WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Romance Writers of America, Inc. v. Domain Administrator, RWA of Canada Case No. D2009-0448 1. The Parties
The Complainant is Romance Writers of America, Inc. of Houston, Texas, United States of America, represented by Venable, LLP, United States of America.
The Respondent is Domain Administrator, RWA of Canada of St-Nicolas, Quebec, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with R Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2009. On April 7, 2009, the Center transmitted by email to R Corp. a request for registrar verification in connection with the disputed domain name. On April 7, 2009, R Corp. transmitted by email to the Center its verification response disclosing registrant information for the disputed domain name which differed from the named the Respondent in the Complaint. The Center sent an email communication to the Complainant on April 20, 2009 providing the registrant information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 20, 2009. The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2009.
The Center appointed George R.F. Souter as the sole panelist in this matter on May 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, Romance Writers of America, Inc. (known also as RWA) is organized as a nonprofit corporation, under Chapter 22 of the Texas Business Organizations Code, to serve as a professional association of romance writers.
It has more than 10,000 members, and operates 145 local and special-interest chapters, providing opportunities for members to come together to discuss the industry, build connections and find support. The Complainant's website lists 7 of these local chapters as being in Canada, namely Calgary Association of the Romance Writers of America, Greater Vancouver Chapter, Marshlands Romance Writers (Moncton, New Brunswick), Ottawa Romance Writers Association, Romance Writers of Atlantic Canada (Halifax, Nova Scotia), Toronto Romance Writers, Vancouver Island Chapter (Victoria, British Columbia).
The Complainant also organizes annual conferences, which include more than 100 workshops with topics ranging from beginning writing skills to the business side of being a working writer. Romance fiction editors and literary agents search for new talent in scheduled one-on-one interviews. The Complainant is also the sponsor of the industry's premier awards for published and unpublished romance writers, The RITA Award and the Golden Heart Contest. These contests recognize the best in romance fiction.
The Complainant is the proprietor of United States Federal trademark registration No. 1453699, registration date August 18, 1987, claiming use from 1981, of the trademark RWA, in respect of “trade association services in connection with the promotion of high quality romance writing”.
The Complainant has drawn the Panel's attention to the fact that the Respondent did not become the owner of the domain name at issue in these proceedings until sometime after June, 2007, in particular by drawing the Panel's attention to the fact that the owner of the domain name at June 26, 2007 was WHOISPROTECTION, of the Cayman Islands.
The Complainant has also drawn the Panel's attention to the content of the Respondent's website at December 2, 2008, which contains “pay-per-click” links to, inter alia, the Complainant. 5. Parties' Contentions A. Complainant
The Complainant alleges that the domain name at issue in these proceedings, , is, apart from the “.org” extension, identical to its registered trademark (mentioned above).
The Complainant further alleges that the Respondent has no rights or legitimate interests in the domain name at issue, pointing out the Respondent's recent acquisition of the domain name as opposed to the Complainant's long established use of its trademark, and the Respondent's use of a “pay-per click” feature with a direct link to the Complainant. In this latter, the Complainant has drawn the Panel's attention to a number of prior decisions, including HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062, and Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743, as establishing the proposition that “Where a Respondent uses a domain name that is identical to a registered trademark that might also otherwise be considered one or more dictionary words or an acronym, Respondent cannot use as his excuse the fact that the domain is one or two dictionary words or an acronym when the Respondent has used the site for pay-per-click links in the mark owner's own field of business.”
The Complainant also alleges that the domain name at issue was acquired and is being used in bad faith, relying on the “pay-per click” feature with a direct link to the Complainant. In this connection, the Complainant has drawn the Panel's attention to the decision in Factory Mutual Insurance Company v. Valuable Web Names,WIPO Case No. D2008-1014, in which bad faith knowledge of the Complainant by the Respondent was established where the Respondent's page contained links back to the Complainant's own business.
Additionally, the Complainant has drawn the Panel's attention to the decision in Lowen Corporation d/b/a Lowen Sign Company v. Henry Chan, WIPO Case No. D2004-0430, in which linking a domain name to a link parking page was held not to constitute a bona fide offering of services. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that a complainant must prove to merit a finding that the domain name of respondent be transferred to the complainant or be cancelled:
(i) the domain name is identical or confusingly similar to a trademark or service mark (“mark”) in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests 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
It has been well established in decisions under the Policy that an extension such as “.org” is a non-distinctive element when comparing a domain name with a trademark. The disputed domain name is identical to the Complainant's trademark.
Accordingly, the Panel finds that the Complainant has met the requirement of Paragraph 4(a)(i). B. Rights or Legitimate Interests
Although the Respondent's name as listed in the WhoIs data incorporates the element RWA of the domain name at issue, the Respondent did not offer any justification in these proceedings. There is no evidence before the Panel establishing that the Respondent is commonly known as “RWA”. The Panel is of the opinion that the “pay-per-click” feature of the Respondent's website with a direct link to the Complainant's long-established registered trademark is sufficient to deprive the Respondent of any claim to rights or legitimate interest in the domain name at issue, and, accordingly, finds that the Complainant has met the requirement of paragraph 4(a)(ii). C. Registered and Used in Bad Faith
In the current circumstances the Panel also believes that the “pay-per-click” feature of the Respondent's website with direct link to the Complainant's long-established registered trade mark is sufficient for the Panel to conclude here that the domain name was in all likelihood acquired by the Respondent in bad faith with intent to target the Complainant's mark, and that the domain name is being used by the Respondent in bad faith to generate revenue derived from likely confusion with such mark. Accordingly, the Panel finds that the Complainant has met the requirement of paragraph 4(a)(iii). 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.
George R. F. Souter
Sole Panelist
Dated: June 9, 2009
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