WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Fight For Sight, Inc. v. Moniker Privacy Services and F. Ciodo Case No. D2009-0024 1. The Parties
The Complainant is Fight For Sight, Inc., New York, New York, United States of America, represented by Kasowitz, Benson, Torres & Friedman LLP, United States of America.
The Respondents are Moniker Privacy Services, Pompano Beach, Florida, United States of America, and F. Ciodo, Asuncion, Alto Paraguay, Paraguay. 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2009. On January 12, 2009, the Center transmitted by email to Moniker Online Services, Inc. a request for registrar verification in connection with the disputed domain name. On January 13, 2009, Moniker Online Services, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 14, 2009 providing the name of the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on January 20, 2009 adding F. Ciodo as a co-Respondent to the originally named Respondent Moniker Privacy Services. The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Amended Complaint, and the proceedings commenced on January 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2009. The Respondents did not submit any Response. Accordingly, the Center notified the Respondents' default on February 17, 2009.
The Center appointed Joan Clark as the sole panelist in this matter on February 26, 2009. 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, a charitable organization founded in 1946 with the mission of supporting vision research in order to find the causes and cures of blindness, is the owner of United States trademark registration 2,707,228, registered April 15, 2003 on the principal register of the United States Patent and Trademark Office as a service mark consisting of a design and words. The design is of a torch emitting flames; the words are FIGHT FOR SIGHT superimposed on the torch.
The disputed domain name, , was created on August 21, 2006 and is scheduled to expire August 21, 2009. 5. Parties' Contentions A. Complainant
The Complainant explains that, in the original Complaint filed, the Respondent was named Moniker Privacy Services, being the registrant identified in the registrar's domain name search report. The Complainant was subsequently advised by the Center that Moniker Online Services had identified F. Ciodo as registrant and the Complainant amended the Complaint accordingly to add the name F. Ciodo as an additional Respondent. (a) Contention that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant states that it is a charitable organization founded in 1946 with the mission of supporting vision research in order to find the causes and cures of blindness. Since then, the Complainant asserts it has continuously and extensively used the name “Fight for Sight” to identify its organization, solicit charitable contributions, and provide grants to talented young researchers.
The Complainant has stated it obtained national registrations in the United States Patent and Trademark Office on April 11, 1972 and submits in support excerpts from publications of the United States Patent and Trademark Office showing two design marks, each portraying a torch emitting flames, and one with the words FIGHT FOR SIGHT above a torch and the other with the words THE FIGHT FOR SIGHT within the design.
According to the evidence submitted by the Complainant, both registrations are in the name of National Council to Combat Blindness, Inc.
The Complainant also asserts it is the owner of U.S. trademark registration 2,707,228 for FIGHT FOR SIGHT, granted on April 15, 2003, based on first use in commerce in December 1948. The Complainant has produced the result of an electronic search in the United States Patent and Trademark Office which shows this trademark consists of a torch emitting flames overlaid by the words FIGHT FOR SIGHT, registered in the name of Fight For Sight, Inc. as a service mark on the principal register. The services described are “charitable services, namely, raising funds for the awarding of research grants in the field of the prevention and cure of blindness and eye diseases.”
The description of the services for which this mark is registered is virtually identical to the description of services for the registration of the two marks in the name of National Council to Combat Blindness, Inc., mentioned above.
The Complainant asserts that it uses the mark FIGHT FOR SIGHT as part of its charitable activities. This includes funding approximately 2,600 fellowships, post-doctoral fellowships and grant-in-aid since the organization's founding over 60 years ago, and expands at length on these charitable activities, including funding of research grants, solicitation of charitable donations and publicising recent awards and research findings.
The Complainant states that the domain name, , is identical to the Complainant's registered trademark FIGHT FOR SIGHT except for the addition of the generic top-level domain (gTLD) “.org” and the removal of spaces between the three words. (b) Contention that the Respondents have no rights or legitimate interests in respect of the domain name
The Complainant maintains that the Respondents have never been authorized by the Complainant to use the Complainant's mark in any way, shape or form, much less as part of a domain name. Upon information and belief, the Complainant states that the Respondents have never been commonly known by the name “Fight for Sight” and have not acquired trademark or service mark rights in it.
In addition, the Complainant maintains that the Respondents have never made any use of or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Complainant asserts that the disputed domain name resolves to a portal site that provides links to third-party websites, including other charitable organizations that solicit donations or offer grants in competition with the Complainant.
The Complainant further states the Respondents presumably receive compensation for this misdirection.
The Complainant asserts that, in numerous decisions under the Policy, the practice of operating a “link farm”, in which a revenue stream is derived by the device known as pay-per-click whereby owners of the target links pay money to the respondents in return for the referral of prospective customers to them has been found not to confer a right to or legitimate interest in the disputed domain name.
The Complainant adds that the Respondents' registrar, “Moniker Online Services, Inc.”, which has a similar name and the same mailing address as the Respondent “Moniker Privacy Services”, operates the website “M” on which it advertises the sale of domain names. (c) Contention that the domain name was registered and is being used in bad faith
The Complainant asserts that the Respondents appear to be cyber squatters with a long history of operating multiple domain names as “link farms”, and further states that in numerous UDRP decisions in which “Moniker Privacy Services” appears as a respondent, the website to which the disputed domain name resolved was a commercial website with sponsored links, and “Moniker Privacy Services” was holding the domain name on behalf of a third party who never responded to the Complaint at issue in the case. In support, the Complainant refers to the following decisions: Jesús Encinar v. Registrant [1116922], Moniker Privacy Services / Michael Doson,WIPO Case No. D2008-0568; Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services,WIPO Case No. D2008-1179; Antler Limited v. Moniker Privacy Services / PabloPalermao,WIPO Case No. D2008-0619; ANOVO v. Moniker Privacy Services / Alexander Lerman,WIPO Case No. D2008-1049; ADT Services AG. v. Global Access / Moniker Privacy Services,WIPO Case No. D2008-0680.
The Complainant continues that the Respondents have deliberately prevented the Complainant from using its mark as a domain name under the “.org” category of “gTLD” which is also indicative of the Respondents' bad faith, especially considering Moniker Privacy Services' pattern of such conduct.
In addition, the Complainant maintains that further evidence of the Respondents' bad faith is that the Respondents intentionally attempt “to attract for commercial gain, Internet users to the Respondents' website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondents' website or location or of a product or service on the Respondents' website or location”.
When a user arrives at the Respondents' website, the Complainant asserts that the disputed domain name resolves to a webpage that only provides links to other websites, in the guise of offering grant application information, charitable donation opportunities, and information about ophthalmologic-related goods or services.
The Complainant asserts that none of these goods and services is actually provided by the Respondents' website, but only by links and that, by contrast, the Complainant offers many of the same goods and services, such as the ability to make charitable donations to an ophthalmology-related cause, and the ability for ophthalmologic researchers to apply for grants, through authorized channels including the Complainant's “” website that has been in operation since 1999.
Thus, according to the Complainant, the Respondents' website is a “link farm” that provides users with links to websites that offer goods and services that are directly competitive with the goods and services offered by the Complainant.
The Complainant asserts that such link farms have regularly been found to be operating in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondents
The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that, in order to be successful with respect to a disputed domain name, the Complainant has the burden of proving that all three elements are present in the Complaint, namely:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4(a)(iii) above, shall be evidence of registration and use of a domain name in bad faith but are not limitative.
Paragraph 4(c) of the Policy sets out three illustrative circumstances each of which, if proven, shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name for purposes of paragraph 4(a)(ii) above. A. Identity of Respondents
The Panel finds that the originally named Respondent, Moniker Privacy Services, continues to be properly named as a Respondent. Reference is made to cases involving the use of privacy services, wherein both the privacy service provider and the name of the registrant communicated to the Center by the registrar are properly identified as respondents. See ADT Services AG. v. Global Access/Moniker Privacy Services,WIPO Case No. D2008-0680 and cases there cited. B. Identical or Confusingly Similar
The Complainant relies on three United States service mark registrations.
Two of these service marks, both registered in the United States Patent and Trademark Office on April 11, 1972, are for designs, each portraying a torch emitting flames, one with the words FIGHT FOR SIGHT above a torch and the other with the words THE FIGHT FOR SIGHT within the design.
According to the evidence submitted by the Complainant, both registrations are in the name of National Council to Combat Blindness, Inc. No explanation is provided by the Complainant as to any relation between the registrant so named and the Complainant itself.
The Panel is therefore obliged to disregard the above two registrations.
The third registration submitted by the Complainant is for a mark consisting of a design of the words FIGHT FOR SIGHT superimposed on a torch emitting flames, registered in the name of the Complainant as a service mark on the principal register in the United States Patent and Trademark Office on April 15, 2003 with a date of first use in 1948. The services described are “charitable services, namely, raising funds for the awarding of research grants in the field of the prevention and cure of blindness and eye diseases.” The description of the services for which this mark is registered is virtually identical to the description of services for the registration of the two marks in the name of National Council to Combat Blindness, Inc., mentioned above, which would seem to indicate some relation to the Complainant and which the Panel would have expected the Complainant to have explained where it chose to rely on those marks.
While the representation of the torch is an important part of the design mark registered April 15, 2003, the words FIGHT FOR SIGHT are in large letters and have a meaningful impact. In the Panel's view, these words form a principal and easily recognized component of the mark. The Panel finds that the domain name in dispute, , is confusingly similar to the Complainant's said mark. The appearance in the domain name of the gTLD suffix “.org” and the removal of the spaces between the three words in the registered mark do not detract from the issue of identical or confusingly similar.
The words “Fight for Sight” alone have been used extensively in the publications and literature submitted by the Complainant. The question whether these words, often used as a trade name, may also be considered to be used as an unregistered service mark, is problematic.
In view of the Panel's conclusion that the domain name in dispute is confusingly similar to the Complainant's registered trademark no. 2,707,228 in which the Complainant has rights, the Panel considers that it is not necessary to decide the question of identical or confusingly similar based on unregistered use of the words “Fight for Sight” alone, apart from the torch.
The Complainant has established the first element in order for the Complaint to succeed. C. Rights or Legitimate Interests
The overall burden of establishing the three elements for a successful challenge to a domain name registration lies on the complainant. However, once a complainant has made a prima facie case that the respondent has no rights or legitimate interests in a mark, the burden of proving the contrary, which would involve matters particularly within the knowledge of the respondent lies on the latter. See Perfetti Van Melle Benelux BV v. Jesse Lebiwotz,WIPO Case No. D2008-1383 and decisions there referred to.
In the present case, the Respondents have not replied to the Complainant's contentions. In the absence of any argument or evidence forthcoming from the Respondents, the Panel concludes that the Complainant has established that the Respondents were not known by the domain name in dispute, have not made any use of or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services and have not been authorized by the Complainant to use the Complainant's mark. The Panel, also in view of the Panel's findings below, finds that the Respondents have no rights or legitimate interests in the domain name in dispute, and the second element required for the Complaint to succeed has been established. D. Registered and Used in Bad Faith
There is no evidence in the material submitted by the Complainant that the Respondents made any bona fide use of the disputed domain name, except as a link farm, by misleading Internet users wishing to access a site associated with the Complainant by directing them first to the Respondents' site under the disputed domain name, and from there to the Complainant's competitors. Such link farms have in certain circumstances been found to be operating in bad faith. See Société Air France v. FP Transitions Pty Ltd., WIPO Case No. D2007-0988.
As discussed under A above, the Panel has found that the domain name is confusingly similar to the Complainant's registered service mark which includes the words FIGHT FOR SIGHT. It is highly improbable that the Respondents were unaware of the Complainant's service mark when the domain name was first registered and then used. The Panel finds that by registering and using the domain name, the Respondents have intentionally attempted to attract Internet users to their web site by creating a likelihood of confusion with the Complainant's mark and have then diverted the users so attracted to web sites of the Complainant's competitors. The Panel concludes this was done for commercial gain, probably by payment to the Respondents of a referral fee for visits deflected to competitors' sites.
Not having filed any Response, the Respondents have failed to rebut the Complainant's contentions thereby leaving the Panel to draw inferences in accordance with paragraph 14(b) of the Rules.
The Panel concludes that the domain name was registered and is being used in bad faith and the third element required for the Complaint to succeed has been established. 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.
Joan Clark
Sole Panelist
Dated: March 12, 2009
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