WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GuideStone Financial Resources of the Southern Baptist Convention v. Igor Nikolenko
Case No. D2008-0236
1. The Parties
The Complainant is GuideStone Financial Resources of the Southern Baptist Convention, of United States of America, represented by Bell Nunnally & Martin LLP, United States of America.
The Respondent is Igor Nikolenko, of Ukraine.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2008. On February 15, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On March 5, 2008, Moniker Online Services, 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 March 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 27, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2008.
The Center appointed Thomas Hoeren as the sole panelist in this matter on April 7, 2008. 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 Guidestone Financial Resources of the Southern Baptist Convention, a Texas non-profit corporation. He is a provider of retirement, insurance, investment management, and executive planning products and services.
The Complainant has registered several trademarks including the trademark GUIDESTONE and other marks incorporating the GUIDESTONE mark. Inter alia, the US Federal trademark GUIDESTONE (No. 3242186) which was registered in May 15, 2007 and the US word mark GUIDESTONE (No. 2940476) which was registered on April 12, 2005 for financial services and insurance business.
5. Parties’ Contentions
A. Complainant
The Complainant states: The domain name is confusingly similar to the Guidstone Marks because it incorporates the Complainant’s distinctive trademark GUIDESTONE in its entirety. To the best of the Complainant’s knowledge, the Respondent also has never used the domain name for any bona fide, non-commercial use. Prior acts of cybersquatting support a finding of bad faith in the Respondent’s registration of the domain name as the Respondent has been the respondent in at least one proceeding brought under the UDRP, Pelle Pelle, Inc. v. Mr. Igor Nikolenko,WIPO Case No. D2002-1002. Furthermore, the Respondent’s registration and use of the Domain Name is in bad faith because the domain name unlawfully trades on the name recognition and goodwill associated with the Guidestone Marks.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute:
“A Panel shall 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 states that, for a complaint to be granted, the Complainant must prove each of the following:
(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and
(ii) that the Respondent has no rights or no legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is used in bad faith
A. Identical or Confusingly Similar
The disputed domain name incorporates the Complainant’s trademark GUIDESTONE in its entirety, in combination with the generic term “insurance”.
Though the disputed domain name is not identical to the trademarks owned by the Complainant, it is confusingly similar to the Complainant’s trademarks.
The suffix “insurance” relates to the business of the Complainant who is dealing with insurance products and services. The combination of “guidestone” and “insurance” increases the risk of being confusingly similar insofar as a third party might be thinking that the domain name belongs to the insurance company Guidestone. The case is thus similar to the Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 where the panel regarded “chanelstore” as being confusingly similar to the trademark CHANEL. The addition of the generic term “insurance” is thus not sufficient to avoid confusion (EAuto, L.L.C. v. Triple S.Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047).
B. Rights or Legitimate Interests
The Respondent has not filed any Response to the Complaint filed. Consequently, the Respondent has not alleged any facts or elements to justify prior rights or legitimate interests of the said domain name. As the Complainant demonstrated, no trademarks including the word “Guidestone” appear to have been registered by the Respondent in either the United States of America or Ukraine, the Respondent’s country of residence.
Furthermore, the Complainant does not appear to have authorized the Respondent to use its trademarks and in particular to register a domain name composed of the Complainant’s trademarks. The Respondent uses the disputed domain name to display and promote links to health, life and insurance providers that compete with the Complainant. The use of the domain name at issue to direct Internet users to other websites does not itself constitute a legitimate interest in the domain name (cf. AltaVista Company v. Andrew Krotov, WIPO Case No. D2000-1091, ; Liseberg AB v. Administration Local Manage Technical,WIPO Case No. D2003-0864, ).
Thus, the Panel concludes that the Respondent has no rights or legitimate interests, within the meaning of paragraph 4(a)(ii) and (c)(i-iii) of the Policy in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith. Here, the Respondent is free riding on the reputation and goodwill embodied in the Complainant’s trademarks in order to attract Internet users for commercial gain and therefore falls within the example given in the Policy’s Paragraph 4(b)(iv).
When entering the disputed domain name into an Internet browser, Internet users will find links to health, life and insurance providers that compete with the Complainant. The Website contains a link entitled “What is Guidestone”, suggesting that the Complainant is affiliated with or, sponsors, the Respondent�s website (Annex 5). Such use of the disputed domain name shows that the Respondent has intentionally attempted to attract Internet users to an on-line location by creating a likelihood of confusion with the Complainant’s trademarks. Internet users who type in the disputed domain name in their browser may well falsely believe that they use a website financed or operated by the Complainant. This is a source of likely confusion for Internet users. Creating such likelihood of confusion is an example of bad faith not only during the registration process of the disputed domain names but also in the use of disputed domain names.
This impression is supported by other peculiarities of the case. The Respondent appears to own about 1500 other domain names. His domain name includes for instance the domain (Annex 7 of the Complaint and ). Furthermore, the Respondent has been the respondent in at least one WIPO action for cybersquatting (see Pelle Pelle, Inc. v. Mr. Igor Nikolenko,WIPO Case No. D2002-1002).
The panel is thus satisfied that the Respondent registered and is using the domain name in bad faith in accordance with the criteria set out under paragraph 4(b)(iv) 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.
Thomas Hoeren
Sole Panelist
Date: April 12, 2008
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