Alley Cat Allies Incorporated v. Jason L Monroe
Claim Number: FA2308002057604
Complainant is Alley Cat Allies Incorporated (“Complainant”), represented by Asal Saffari of Haynes and Boone, LLP, California, USA. Respondent is Jason L Monroe (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aleycat.org>, registered with Sav.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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on August 15, 2023; Forum received payment on August 15, 2023.
On August 18, 2023, Sav.com, LLC confirmed by e-mail to Forum that the <aleycat.org> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.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 August 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2023 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@aleycat.org. Also on August 21, 2023, 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 September 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a United States company engaged in the provision of animal welfare and related services.
Complainant has rights in the ALLEY CAT ALLIES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Registration No. 6121696, August 11, 2020). See Compl. Exhibit 2.
Respondent’s <aleycat.org> domain name (hereinafter referred to as “the disputed domain name”) is confusingly similar to Complainant’s mark as it is a slight misspelling of the mark with one less letter in “alley” as “aley”, deleting the word “ALLIES” and also appending the “.org” generic top-level domain (“gTLD”). The result of these registration details is to convey the false impression that the domain name is related to the trademark reflected in the domain name and this must give rise to confusion.
Respondent has no rights and legitimate interests in the Disputed Domain Name. That is because:
(a) Respondent is not affiliated with the Complainant and the Complainant has not licensed or permitted the Respondent to use its mark in a domain name or in any other way.
(b) Respondent has not used the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use as it has generated links that compete with or trade on the Complainant’s reputation and mislead internet users.
(c) The Respondent has used the domain name to solicit donations though sponsored third-party links.
(d) Respondent is typosquatting on Complainant’s mark by altering one letter in the mark and deleting the word “ALLIES” from the trademark.
Respondent has registered and uses the Disputed Domain Name in bad faith. That is because:
(a) Respondent is exploiting the goodwill in Complainant’s marks by attracting internet users to its site by giving the false impression of an association with Complainant;
(b) Respondent is doing this by means of buttons directing users to sponsored links for donations to various third-party organizations and service providers and which must generate revenue for Respondent;
(c) That conduct by Respondent has the effect of diverting charitable donations away from Complainant;
(d) Respondent must have had actual knowledge of Complainant and its marks and it would be implausible to suggest the contrary in view of Complainant’s fame.
B. Respondent
Respondent failed to submit a Response in this proceeding.
2. Complainant has established its rights in the ALLEY CAT ALLIES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Registration No. 6121696, Aug.11, 2020, and several other registrations incorporating the words ALLEY CAT and ALLEY CAT ALLIES.
3. Complainant is also the registrant of the official domain name of Complainant, <alleycat.org> which resolves to its official website at www.alleycat.org and which it uses for the promotion of its charitable activities in animal welfare.
4. Respondent registered the disputed domain name on June 16, 2023.
5. Respondent has caused the disputed domain name to resolve to a website where it exploits Complainant’s goodwill, wrongly solicits donations and actively misleads internet users.
6. The evidence shows that the disputed domain name is confusingly similar to the ALLEY CAT ALLIES mark, that Respondent has no right or legitimate interest in the domain name and that it has registered and 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 and 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”).
The first question that arises is whether Complainant has rights in a
trademark or service mark on which it may rely. Complainant has established its rights in the ALLEY CAT ALLIES mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Registration No. 6121696, August 11, 2020). Complainant has also shown that it has several other registrations incorporating the words ALLEY CAT and ALLEY CAT ALLIES. Registration of a mark with the USPTO is sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant has registered and has established its rights in the ALLEY CAT ALLIES mark through its registration of the mark with the USPTO, the Panel finds that Complainant has rights in that mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ALLEY CAT ALLIES mark. Complainant argues that Respondent’s disputed domain name is confusingly similar to that mark. Under Policy ¶ 4(a)(i), misspelling a mark, which has been done in the present case by using “aleycat” in the domain name instead of ALLEY CAT ALLIES, along with using the “.org” gTLD are insufficient to differentiate the domain name from the mark. The Panel agrees. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The disputed domain name in effect incorporates the substance of Complainant’s mark while slightly misspelling it and adding the “.org” gTLD. The domain name is <aleycat.org> and the trademark is ALLEY CAT ALLIES. Thus, an internet user would, more likely than not, see the domain name as reflecting the trademark or invoking it to suggest that it is related to the well-known trademark.
The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s ALLEY CAT ALLIES mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 such 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)).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ALLEY CAT ALLIES mark
and to make minor changes to it as described above but which do not negate the confusing similarity between the domain name and the mark but generates the impression that it is referring to and invoking the ALLEY CAT ALLIES mark;
(b) Respondent registered the disputed domain name on June 16, 2023. By that time, Complainant had registered its ALLEY CAT ALLIES mark on August 11, 2020.
(c) Respondent has caused the disputed domain name to resolve to an active webpage which the Panel has examined. The Panel finds that through categories such as “Make a Donation”, the website contains access to a series of charitable endeavors that seem to be soliciting donations and providing information on how to raise money for charities. Accordingly, it is clear that the Respondent has used the confusingly similar domain names initially to trade on the Complainant’s name and trademark and to divert internet users away from the Complainant and its official website at www.alleycat.org and towards other charities. Clearly, this has tarnished the Complainant’s trademark and disrupted the Complainant’s charitable work.
(d) The evidence as a whole, particularly the declaration of Charlene Pedrolie, the President and Chief Operating Officer of the Complainant, verifies the Complainant’s submissions that the Respondent is not affiliated with the Complainant, has not licensed or permitted the Respondent to use its mark in a domain name and has not used the domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, as it has generated links that compete with or trade on the Complainant’s reputation and mislead internet users.
(e) The evidence also shows that Respondent has engaged in these activities without the consent or approval of Complainant.
(f) Complainant has cited several prior UDRP decisions that support the foregoing contentions.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the Disputed Domain Name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant has submitted that:
(a) Respondent is exploiting the goodwill in Complainant’s marks by attracting internet users to its site by giving the false impression of an association with Complainant;
(b) Respondent is doing this by means of buttons directing users to sponsored links for donations to various third-party organizations and service providers and which must generate revenue for Respondent;
(c) That conduct by Respondent has the effect of potentially diverting charitable donations away from Complainant;
(d) Respondent must have had actual knowledge of Complainant and its marks and it would be implausible to suggest the contrary in view of Complainant’s fame.
The Complainant has presented a detailed and persuasive case which the Panel accepts and which verifies all of the foregoing submissions. See Compl. Exhibits 5 and 6.
Indeed, the Respondent’s conduct has been shown to have been deceptive and misleading. It has taken the Complainant’s trademark, manipulated it and used it for a purpose not designed to promote the Complainant’s interests but the Respondent’s interests and it is difficult to accept that this has been done for good motives. It is more likely that it has been done for financial motives and to benefit the Respondent itself.
The Panel therefore finds that the Complainant has made out a case under each of paragraphs 4 (b)(i), (ii), (iii) and (iv) of the Policy.
In addition, and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ALLEY CAT ALLIES mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has also cited several prior UDRP decisions that support the foregoing conclusions.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aleycat.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: September 14, 2023
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