The Complainant is Stichting CORDAID of 's-Gravenhage, Netherlands represented by DLA Piper Nederland N.V., Netherlands.
The Respondent is Domain Name Proxy Service, Inc (Direct Privacy ID 97BEA) of Los Angeles, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with DirectNIC, LTD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2012. On January 23, 2012, the Center transmitted by email to DirectNIC, Ltd a request for registrar verification in connection with the disputed domain name. On January 23, 2012 DirectNIC, Ltd 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 January 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2012.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on February 23, 2012. 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, Stichting CORDAID, is an organization that is active in emergency, development aid and structural poverty reduction. The Complainant is the holder of a number of trademarks consisting of, or including “CORDAID”, registered in the Benelux, several African and Asian countries and Haiti. The Complainant is the holder of the following trademarks:
- CORDAID (+ design), registered in classes 36, 41, 42, 44 and 45 with the Benelux Office for Intellectual Property under number 0724885 on June 6, 2003 and duly renewed;
- CORDAID (word mark), registered in classes 9, 16, 35, 36 and 41 with the Benelux Office for Intellectual Property under number 0773660 on September 12, 2005.
According to the WhoIs records, the registrant of the disputed domain name is Domain Name Proxy Service, Inc., Direct privacy, the Respondent in this case. The WhoIs records indicate that the disputed domain name was registered on December 16, 2004 with DirectNIC, Ltd.
The Respondent uses the disputed domain name to refer to a parking page with a search field and sponsored links. The Respondent did not reply to the Complaint. 5. Parties’ Contentions A. Complainant
The Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used the disputed domain name since its registration. Finally, the Complainant considers that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. The disputed domain name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The first trademark application in the CORDAID mark (which was subsequently withdrawn) dates back to 1999 and since July 1, 2003 various CORDAID marks that are still active were registered for the Complainant.
The Panel considers the CORDAID trademark to be identical to the disputed domain name. Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
The consensus among UDRP panelists is that a complainant need only make a prima facie showing that the respondent has no rights or legitimate interests in the domain name in order to place the burden of rebuttal on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. As discussed below, the Complainant has adduced evidence sufficient to support a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has failed to come forward with credible evidence to rebut that showing.
The Panel notes that the Respondent has not been commonly known by the disputed domain name and that the Respondent has not acquired trademark or service mark rights in the distinctive part of the domain name (“CORDAID”). The Respondent’s use and registration of the disputed domain name was not authorized by the Complainant, and there are no indications of any connection between the Complainant and the Respondent.
Furthermore, the Panel is of the opinion that the Respondent is not ”making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Policy, paragraph 4(c)(iii). First, the Respondent obviously is making “commercial gain” by virtue of the pay-per click (PPC) links on the page. That “commercial gain” appears to be based on the misleading diversion of some consumers, to the extent they navigate to the “www.” website because they believe it to be associated with the Complainant. Further, the Respondent’s use of the domain name to resolve to a PPC parking page, containing sponsored links, cannot be considered “fair” on the facts of this case. Registering a domain name for such pages might be fair, and hence legitimate, if the name was being used for its generic or descriptive value and if the sponsored links on the page were related to that generic or descriptive value. See, e.g., Landmark Group v. DigiM, L.P., NAF Claim No. 285459 (legitimate interest “[if] the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks”); National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424 (“A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant. . . . It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered.”); Havanna S.A. v. Brendan Hight, Mdnh Inc,WIPO Case No. D2010-1652 (“Prior decisions under the UDRP show there may well be a legitimate interest if the domain name is a generic word or a geographic indicator, provided it is not used to trade on the trademark owner’s goodwill.”). However, it is not legitimate to register a domain name and use it for a PPC parking page where the domain name is a trademark and has no dictionary or descriptive meaning, and where the sponsored links have no relationship to any alleged descriptive meaning of the domain name. See Ustream.TV, Inc. v. Vertical Axis, Inc.,WIPO Case No. D2008-0598, mVisible Technologies, Inc v. Navigation Catalyst Systems, Inc.,WIPO Case No. D2007-1141; Mobile Communication Service Inc v. WebReg, RN,WIPO Case No. D2005-1304; Gerber Products Co. v. LaPorte Holdings,WIPO Case No. D2005-1277; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Champangne Lanson v. Development Services/MailP,WIPO Case No. D2006-0006; and The Knot, Inc. v. In Knot we Trust Ltd,WIPO Case No. D2006-0340).
There is no dictionary meaning for the term “cordaid.” The value of the disputed domain name to the Respondent is, therefore, its value as a trademark referring to the Complainant. Additionally, the sponsored links on the page are not being used to advertise goods or services that have any generic or descriptive meaning related to the disputed domain name. There is thus no clear link between the disputed domain name and the content of the parking page. By generating automated links that are not related to the dictionary or descriptive meaning of the disputed domain name, the Panel concludes that the Respondent is taking advantage of the Complainant’s trademark, since Internet users looking for the Complainant may land on a PPC parking page which has no link whatsoever with a descriptive meaning of the “cordaid” sign. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. See e.g. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052.
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use are the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a web site 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 web site or location or of a product or service on the web site or location and the registration or the registration of domain names primarily for the purpose of disrupting a business. 1. Bad Faith Registration
The Panel finds that the Respondent must have had knowledge of the Complainant’s rights in the CORDAID trademark at the moment he registered the disputed domain name, since the Complainant is extensively using its trademark. It is inconceivable that when the Respondent registered the disputed domain name, especially given the Respondent’s lack of rights to or legitimate interests in the disputed domain name, it came up with the disputed domain names by himself. 2. Bad Faith Use
The Respondent is using the domain name as a PPC parking page, and thereby passively holding the disputed domain name. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as the respondent preventing a trademark or service mark holder from reflecting its mark in a corresponding domain name, the failure of the respondent to respond to the complaint, the concealment of identity, etc. (See e.g., Telstra Corporation Limited, supra; Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763).
In the present case, the Respondent did not respond to the Complaint. Furthermore, the Respondent appears to be a privacy service, which indicates that the person or entity that performed the registration may be concealing its identity. Furthermore, the Complainant is a non-for profit organization. By registering a domain name in the .org domain, which was specifically intended for organizations, it seems that the Respondent’s primary purpose for registering the disputed domain name containing the Complainant’s trademark is to disrupt the organization and business of the Complainant.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Dated: March 15, 2012
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