Soroptimist International of the Americas v. BusinessService Ltd., Escrow Domain Department, Temporary Domain transfer manager
Claim Number: FA0606000724500
Complainant is Soroptimist International of the Americas (“Complainant”), represented by Roger Herrell, of Dann Dorfman Herrell and Skillman PC, 1601 Market St. Suite 2400, Philadelphia, PA 19103. Respondent is BusinessService Ltd., Escrow Domain Department, Temporary Domain transfer manager (“Respondent”), Expresspost, P.O. Box 169, St. Petersburg 193015, RU.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <soroptimist.com>, registered with Domreg Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2006. The Complaint was submitted in both Russian and English.
On June 22, 2006, Domreg Ltd. confirmed by e-mail to the National Arbitration Forum that the <soroptimist.com> domain name is registered with Domreg Ltd. and that Respondent is the current registrant of the name. Domreg Ltd. has verified that Respondent is bound by the Domreg Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 23, 2006, a Russian Language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 13, 2006 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@soroptimist.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <soroptimist.com> domain name is identical to Complainant’s SOROPTIMIST mark.
2. Respondent does not have any rights or legitimate interests in the <soroptimist.com> domain name.
3. Respondent registered and used the <soroptimist.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Soroptimist
International of the Americas, is a nonprofit international organization for
business and professional women who provide volunteer services in their
respective communities. Complainant was
founded in 1921, and currently has over 91,000 members in 125 countries and
territories. Complainant holds several
trademark and service mark registrations with the United States Patent and
Trademark Office (“USPTO”) including one for its SOROPTIMIST mark (Reg. No.
2,275,346 issued September 7, 1999).
Additionally, Complainant operates a website at
<soroptimist.org>.
Respondent’s
predecessor registered the <soroptimist.com> domain name on
March 27, 2000. Respondent purchased
the disputed domain name after a cease and desist letter had been sent by
Complainant to Respondent’s predecessor.
Respondent’s disputed domain name resolves to a website which displays
advertisements and links for various goods and services. Respondent has also contacted Complainant
via an unsolicited email that refers to communication between Complainant and
Respondent’s predecessor, and asserts that Respondent is unwilling to sell the
disputed domain name for the price previously offered by Complainant to
Respondent’s predecessor.
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 draw such inferences it 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 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.
The Panel finds that Complainant’s trademark registration with the USPTO sufficiently establishes Complainant’s rights in the SOROPTIMIST mark. See 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.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
The Panel finds that Respondent’s <soroptimist.com> domain name is identical to Complainant’s SOROPTIMIST mark under Policy ¶ 4(a)(i) as it incorporates Complainant’s mark in its entirety with the addition of the generic top-level domain name (“gTLD”) “.com.” Previous panels have held, and this panel agrees, that the addition of a gTLD is a necessary part to an Internet address, and therefore does not render a mark sufficiently different from a name that is otherwise identical to a registered mark. See Blue Sky Software Corp. v. Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to the complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <soroptimist.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s SOROPTIMIST mark, and that Respondent is not associated with Complainant in any way. Additionally, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the <soroptimist.com>
domain name to operate a website that displays advertisements and links to
third-party goods and services. The
Panel presumes that Respondent operates the website in such a manner for its
own commercial benefit. In Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held
that the respondent’s use of the disputed domain name to host a series of
hyperlinks and a banner advertisement was neither a bona fide offering
of goods or services nor a legitimate noncommercial or fair use of the domain
name. See Wells
Fargo & Co. v. Lin Shun Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to
direct Internet traffic to a website featuring pop-up advertisements and links
to various third-party websites is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user). The Panel thus finds that Respondent’s use of the disputed domain
name is neither a bona fide offering of goods or services under Policy ¶
4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).
Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) is further evidenced by its correspondence with Complainant regarding Complainant’s prior offer to buy the <soroptimist.com> domain name from Respondent’s predecessor. Seen 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); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Pursuant to Policy ¶ 4(a)(iii), Complainant must demonstrate that Respondent registered and used the domain name in bad faith. In the instant case, Respondent was not the original registrant of the <soroptimist.com> domain name, but acquired the disputed domain name registration at a later date. In Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000), the panel addressed the issue of establishing bad faith on the part of a respondent that is not the original registrant of the disputed domain name. According to the panel in Ciccone, the acquisition of a disputed domain name registration in bad faith by a respondent is equivalent to the registration of the disputed domain name in bad faith. Therefore, consistent with the panel’s finding in Ciccone, the Panel concludes that the Complainant must demonstrate that Respondent acquired and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant has alleged that Respondent acted in bad faith
by using the disputed domain name that is identical to Complainant’s mark. Respondent is using the <soroptimist.com>
domain name to operate a website that displays advertisements and links for
various goods and services. The Panel
finds that Respondent is making use of the Complainant’s SOROPTIMIST mark for
its own commercial benefit, which constitutes bad faith under Policy ¶
4(b)(iv). Moreover the use of
Complainant’s mark in the disputed domain name creates a likelihood of
confusion as to Complainant’s sponsorship and affiliation with the resulting
website. See Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s
registration of an infringing domain name to redirect Internet users to banner
advertisements constituted bad faith use of the domain name); see also Am. Univ. v. Cook, FA
208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name
that incorporates another's mark with the intent to deceive Internet users in
regard to the source or affiliation of the domain name is evidence of bad
faith.”).
The Panel finds further evidence of bad faith registration
and use under Policy ¶ 4(a)(iii) is shown by Respondent’s correspondence with
Complainant regarding Complainant’s offer to Respondent’s predecessor to
purchase the disputed domain name. See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Booz-Allen & Hamilton Inc. v.
Servability Ltd, D2001-0243 (WIPO
Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer,
rejected the complainant’s nominal offer of the domain in lieu of greater
consideration).
The Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <soroptimist.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: August 2, 2006
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