Grand Lodge Fraternal Order of Police v.
Jonathan Scott
Claim Number: FA0609000798845
PARTIES
Complainant is Grand Lodge Fraternal Order of Police (“Complainant”), represented by Jeffrey D. Houser of Crabbe, Brown & James, LLP, 500 South Front Street, Suite 1200, Columbus, OH, 43215. Respondent is Jonathan Scott (“Respondent”), 3409 King William Drive, Olney, MD, 20832.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foploans.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically September 18, 2006; the National Arbitration Forum received a
hard copy of the Complaint September 22, 2006.
On September 19, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <foploans.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. verified that Respondent is bound by the Go Daddy
Software, Inc. 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 September 26, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 16, 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@foploans.com by e-mail.
A timely Response was received and determined to be complete October
16, 2006.
A timely Additional Submission was received from Complainant October
20, 2006.
A timely Additional Submission was received from Respondent October 25,
2006.
On October 23, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations in this proceeding:
1. Respondent registered a domain name that
is identical to or confusingly similar to Complainant’s protected FOP mark.
2. Respondent has no rights to or legitimate
interests in the domain name containing Complainant’s protected mark.
3.
Complainant registered and used the mark in bad faith.
B. Respondent urges the following points in Response:
1. Respondent registered a domain name that is
not confusingly similar to Complainant’s mark.
2. Respondent has rights to the domain name
and mark contained within it virtue of registration of the mark and bona fide
use.
3. Prior to any knowledge of Complainant’s
FOP mark, Respondent registered his mark and did not act in bad faith.
C. Complainant’s timely-filed Additional Submission sets out the
following:
1. Respondent
registered the domain name with knowledge of Complainant’s rights in the mark.
2. Respondent did not attempt to register the
mark until after receiving Complainant’s Cease and Desist demand.
3. Respondent registered the domain name to
opportunistically capitalize upon Complainant’s good will among its members and
to confuse Complainant’s members into thinking that Respondent was associated
with Complainant, when he is not.
D. Respondent’s timely-filed Additional Submission sets out the
following:
1.
Respondent’s
application for his service mark establishes his rights in the mark.
2.
Respondent has
rights and legitimate interests in the domain name.
3.
Respondent did
not act in bad faith. Respondent’s
letter after the cease and desist notice establishes that he acted in good
faith.
FINDINGS
Complainant holds rights
in the FOP mark through a trademark registration with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 2,763,859 issued September 16, 2003).
Respondent
filed an application to obtain rights in the FOPLOANS.COM with the USPTO for
FOPLOANS.COM (Serial No. 78/943023 filed August 2, 2006).
No
action has been taken on Respondent’s application and Complainant has asserted
that it will object to and oppose any such registration.
Respondent
did not attempt to register the domain name as a mark until after Complainant
sent Respondent a cease and desist demand July 31, 2006.
Respondent’s
application in some circumstances might establish rights in the mark.
Respondent
has no rights or legitimate interests in the mark because he demonstrated an
intentional effort to capitalize upon Complainant’s goodwill and membership:
Respondent
admitted in correspondence dated August 31, 2006, that “I began my program with
good intentions for a successful relationship between myself and the law
enforcement community.” He further
states: “Please note that, while others might pass along a discount to
officers, no one has put together a program that directly benefits the local
lodges and the National Lodge such as this.”
Further,
Respondent conceded use of Complainant’s mark in his materials: “I showed your
client’s logo on the website.”
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(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 asserts rights in the FOP mark through a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,763,859 issued September 16, 2003). The Panel finds that Complainant established rights in the FOP mark through its registration with the USPTO. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant contends that Respondent’s
<foploans.com> doma in
name is confusingly similar to Complainant’s FOP mark as it combines
Complainant’s entire mark with the addition of the generic term “loans.” Complainant asserts that it does assist its
members in acquiring loans as members need and Respondent’s attachment of the
term loan to Complainant’s mark has a direct relation to Complainant. The Panel finds that addition of a term to
Complainant’s mark is not enough to negate the confusing similarity between
Complainant’s mark and Respondent’s disputed domain name. See Arthur Guinness Son
& Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
Respondent
concedes that Complainant has rights in the FOP mark, but contends that
Respondent also has rights to use the FOPLOANS.COM mark because it is not
identical or confusingly similar to Complainant’s mark. Respondent argues that he obtained rights in
the FOPLOANS.COM mark by filing an application with the USPTO to register the
The Panel finds that Complainant
satisfied ICANN Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this proceeding that it has legal rights to and legitimate interests in the mark contained in its entirety within the disputed domain name. Complainant asserts that Respondent has no such rights and no permission from Complainant to use Complainant’s protected mark. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that he does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent asserts that he has such rights based on his registration of the disputed domain name, prior to his notice of this Complaint, and that he has rights in the domain name based on his application to register the domain name as a mark. It is clear from the documents in the submissions of the parties that Respondent is not commonly known by the domain name or by Complainant’s mark that is contained in its entirety within the domain name. Respondent’s WHOIS information does not indicate that Respondent is commonly known by the disputed domain name and Complainant has asserted that Respondent is not authorized to use Complainant’s mark. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"). The Panel finds that Respondent is not commonly known by the <foploans.com> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant also asserts that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) and that Respondent has not made a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant contends that Respondent is using the disputed domain name for its own commercial benefit by attempting to divert Internet users attempting to find services offered or endorsed by Complainant. The Panel finds that such use demonstrates that Respondent lacks rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
Respondent asserts that Respondent
is using the disputed domain name for a bona fide offering of services
as it is offering home mortgaging services at the <foploans.com> domain name and that it has been doing so since prior to the
filing of the instant proceeding. This
is a somewhat disingenuous approach; the Complaint would never have been filed
but for Respondent’s registration of the domain name containing Complainant’s
mark. Respondent also notes that he
allowed Complainant to review the website that corresponds to the disputed
domain name to remove any marks on the website that may be confused with
Complainant’s mark. The Panel notes
that in this letter submitted by Respondent, however, Complainant did assert
that while Respondent had removed any use of Complainant’s mark from the actual
website, Complainant still contended that Respondent was violating
Complainant’s rights through the registration of the disputed domain name
itself. Since the Panel has found that
Respondent has not made a bona fide offering of services at the disputed
domain name for the reasons set out above, it finds that Respondent does have
rights and legitimate interests in the disputed domain name under Policy ¶
4(a)(ii).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant
asserts that Respondent registered and used the domain name that contains
Complainant’s protected mark in bad faith. Complainant contends that Respondent
is using the disputed domain name to disrupt Complainant’s services by
attracting Internet users attempting to locate services offered by Complainant
and diverting them to Respondent’s website.
The Panel finds that such use constitutes disruption and is evidence of
bad faith registration and use under Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb.
Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users
through to the respondent’s competing business); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
The
Panel finds that Respondent is using the <foploans.com> domain
name for Respondent’s own commercial benefit by taking advantage of the goodwill
associated with Complainant’s FOP mark and by using Complainant’s members as
sources of commercial benefit.
Moreover, the Panel also finds that Respondent’s disputed domain name is
capable of creating a likelihood of confusion as to the source and affiliation
of Complainant with the disputed domain name, and this permits findings of bad
faith registration and use under Policy ¶ 4(b)(iv). Complainant asserts that Respondent’s acknowledgment that he
presented the disputed domain name and corresponding website to Complainant for
trademark-infringement review is evidence that Respondent knew his disputed
domain name was capable of creating a likelihood of confusion with regard to
Complainant’s affiliation with the <foploans.com> domain
name. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where the respondent directed Internet users
seeking the complainant’s site to its own website for commercial gain).
Additionally,
Complainant asserts that Respondent’s use of Complainant’s mark both in the
disputed domain name itself and on Respondent’s corresponding website
demonstrates that Respondent had actual notice of Complainant’s mark when it
registered the disputed domain name.
The Panel finds sufficient evidence, including Respondent’s admissions
in Respondent’s submission and other writings to the Complainant, to
demonstrate that Respondent had actual notice of Complainant’s rights in its
mark, and this supports findings of Respondent’s bad faith registration and use
under 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 Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”).
Complainant also
contends that Respondent’s application of a trademark registration with the
USPTO does not demonstrate that Respondent necessarily registered the <foploans.com> domain name in good faith.
Rather, Complainant asserts that Respondent filed such a registration
only after receiving a cease and desist letter from Complainant regarding use
of the disputed domain name, and Complainant asserts that it intends to contest
the registration of the mark applied for by Respondent.
Respondent contends that he did not
register the <foploans.com> domain name in bad faith, and has not
used it in bad faith since registration.
Further, Respondent points to his own correspondence directed to the
Complainant for the proposition that he must have acted in good faith. A party’s self-serving attestations of
innocence take second place to the party’s manifestations to the contrary. The Panel finds that contrary to
Respondent’s assertions, he is offering services under Complainant’s mark to
Complainant’s members and without Complainant’s permission and Complainant
notes that these are the same services that Complainant offers its own
members. Respondent’s argument fails.
The Panel finds that Complainant satisfied ICANN 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 <foploans.com>
domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: October 30, 2006
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