Word of Life Christian Center, Inc. v.
Karl Carter and ItIsSo.com
Claim
Number: FA0507000524665
Complainant is Word of Life Christian Center, Inc. (“Complainant”),
represented by William L. Caughman of Kean, Miller, Hawthorne, D'Armond, McCowan & Jarman, L.L.P., P.O. Box 3513, Baton Rouge, LA,
70821. Respondent is Karl Carter and ItIsSo.com (“Respondent”),
565 Georgia Street, Gary, IN, 46402.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <moneycometh.org>, registered with NameSecure,
L.L.C.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically July 26,
2005; the National Arbitration Forum received a hard copy of the Complaint July
29, 2005.
On
July 27, 2005, NameSecure, L.L.C. confirmed by e-mail to the National
Arbitration Forum that the <moneycometh.org> domain name is
registered with NameSecure, L.L.C. and that Respondent is the current
registrant of the name. NameSecure,
L.L.C. has verified that Respondent is bound by the NameSecure, L.L.C. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On
August 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 22, 2005, by which Respondent could file a response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@moneycometh.org by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
August 29, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent
registered, <moneycometh.org>, is identical to Complainant’s MONEY
COMETH mark.
2. Respondent has no rights to or legitimate
interests in the <moneycometh.org> domain name.
3. Respondent registered and used the <moneycometh.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Word of Life Christian Center, Inc., registered the MONEY COMETH mark with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,451,293 issued
May 15, 2001). Complainant has used the MONEY COMETH mark to promote its
products and services.
Respondent
registered the <moneycometh.org> domain name January 16,
2004. Respondent’s domain name resolves
to a website that offers nutrition, personal and home care products. When Complainant first contacted Respondent
and informed Respondent of Complainant’s rights in the MONEY COMETH mark,
Respondent offered to sell the domain name registration to Complainant for
$20,000.
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules. The Panel
is entitled to accept all reasonable allegations and inferences set forth in
the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant
established with extrinsic proof in this proceeding that it has established
rights in the MONEY COMETH mark through registration with the USPTO. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); see also Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”).
Additionally,
Complainant asserts that the domain name that Respondent registered, <moneycometh.org>, is identical
to Complainant’s MONEY COMETH mark, pursuant to Policy ¶ 4(a)(i), as the domain
name fully incorporates the mark and merely adds the generic top-level domain
“.org.” See Microsoft Corp. v.
Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain
name <microsoft.org> is identical to the complainant’s mark); see also Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO
Feb. 8, 2001) (finding that the domain name <philips.org> is identical to
the complainant’s PHILIPS mark).
The Panel finds
Complainant satisfied Policy ¶ 4(a)(i).
Complainant
established that it has rights to and legitimate interests in the mark
contained within the domain name that Respondent registered and alleged that
Respondent has no such rights to or legitimate interests in the <moneycometh.org> domain
name. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not
have rights or legitimate interests with respect to the domain, the burden
shifts to the respondent to provide credible evidence that substantiates its
claim of rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such rights or
legitimate interests do exist); see also
Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a response, the respondent has failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Moreover,
Respondent is not commonly known by the <moneycometh.org>
domain name. The Panel concludes
that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where respondent was not commonly known by the
mark and never applied for a license or permission from complainant to use the
trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug.
29, 2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Additionally,
the Panel finds that Respondent’s use of Complainant’s mark in the disputed
domain name capitalizes on the goodwill associated with Complainant’s mark and
diverts Internet users to Respondent’s website for Respondent’s benefit. The Panel concludes that such diversion does
not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i) or a legitimate or fair use under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see
also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore,
Respondent’s offer to sell the disputed domain name is evidence that Respondent
lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000)
(finding the respondent’s conduct purporting to sell the domain name suggests
it has no legitimate use); see also Mothers Against Drunk Driving v.
Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent
registered and used the <moneycometh.org>
domain name in bad faith, pursuant to Policy
¶ 4(b)(i), because Respondent offered to sell the disputed domain name
registration to Complainant. See Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where the respondent offered domain names for sale); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding
that a failure to use the domain name in any context other than to offer it for
sale to the complainant amounts to a use of the domain name in bad faith); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO
Dec. 7, 2000) (finding bad faith where the respondent made no use of the domain
names except to offer them to sale to the complainant); see also Banca
Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000)
(finding bad faith where the respondent offered the domain names for sale).
Moreover,
Respondent registered and used the disputed domain name in bad faith under
Policy ¶ 4(b)(iv), as Respondent is using the <moneycometh.org> domain name to intentionally attract Internet users seeking Complainant’s well
known mark, by creating a likelihood of confusion as to Complainant’s
affiliation with the resulting website.
See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to Policy ¶
4(b)(iv) through the respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet users to its fraudulent
website by using the complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com,
FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the
respondent registered the domain name <bigtex.net> to infringe on the
complainant’s goodwill and attract Internet users to the respondent’s website).
Furthermore,
Respondent registered the <moneycometh.org> domain name with actual
or constructive knowledge of Complainant’s rights in the MONEY COMETH mark due
to Complainant’s registration of the mark with the United States Patent and
Trademark Office. Registration of a
domain name that is confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights in the mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when the respondent reasonably should have
been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <moneycometh.org> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 9, 2005
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