those offered by Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the fame of the ST. JUDE Mark, which was registered and used by Complainant decades before Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ST. JUDE Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). Prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Third, the Panel concludes that Respondent registered and is using the disputed domain name for bad faith disruption of Complainant’s business for commercial gain. Under Policy ¶¶ 4(b)(iii) and (iv), using a disputed domain name to host pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Finally, Respondent has engaged in a long-standing pattern of cybersquatting in registering numerous domains that infringe on the trademarks of other brand owners. Such cases demonstrate that Respondent has engaged in an extensive pattern of conduct designed to infringe upon the trademarks of others, indicative of bad faith. Evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting and demonstrates bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010).
Specifically, Respondent’s conduct in this and other cases has been particularly egregious since it has been found by prior UDRP Panels in approximately 500 Forum and WIPO cases of engaging in a pattern of bad faith domain name registration. Where a respondent has been the unsuccessful party in countless UDRP proceedings, as here, bad faith registration and use is indicated.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gofundmestjude.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: December 19, 2022
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