DECISION

 

American Lebanese Syrian Associated Charities, Inc. v. Ignasius Evan / personal

Claim Number: FA2506002161425

 

PARTIES

Complainant is American Lebanese Syrian Associated Charities, Inc. ("Complainant"), represented by Crystal B Genteman of Kilpatrick, Townsend & Stockton LLP, Georgia, USA. Respondent is Ignasius Evan / personal ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <saintjudehospital.org>, registered with CV. Rumahweb Indonesia.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 18, 2025; Forum received payment on June 18, 2025.

 

On June 19, 2025, CV. Rumahweb Indonesia confirmed by e-mail to Forum that the <saintjudehospital.org> domain name is registered with CV. Rumahweb Indonesia and that Respondent is the current registrant of the name. CV. Rumahweb Indonesia has verified that Respondent is bound by the CV. Rumahweb Indonesia 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 24, 2025, Forum served the Complaint and all Annexes, including an Indonesian and English Written Notice of the Complaint, setting a deadline of July 14, 2025 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@saintjudehospital.org.

 

Also on June 24, 2025, the Indonesian and English 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 in Indonesian and English.

 

On July 17, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the disputed domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING

Rule 11(a) of the Rules states that the default language of the administrative proceeding is the language of the domain name registration agreement. However, the Panel has discretion to determine otherwise, considering fairness, parties' language proficiency, cost, and potential delays due to translation.

 

The Registrar has confirmed that the language of the Registration Agreement is Indonesian.

 

Complainant requests the Panel to exercise its discretion to allow this proceeding to continue in the English language, arguing that

·       the disputed domain name consists of words in the English language;

·       the content of the website to which the disputed domain name resolves is in the English language;

·       the disputed domain name is registered on the <.org> generic Top-Level Domain ("gTLD");

·       Respondent uses a partial U.S. address in his registration of the disputed domain name is registered which further suggests that Respondent is conversant and proficient in the English language. Respondent also uses a Gmail email address, citing Enterprise Holdings, Inc. v. Zhichao Yang, FA2207002005796 (Forum Aug. 26, 2022) (identifying the use of a Gmail address as a factor in favor of finding that a respondent is conversant in English);

·       Complainant is based in the United States and conducts its daily operations in English and therefore, it would be "cumbersome and to [Complainant's] disadvantage to be forced to" conduct this proceeding in Indonesian, citing Wordpress Foundation v. duanxiangwang, WIPO Case D2011-0836 ("The Complainant is a United States headquartered company. It would therefore be cumbersome and to the Complainant's disadvantage to be forced to translate the entire Complaint in Chinese.").

 

Having considered the record, this Panel finds that given that

·       The WhoIs information disclosed by the Registrar in response to the request by Forum for details of the registration of the disputed domain discloses that the address provided by Respondent when registering the disputed domain name is purportedly "New York, US, New York, 61, 78259" which is clearly a false address but infers a connection with the United States of America;

·       the content of the website to which the disputed domain name resolves is in the English language;

·       there is no Indonesian language content on that part of the website which has been submitted by Complainant or elsewhere in the record except for the registration agreement which is in both English and Indonesian, and

·       on June 24, 2025, Written Notice of the Complaint, in both the Indonesian and English languages was transmitted to Respondent via post and fax, and when Respondent failed to file a Response, Forum sent a notice of Respondent Default in both the English and Indonesian languages,

·       as is decided below, Respondent is using the disputed domain name as the address of an English language website to target the goodwill and reputation of Complainant which is a charity based in Tennessee, United States of America, and which has no connection with Indonesia or the Indonesian language,

this Panel finds that on the balance of probabilities Respondent is proficient in the English language, and Complainant would be greatly prejudiced if the Panel did not exercise the discretion allowed in Rule 11(a) to direct that this proceeding progress in the English language.

 

This Panel directs therefore, exercising its discretion, that the Complaint, as amended, which was filed in the English language is admitted, and this proceeding is allowed to continue in the English language.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the ST. JUDE service mark established by its ownership of the portfolio of registrations described below and extensive use of the mark for many years raising funds for the St. Jude Children's Research Hospital which is a paediatric treatment and research facility focused on children's diseases, particularly leukaemia and other cancers was founded in 1962.

 

Complainant raised $2.4 billion for the hospital in 2023 with the support of numerous celebrities and a strong social media presence having a Facebook page with over 3.1 million followers and Instagram page with 602,000 followers, a Twitter page with over 404,500 followers and a TikTok page with 750,000 followers.

 

Complainant firstly alleges that the disputed domain name is identical or confusingly similar to its ST. JUDE mark in which it has rights arguing that the elements "saint jude" within the disputed domain name and the element "ST." within Complainant's mark is the phonetic equivalent of, and spoken as the word "saint".

 

It is argued that the incorporation of Complainant's ST. JUDE Mark, or a nearly identical equivalent thereof, in its entirety in the disputed domain name is likely to confuse consumers as to Respondent's connection with Complainant, and it is well recognized by panels established under the Policy that the incorporation of a trademark in its entirety in a domain name at issue may be sufficient to establish that it is identical or confusingly similar to a complainant's registered mark. See, e.g., American Lebanese Syrian Associated Charities, Inc. v. Carolina Rodrigues/Fundacion Comercio Electronico, FA2211002019851 (Forum Dec. 19, 2022) (finding <gofundmestjude.com> confusingly similar to the wholly incorporated ST. JUDE mark).

 

Complainant adds that Respondent's use of "SAINT", rather than "ST.", in the disputed domain name does not serve to distinguish the disputed domain name from the ST. JUDE marks, but rather creates the same commercial impression as Complainant's mark, and consumers will still read the disputed domain name as ST. JUDE and associate the disputed domain name with Complainant. See, e.g. St. Baldrick's Foundation Inc. v. Wan-Fu China, Ltd., WIPO Case D2007-0705 (WIPO July 5, 2007) (finding that "st." is a common abbreviation of "saint" which does not serve to distinguish a domain name from its other distinctive elements).

 

Additionally, it is argued that the inclusion of the generic or descriptive term "hospital" in the disputed domain name does not distinguish the domain name from Complainant's mark. The term "hospital" is closely associated with Complainant based on its offering of hospital services under its ST. JUDE mark and the name and marks ST. JUDE CHILDREN'S RESEARCH HOSPITAL and ST. JUDE CHILDREN'S RESEARCH HOSPITAL ALSAC DANNY THOMAS, FOUNDER.

 

Here, the addition of the term "hospital," within the disputed domain name therefore only serves to add to the potential for confusion with Complainant's mark. See Bloomberg Finance L.P. v. Mr. Vladimirs Fokins / media-agency-ltd, FA1708001743430 (Forum Sep. 8, 2017) (finding the addition of the term "business" to complainant's BLOOMBERG mark did not negate a finding of confusing similarity and may have increased confusion).

 

Complainant secondly alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the primary factors the Panel should consider when evaluating whether Respondent has rights or legitimate interests in a disputed domain name are: (1) whether Respondent previously used the domain name in connection with bona fide offering of goods or services; (2) whether Respondent has been commonly known by the disputed domain name; and (3) whether Respondent is making a legitimate noncommercial or fair use of the disputed domain name. See Policy ¶ 4(c).

 

Complainant argues that Respondent cannot own any rights or legitimate interests in the disputed domain name considering Complainant's prior established rights in the well-known ST. JUDE, ST. JUDE CHILDREN'S RESEARCH HOSPITAL and ST. JUDE CHILDREN'S RESEARCH HOSPITAL ALSAC DANNY THOMAS, FOUNDER marks. See, e.g., Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO D2000-0163 (WIPO May 1, 2000) (bad faith is found where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith").

 

Moreover, Respondent is not using, and has not used, the disputed domain name in connection with any bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent has used the disputed domain name to impersonate and falsely suggest an association with Complainant for commercial gain. Such use of the disputed domain name for intentional deception is not recognized as a bona fide offering of goods under the Policy. See for example, LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1712001762308 (Forum Jan. 9, 2018) (finding that use of the disputed domain name and resolving website as a "lead generator" to divert complainant's customers and potential customers is not a bona fide offering of goods or services or a legitimate noncommercial or fair use).

 

Complainant thirdly alleges that the disputed domain name was registered and is being used in bad faith for commercial gain and to benefit from Complainant's goodwill and fame associated with ST. JUDE CHILDREN'S RESEARCH HOSPITAL.

 

It is argued that Respondent's bad-faith registration and use of the disputed domain name can be inferred from the fact that the disputed domain name is nearly identical and/or confusingly similar to the well-known and pre-existing ST. JUDE and ST. JUDE CHILDREN'S RESEARCH HOSPITAL marks. Such registration and use of the disputed domain name is, in and of itself, a form of opportunistic bad faith. See American Lebanese Syrian Associated Charities, Inc. v. Carolina Rodrigues/Fundacion Comercio Electronico, FA2211002019851 (Forum Dec. 19, 2022) (finding bad faith and explaining, "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.")

 

It is argued that upon seeing the disputed domain name, consumers will initially be confused into believing that the website to which it resolves has an association with or is sponsored by Complainant. Such "initial confusion is enough to demonstrate bad faith." David Foox v. Kung Fox and Bill Hicks, WIPO Case D2008-0472 ("A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant's objective of bringing them there will already have been achieved.").

 

Further, referring to the content of the website to with the disputed domain name resolves which is exhibited in an annex to the Complaint, Complainant submits that it illustrates Respondent is using the ST. JUDE marks and reproducing Complainant's copyrighted content which clearly demonstrates that Respondent had actual knowledge of Complainant and the ST. JUDE mark. Previous panels established under the Policy have found bad faith based on a respondent's use of a complainant's mark and distinctive logo on a website. See, e.g., Spotify AB v. Joseph Rexford, FA2207002003015 (Forum Aug. 9, 202) (use of the complainant's SPOTIFY mark and distinctive logo supported a finding of actual knowledge and bad faith registration).

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the fundraising and awareness organization for St. Jude Children's Research Hospital and is the owner of a portfolio of trademark and service mark registrations that include

·       United States registered service mark ST. JUDE CHILDREN'S RESEARCH HOSPITAL ALSAC DANNY THOMAS, FOUNDER (word and design) registration number 2,830,868, registered on the Principal Register on April 6, 2004, for goods and services in classes 25, 36, 41, and 44 (Reg. No. 2830868)

·       United States registered service mark ST. JUDE, registration number 2,861,618, registered on the Principal Register on July 6, 2004 for services in international class 36;

·       United States registered service mark ST. JUDE CHILDREN'S RESEARCH HOSPITAL (word and design mark) registration number 5,731,708 registered on April 23, 2019, for services in international classes 36, 41, and 44;

and further claims rights for similar marks in Canada, Brazil, the European Union, and China, as well as an international registration designating numerous other countries.

 

Complainant has an established Internet, including social media, presence, and it owns a portfolio of domain names including relevantly: <stjude.biz> (originally registered April 24, 2018), <stjude.blog> (originally registered August 2, 2018), <stjude.tv> (originally registered November 27, 2004), and <alsac-stjude.com> (originally registered March 31, 2004).

 

The disputed domain name <saintjudehospital.org> was registered on January 7, 2025 and resolves to a website that purports to impersonate Complainant and the St. Jude Children's Research Hospital in its content and presents a prominent request for donations on its home page.

 

There is no information available about Respondent except for that which is provided in the Complaint, as amended, the Registrar's WhoIs for the disputed domain name and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

 

DISCUSSION

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").

 

Identical and/or Confusingly Similar

Complainant has provided uncontested evidence that it has rights in the ST. JUDE mark and other marks incorporating the elements ST. JUDE, established by its ownership of the trademark and service mark registrations described above.

 

The disputed domain name <saintjudehospital.org> contains Complainant's ST. JUDE mark in its entirety, albeit using the full word "saint" in place of the abbreviation "ST." as it appears in the trademark. The Panel notes that the abbreviation "St." is a commonplace abbreviation for the word "saint". On the balance of probabilities Internet users would not notice the difference and if they did would not regard the difference as being in any way significant.

 

The disputed domain name also contains the word "hospital" together with the gTLD extension <.org>, and neither of these elements prevent a finding of confusing similarity.

 

In making this finding this Panel is conscious that it is well established that the first element in the test in Policy ¶ 4(a)(i) is generally accepted as presenting a low bar for a complainant to cross and panels generally accept that a complainant should succeed once mark relied upon by a complainant is contained in its entirety in the domain name at issue.

This Panel finds therefore that the disputed domain name is confusingly similar to the ST. JUDE mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out a prima facie case that the Respondent has no rights legitimate interests in the disputed domain names as set out in Complainant's detailed submissions above.

 

In particular the evidence shows that Respondent is using the disputed domain name within the address of an exhibited website on which Respondent has posted content purporting to impersonate Complainant. Such behaviour cannot establish and rights or legitimate interests in the disputed domain name.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant's registered trademark ST. JUDE is clearly recognizable as the only distinctive element within the disputed domain name. The addition of the word "hospital" infers an association with the work of Complainant in supporting the ST. JUDE CHILDREN'S RESEARCH HOSPITAL.

Complainant's registered service mark rights in the mark date back to July 6, 2004 long predate the registration of the disputed domain name on January 7, 2025.

 

In relation to the extent of Complainant's goodwill and reputation, the Complaint does not address the fact that Complainant and the ST. JUDE CHILDREN'S RESEARCH HOSPITAL, are separate entities. The Complaint tends to treat them as being the same entity. However there is clearly a very close relationship between Complainant and the hospital, and notwithstanding that Complainant presents itself as a funding and awareness role it appears to have a wider role in that it is the owner of the registered trademarks. In these circumstances this Panel accepts that Respondent acted to take advantage of the reputation of the medical facility rather than Complainant which is engaged in a supportive role raising funding and awareness.

 

Complainant has shown that the ST. JUDE CHILDREN'S RESEARCH HOSPITAL has an extensive goodwill and reputation with enormous social media following. It is therefore improbable that the registrant of the disputed domain name was unaware of Complainants' mark and the ST. JUDE CHILDREN'S RESEARCH HOSPITAL when the disputed domain name was chosen and registered.

 

While the ST. JUDE mark itself is not very distinctive for religious and medical services in a global context. However in the particular circumstances of this case, where Respondent has used the mark to specifically target and impersonate Complainant, on the balance of probabilities this Panel finds that the disputed domain name was in fact chosen and registered with Complainants' mark in mind with the intention of taking predatory advantage of Complainants' rights and goodwill in the ST. JUDE mark and the reputation of the ST. JUDE CHILDREN'S RESEARCH HOSPITAL.

 

The screen captures which are exhibited in the annexes to the Complaint show that Respondent is using the disputed domain name to resolve to a website which presents itself as being maintained by the ST. JUDE CHILDREN'S RESEARCH HOSPITAL. The homepage has a banner with a photograph of the hospital, and a statement that "[e]ntertainer Danny Thomas founded St. Jude in 1962. Since then, our researchers and doctors have worked to turn laboratory breakthroughs into lifesaving treatments for children in the United States and around the world".

 

Also worryingly the banner on the homepage of what is clearly a fake website, contains a prominently displayed button with the text "donate now".

 

Such use of Complainants' trademark with the disputed domain name as the address of the resolving website is on the balance of probabilities intentionally intended to attract and confuse Internet users and cause them to divert their Internet traffic intended for Complainant and misdirect it to Respondent's website by creating a likelihood of confusion with Complainants' mark as to the source, sponsorship, affiliation, or endorsement of your web site, which constitutes bad faith for the purposes of the Policy.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <saintjudehospital.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

_____________________________________

James Bridgeman SC

Panelist

Dated: July 17 2025