Complainant is Save the Children Federation, Inc. of Westport, Connecticut, United States of America, represented by Weil, Gotshal & Manges LLP of New York, New York, United States of America.
Respondent is Metro Properties LLC of Anchorage, Alaska, United States of America. 2. The Domain Names and Registrar
The Disputed Domain Names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 20, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Disputed Domain Names. On September 21, 2010, the Registrar 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” 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 September 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2010.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 21, 2010. 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 states that it is a “not-for-profit corporation that provides health, education, living essentials, fund-raising and other assistance for impoverished children and their families throughout the United States (“U.S.”) and brings health, education, economic opportunity and emergency relief to nearly 12 million children in over 45 developing countries.” Complainant further states that it “has operated since 1939 and is now one of the most famous charities in the United States and throughout the world.”
Complainant has provided copies of relevant trademark registration certificates showing that it is the owner of the following:
- U.S. Reg. No. 2,582,204 for SAVE THE CHILDREN (first used on November 30, 1939; registered on June 18, 2002)
- U.S. Reg. No. 1,380,438 for SAVE THE CHILDREN (first used in 1980; registered on January 28, 1986)
- U.S. Reg. No. 991,617 for SAVE THE CHILDREN FEDERATION (first used in November 1939; registered on August 20, 1974)
The above trademarks are referred to hereafter as the “SAVE THE CHILDREN Trademark.”
Complainant states that it is the registrant of numerous domain names, including (since 1995) , which it uses in connection with a website “explaining its mission and programs to help children, and reaching out to potential volunteers, sponsors, and donors.”
Respondent registered both of the domain names and (the “Disputed Domain Names”) on July 18, 2009. According to the Complaint as well as screenshots provided as annexes by Complainant, Respondent is using the Disputed Domain Names in connection with monetized parking or landing pages, which appear to contain numerous links for products or services offered by third parties, including links labeled “Help Us Save Lives,” “Homeless Children,” “Hungry Children” and “How I Get Free Food,” among many others.
Complainant states that its counsel sent a demand letter to Respondent on June 3, 2010, regarding the Disputed Domain Name . According to an e-mail provided by Complainant, Respondent replied to this letter on June 11, 2010, stating, in part:
“As you may be aware, with the explosion of the internet and domains, there has been a scramble by speculators or entrepreneurs to purchase popular names or names which we believe may become popular, so we can resell them for a profit. In fact, many businesses will buy numerous domain names that are similar, or may be abbreviations or acronyms, or with different suffexes [sic] in order to get them off the market and prevent somebody else purchasing it.
After consulting with my attorney, and in the best interests of a speedy resolution, I’ve been advised to offer to sell my domain to your client.
I am unwilling to give it up for free since I purchased it. However, I am willing to sell it, and I am asking $2,500.00 for my website.” 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Names are confusingly similar to the SAVE THE CHILDREN Trademark because the only differences between the domain names and the trademark are the insertion of hyphens, which “are immaterial for assessing similarity.”
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because “it is apparent that the goal of Respondent’s websites is to divert internet traffic from Complainant’s site and redirect those uses to other sites offering goods and services for Respondent’s own commercial gain” and “Complainant has never granted any… authorization to Respondent”.
- The Disputed Domain Names were registered and are being used in bad faith as shown “in four distinct ways: (i) by engaging in his self-admitted ‘scramble’ to purchase popular domain names – without authorization – that are confusingly similar to well know, famous and distinctive trademarks; (ii) by demanding Complainant purchase the Domain Name; (iii) by diverting consumers from the Save the Children website to its own website for its own commercial gain; and (iv) by using the Disputed Domain Names to advertise other services and marketing itself as being associated with Complainant’s famous marks, which causes consumer confusion as to the source, sponsorship or endorsement of the website.” B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is obvious that Complainant has rights in the SAVE THE CHILDREN Trademark, and Respondent does not dispute the validity of the SAVE THE CHILDREN Trademark. Further, although not cited by Complainant, at least two previous panels under the Policy have found the same. Save the Children Federation, Inc. v. Steve Kerry, North West Enterprise,Inc,WIPO Case No. D2009-1404 (transfer of ); and Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc.,WIPO Case No. D2006-0388 (transfer of ).
As to whether the Disputed Domain Names are identical or confusingly similar to the SAVE THE CHILDREN Trademark, the relevant comparison to be made is with the second-level portion of each Disputed Domain Name only (i.e., “save-the-children”), as it is well-established that the top-level domain names (i.e., “.com” and “.org”) should be disregarded for this purpose.
The Panel agrees with the panel’s holding in a previous decision under the Policy cited by Complainant, National Football League v. Online Marketing International also known as International Marketing Group,WIPO Case No. D2008-2006, that “hyphens have no bearing on the meanings those Domain Names convey to Internet users”.
Accordingly, each of the Disputed Domain Names is confusingly similar to Complainant’s SAVE THE CHILDREN Trademark, and the Panel is convinced that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant alleges that, inter alia, “it is apparent that the goal of Respondent’s websites is to divert [I]nternet traffic from Complainant’s site and redirect those uses to other sites offering goods and services for Respondent’s own commercial gain” and “Complainant has never granted any… authorization to Respondent”.
Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, the Panel finds bad faith at least pursuant to paragraphs 4(b)(i) and 4(b)(iv). With respect to paragraph 4(b)(i), the Panel agrees with Complainant’s conclusion that, as evidenced by Respondent’s e-mail in response to Complainant’s demand letter.1 Respondent has effectively admitted to registering the Disputed Domain Names to sell them for a profit. Further, Respondent did not in its e-mail offer any documentation of its out-of-pocket costs related to the Disputed Domain Names, and the monetized parking or landing pages associated with the Disputed Domain Names do not indicate that Respondent has in any way incurred any expenses related to the Disputed Domain Names other than the registration fees. Conduct such as that exhibited by Respondent has since the earliest days of the Policy been found to constitute bad faith. See, e.g., United States Olympic Committee v. MIC,WIPO Case No. D2000-0189 (“the act of registering and then offering to sell a domain name supports a determination of bad faith”) (punctuation omitted).
With respect to paragraph 4(b)(iv), numerous panels have found that “where, as here, the links are apparently to competitive websites, especially when there is no indication that the links are not sponsored by or affiliated with the relevant trademark owner, such activity indicates bad faith under the Policy.” Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850.
Therefore, the Panel is convinced that Complainant has proven the third element 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 Names and be transferred to Complainant.
Douglas M. Isenberg
Sole Panelist
Dated: November 4, 2010
1 The Panel has taken note that Respondent’s offer to sell pertained to the Domain Name only. However, the Panel finds it reasonable in the circumstances to accept that the intent with respect to the Domain Name is likely to have been similar.
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