WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
St. Baldrick's Foundation Inc. v. Web Advertising, Corp.
Case No. D2007-0707
1. The Parties
The Complainant is St. Baldrick's Foundation Inc., Springfield, New Jersey, United States of America, represented by Edwards Angell Palmer & Dodge, LLP, United States of America.
The Respondent is Web Advertising, Corp., Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name is registered with Capitoldomains, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2007. On May 14, 2007, the Center transmitted by email to Capitoldomains, LLC a request for registrar verification in connection with the domain name at issue. On May 15, 2007, Capitoldomains, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 12, 2007.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on June 21, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a not-for-profit foundation engaged in the activities of fundraising and raising awareness to cure cancer in children by supporting cancer research and fellowships. The Complainant was founded in 1999, and has since early 2000 actively used the trademark ST. BALDRICK'S in connection with fundraising and charity events and services. The Complainant owns two trademark registrations in the United States of America for ST. BALDRICK'S and ST. BALDRICK'S and Design for charitable services, namely fundraising. The Complainant has organized and conducted fundraising events in 10 countries and 42 states in the U.S., raising over US $20 million dollars in support of its mission to save children's lives and to improve the long-term quality of life for children who are cancer survivors.
The Respondent registered the domain name on February 8, 2007. At the date of the Complaint, the Respondent was operating a website under the domain name that provides links to other businesses offering a variety of products and services, including those related to cancer research and therapy, as a “click-through site”.
5. Parties' Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant's trademark ST. BALDRICK'S, as it is virtually identical to the Complainant's trademark except for the deletion of the letter “s” at the end of the word “Baldrick's”.
(b) Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name . The Complainant owns two United States trademark registrations for the trademark ST. BALDRICK'S. The Complainant's rights in the ST. BALDRICK'S trademark were established before the Respondent's registration of the domain name . The Complainant contends that the Respondent's use of the domain name in connection with a “click-through site” does not establish a right or legitimate interest in the domain name. Complainant submits that the Respondent is not commonly known by the St. Baldrick's name and was never authorized as a dealer, user or licensee of the Complainant.
(c) Registered or Used in Bad Faith
The Complainant contends that the domain name was registered and is being used in bad faith based on the following factors: (i) Respondent's knowledge of the Complainant's use of the ST. BALDRICK'S trademark at the time of registration of the domain name; (ii) Respondent's registration of a confusingly similar domain name by deletion of the letter “s” at the end of the word “baldrick's”; and (iii) use of a confusingly similar domain name for the purpose of monetary gain by providing links to other companies' products and services through a “click-through” scheme.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has marks; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the ST. BALDRICK'S Trademark, by virtue of two United States trademark registrations.
The Panel finds that the domain name is confusingly similar to the ST. BALDRICK's trademark, as it is virtually identical to the Complainant's trademark except for the deletion of the letter “s” at the end of the word “baldrick's”. This minor sort of “variation” does not serve to distinguish the domain name from the Complainant's Trademark. (See Volkswagen AG v. Digi Real Estate Foundation, WIPO Case No. D2005-0952 and America Online, Inc. v. John Zuccarini, WIPO Case No. D2000-1495).
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the domain name in question. The Respondent does not appear to have been known by the disputed name and is not using the domain name in connection with a bona fide offering of goods and services. The Panel finds that the Respondent's domain name provides links to goods and services, which include but are not limited to cancer therapy pharmaceuticals, cancer therapy centres and institutions and other types of products or facilities that are cancer-related, all of which are connected to the same services of the Complainant, in what appears to be a “click-through” site. Prior panels have decided that the use of confusingly similar domain names in connection with a “click-through” scheme does not serve to establish a bona fide offering of goods and services. (See The Evening Store v. Henry Chan, WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356).
The Panel also accepts that the Complainant never authorized, licensed or permitted the Respondent to use its ST. BALDRICK'S trademark.
The Panel is therefore, satisfied that the Complainant has made a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain name. Once a complainant has made this prima facie showing, the respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows that the Complainant's trademark ST. BALDRICK'S is distinctive and has been widely used for over 6 years. The Panel accepts that the mark is known and enjoys a reputation both in the United States of America and internationally, as a result of the Complainant's fundraising efforts and charitable events held across the United States of America and in approximately 10 countries around the world. The Complainant's trademark is apparently an invented name. In light of these facts, the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant's trademark rights when it registered the domain name .
The Panel is also prepared to find that the Respondent registered the domain name and is operating a website under that name for the purpose of monetary gain by providing links to sites of other companies which offer products and services connected to cancer research, pharmaceuticals and therapy, in the form of a “click-through” site. The Respondent has deliberately traded on the goodwill and reputation of the Complainant, by diverting Internet users intended for the Complainant's website to the Respondent's websites. Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate “click-through” sites, can be considered to be evidence of bad faith. (See CareerBuilder, LLC v. Names for Sale, WIPO Case No. D2005-0186 and Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765). The Panel notes that the Respondent's conduct, in diverting Internet users to its website for commercial purposes, is antithetical to the charitable purpose and goals of the Complainant. In the circumstances, the Panel finds this particular conduct to be compelling evidence of bad faith.
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: July 5, 2007
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