WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Royal National Institute for Deaf People v. Galina Budko N.A. Case No. D2009-1356 1. The Parties
Complainant is The Royal National Institute for Deaf People of London, United Kingdom of Great Britain and Northern Ireland (“UK” or “United Kingdom”) represented by Elizabeth Harding, United States of America.
Respondent is Galina Budko N.A. of T.Bophut, Koh Samui, Thailand. 2. The Domain Name and Registrar
The disputed domain name is registered with UdomainN LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2009. On October 13, 2009, the Center transmitted by email to UdomainN LLC a request for registrar verification in connection with the disputed domain name. On October 15, 2009, UdomainN LLC transmitted by email to the Center its verification response confirming that 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” 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 Respondent of the Complaint, and the proceedings commenced on November 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2009. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on November 30, 2009.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on December 3, 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
Complainant is a UK registered charity catering for people who are hearing impaired. According to Complainant, it previously owned the disputed domain name and operated a website to which the disputed domain name resolved. Due to an error on the part of Complainant's domain name manager, the disputed domain name registration was not renewed when it became due in February 2008 and the disputed domain name became available. It was then registered by Respondent on February 13, 2008 who thereafter operated a website at the disputed domain name replicating Complainant's former website and carrying advertisements for products aimed at the hearing disabled. Complainant's domain name manager, in August 2009, reported to Complainant that it had attempted to negotiate the repurchase of the disputed domain name but was unsuccessful. According to the domain name manager the price requested for the domain name by Respondent was in the region of USD5,000, A counter offer of the purchase for USD1,500 was made on August 18, 2009 but no reply was received.
In July 2008, Complainant had become aware that the website at the disputed domain name carried adult-oriented advertisements and materials and on August 26, 2009 Complainant requested that the website be taken down by the website host “on the grounds of defamation and copyright infringement”. That request was acceded to and the site content at the disputed domain name was disabled. On November 6, 2009, the date upon which the Complaint was notified to Respondent the website at the disputed domain name contained links to a large number of websites offering a wide variety of products and services including animals, furniture, dating services, religious services, and adult-oriented sites.
Complainant is, and has been since early 2005, well prior to the registration of the disputed domain name, the registered proprietor of UK and European Community trademarks consisting of, or including the mark RNID registered in respect of a range of goods and services in classes 9, 10, 16, 35, 36, 38, 41 and 44 of the International Classification. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to its registered trademarks and that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant contends that Respondent's demand for a sum in excess of USD5,000 for transfer of the disputed domain name, its unauthorised replication of Complainant's website and its use of the disputed domain name to promote advertisements for, and links to, adult-oriented and other websites, evidences Respondent's bad faith use and registration of the mark. Complainant contends that Respondent's use of the disputed domain name was an attempt intentionally to attract users to the website for commercial gain by creating a likelihood of confusion with Complainant's trademarks. B. Respondent
Respondent did not reply to Complainant's contentions. Respondent did however email the Center on October 26, 2009 stating “Should we get hard copies?” and on November 10, 2009, “Yes we have hard copies. But can you tell us in two simple words why they need this domain”. It is clear therefore that Respondent was properly notified of the Complaint. 6. Discussion and Findings
In order to succeed Complainant must establish each of the circumstances set out in paragraph 4(a) of the Policy, namely:
(i) the disputed name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The onus is on Complainant to establish each of these circumstances. A. Identical or Confusingly Similar
The disputed domain name consists of Complainant's registered trademark RNID with the addition of the domain denominator “.org”. The disputed domain name is therefore identical or confusingly similar to Complainant's registered trademark. B. Rights or Legitimate Interests
Respondent has not attempted to rebut Complainant's prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent's use of the domain name to advertise adult-oriented goods and services on a webpage which replicated Complainant's webpage does not constitute a bona fide offering for goods or services within the meaning of paragraph 4(c)(i) of the Policy (see, for example, Playboy Enterprises v. Movie Name Company,WIPO Case No. D2001-1201). There is nothing to suggest that Respondent was ever commonly known by the disputed domain name and there is a clear presumption that Respondent's use of the disputed domain name is commercial.
The Panel therefore finds that Respondent has no legitimate rights or interests in the disputed domain name. C. Registered and Used in Bad Faith
Complainant is a registered UK charity and is a longstanding registrant of the trademark RNID. Whilst it cannot necessarily be presumed per se that Respondent would have been aware of Complainant and its trademarks at the time it registered the disputed domain name, its use of the name strongly suggests that it was. Respondent's registration was opportunistic and its subsequent use of the disputed domain name raises a strong presumption that Respondent's purpose in acquiring the disputed domain name was to profit from whatever reputation that name may have had. Respondent's replication of Complainant's webpage and using it in conjunction with the advertising of adult-oriented and other goods and services clearly amounts to use in bad faith and is a strong indicator that the disputed domain name was registered with the intention of putting it to bad faith use. Respondent's demand for in excess of USD5,000 for the transfer of the domain name and its continuing use as a portal site, with a strong presumption that such use was for commercial gain, provides further evidence of bad faith use and registration. This is not a case such as that discussed by the learned panelist in Ville de Paris v. Jeff Walter,WIPO Case No. D2009-1278, where it is argued that paragraph 4(a)(iii) of the Policy may be satisfied even though there is no showing of bad faith at the time of acquisition of the domain name. Here the facts speak for themselves to show a strong presumption of bad faith intent from the outset. Respondent has not attempted to rebut that presumption.
The Panel therefore finds that the domain name was registered and has been used in bad faith. 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 Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: December 15, 2009
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