Complainants are Military Order of the Purple Heart (“First Complainant”) and Military Order of the Purple Heart Service Foundation, Inc. (“Second Complainant”) of Springfield, Virginia, United States of America (“U.S.”) represented by Quarles & Brady LLP, U.S.
Respondent is Robert Capps of Citrus Heights, California, U.S., represented by Timothy J. Walton, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2012, naming WhoIs Privacy Services Pty Ltd. as Respondent. On February 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On February 21, 2012, the Registrar identified the actual registrant as, and provided contact details for N, which differed from the named WhoIs Privacy Services Pty Ltd. Respondent and contact information in the Complaint. The Center emailed a Notice of Change in Registrant Information to Complainants on February 22, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint.
On February 22, 2010, Robert Capps sent an email to the Center, “hoping to clarify the owner registrant status of ” and stating that he owns and , and that these two domains have never changed ownership since registration.
Complainants filed an amended Complaint on February 23, 2012 naming Robert Capps as Respondent.
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 Respondent of the Complaint, and the proceedings commenced February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 19, 2012. The Response was filed with the Center March 17, 2012.
The Center appointed Lynda J. Zadra-Symes, David H. Bernstein and Dana Haviland as panelists in this matter on April 19, 2012. The Panel finds that it was properly constituted. Each member of 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.
On May 14, 2012, the Center transmitted to Complainants and Respondent the Panel’s Procedural Order No. 1 requesting additional submissions from the parties. On May 25, 2012, Complainants submitted a response to the Panel’s Procedural Order No. 1. In an email dated May 29, 2012, Respondent’s counsel confirmed that he did not submit any response to the Procedural Order and did not intend to do so. 4. Factual Background
First Complainant Military Order of the Purple Heart is a Congressionally-chartered membership organization formed in 1932 for the protection and mutual interest of combat-wounded veterans who have received the Purple Heart decoration, and provides information and promotes its services to these veterans through its website at “”.
Second Complainant Military Order of the Purple Heart Service Foundation is a charitable foundation formed in 1957 that performs fundraising services for First Complainant through its website at “”. Second Complainant conducts fundraising for the Military Order combat-wounded veterans and for other unrelated veteran related organizations through the collection of used household items and clothing, the operation of thrift stores, and donation of automobiles through its websites at “” and “”.
First Complainant owns the following U.S. Trademark Registrations:
Registration No. 2,206,764 for the mark PURPLE HEART, filed July 2, 1997 and registered December 1, 1998, claiming first use February 1, 1939 in connection with magazines for combat wounded veterans;
Registration No. 2,206,761 for a design mark including the words MILITARY ORDER OF THE PURPLE HEART, filed July 2, 1997, registered December 1, 1998, claiming first use April 1, 1940 in connection with cloth flags, flag sets and banners;
Registration No. 2,212,475 for a design mark including the words MILITARY ORDER OF THE PURPLE HEART OF THE USA, filed July 2, 1997, registered December 22, 1998, claiming first use April 1, 1944 in connection with ball point pens, decals, informational brochures about military history and fraternal activities for combat-wounded veterans;
Registration No. 2,206,762 for a design mark including the words MILITARY ORDER OF THE PURPLE HEART OF THE USA, filed July 2, 1997, registered December 1, 1998, claiming first use in 1951 in connection with plaques;
Registration No. 2,206,768 for a design mark including the words MILITARY ORDER PURPLE HEART OF THE USA filed July 2, 1997, registered December 1, 1998, claiming first use May 1, 1939 in connection with ornamental pins, medals, tie tacks, precious metal money clips; medallions; bolo ties with precious metal tips; clocks; watches;
Registration No. 3,735,894 for a design mark including the words MILITARY ORDER PURPLE HEART OF THE USA filed November 20, 2008, registered January 12, 2010, claiming first use July 14, 2008 in connection with brief bags, caps and T-shirts; and
Registration No. 3,738,805 for a design mark including the words MILITARY ORDER PURPLE HEART OF THE USA filed November 20, 2008, registered January 19, 2010, claiming first use June 6, 2008 in connection with duffle bags and brief bags, and claiming use August 11, 2008 in connection with clothing;
Second Complainant owns the following U.S. Trademark Registrations:
Registration No. 2,208,425 for a design mark including the words MILITARY ORDER OF THE PURPLE HEART SERVICE FOUNDATION, filed July 7, 1997, registered December 8, 1998, claiming first use August 26, 1958 in connection with association services, namely, promoting the interests of combat-wounded veterans, their dependents and survivors; and
Registration No. 4,015,788 for the mark PURPLE HEART filed January 28, 2011, registered August 23, 2011, claiming first use 1991 in connection with charitable fundraising.
Respondent Robert Capps has confirmed in a February 22, 2010 letter to the Center that he is the owner of and of , which the Registrar has identified as the registrant of the domain name. Respondent is an Internet broker who owns hundreds of domain names offered for sale at n, including the domain name.
The domain name was registered on January 18, 1998 with Network Solutions. The registration was later transferred to the current registrar, F, using that registrar’s WhoIs Privacy Service. 5. Parties’ Contentions A. Complainants
Complainants contend that they have exclusive trademark rights in the term PURPLE HEART, including common law rights dating back to at least 1957, as well as the registered rights referenced above, that Respondent’s domain name incorporates Complainants’ PURPLE HEART mark, that Complainants gave no permission to Respondent to use the mark, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent registered and used the domain name in bad faith, including by collecting revenue by accepting donations purportedly for military veterans organizations.
Complainants submitted various documentary exhibits as Annexes to the Complaint. B. Respondent
Respondent submitted a Response denying the allegations of the Complaint and contending, among other things, that “Respondent, Robert Capps, registered the domain name and created the web site for his brother, David Capps, who was awarded the Purple Heart for heroism in the line of duty in 1968. [...] The web page at provides information about the Purple Heart service medal and individual recipients, including David Capps, the brother of Respondent, as well as links to other web sites and comments from visitors.” Respondent contends that “he has been using [the domain name] for more than ten years and is publicizing his brother’s award of the purple heart medal.”
Respondent did not submit any documentary evidence with the Response. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainants have submitted sufficient evidence to establish that, at the time of the Complaint, they owned trademark rights in two PURPLE HEART trademark registrations. Complainants also have alleged joint common law unregistered rights to a PURPLE HEART mark dating back to 1957, but the Panel need not determine whether these unregistered rights had been established before the January 18, 1998 registration of Respondent’s domain name, as the December 1998 Purple Heart trademark registrations submitted by Complainants are sufficient to establish their standing to bring this Complaint, despite the fact that the registrations were issued after Respondent’s January 18, 1998 registration of the domain name. For the same reason, the Panel also need not consider for purposes of this first factor the applicability of Complainants’ various other trademark registrations that contain the term PURPLE HEART along with other textual and/or design elements.
Under the Policy, “Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity under the UDRP. The UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired rights. However, in such circumstances it may be difficult to prove that the domain name was registered in bad faith under the third element of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.4. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270; Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827; Iogen Corporation v. IOGEN,WIPO Case No. D2003-0544 (no need to decide issue re: alleged unregistered rights, as trademark registrations submitted were sufficient to determine standing, though they did not predate the registration of the domain name). But see John Ode d/b/a ODE and ODE – Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074; Wildfire, Inc. v. Namebase,WIPO Case No. D2007-1611.
The domain name incorporates Complainants’ respective PURPLE HEART registered trademarks in their entirety and is identical to the marks except for the gTLD.
Accordingly, the Panel finds that Complainants have rights in trademarks to which the domain name is identical, and that Complainants have therefore satisfied the first element of their claim. B. Rights or Legitimate Interests
Complainants allege in the Complaint that Respondent is not, and has never been, authorized to use Complainants’ PURPLE HEART mark; that there is no evidence that, prior to any notice of the dispute, Respondent used, or made preparations to use, the domain name in connection with a bona fide offering of goods or services; and that Respondent is not making a legitimate noncommercial or fair use of the domain name.
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
The Complainants’ allegations in the Complaint and evidence submitted on this issue are sufficient to make out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. Complainants submitted evidence of the Respondent’s use of the domain name website as it appeared on February 15, 2012, including PPC links to other organizations that offer car donation services similar to those offered by Second Complainant, and not including any reference to Respondent’s brother David Capps on that date.
The burden of production thus shifted to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. Respondent failed to submit any credible evidence regarding his actual use of the domain name since its registration on January 18, 1998. His only proffer on this issue consists of his allegations in the Response to the effect that he had used the domain name website to honor his brother; that “The web page at provides information about the Purple Heart service medal and individual recipients, including David Capps, the brother of Respondent…”; and that he has the right to use even if Complainants have legitimate trademarks “because he has been using it for more than ten years and is publicizing his brother’s award of the Purple Heart medal.”
The active link to the website in the quoted sentence above from Respondent’s Response filed on March 17, 2012, showed a new reference link on the website to “David Capps US MARINES AWARDED PURPLE HEART”. The Panel noted in its review and comparison of the Complaint and the Response that the reference to David Capps on Respondent’s website, to which the link in the Response resolved, had not appeared on and was inconsistent with the February 15, 2012 screenshot submitted by Complainants. As discussed below with reference to Respondent’s bad faith, this evidence is not credible. On the contrary, it appears to be deliberately misleading.
In their Supplemental Submission in response to Panel Procedural Order No. 1, Complainants submitted a May 23, 2012 screenshot of Respondent’s website showing “the David Capps US MARINES AWARDED PURPLE HEART” link, to show that the reference to David Capps on Respondent’s website had appeared only after the initiation of the Complaint. Respondent submitted no response at all to the Panel’s Procedural Order No. 1, and failed to establish that the website made any reference to his brother until after the initiation of this dispute.
Accordingly, the Panel finds that Complainant has sustained its burden of showing that Respondent lacks any rights or legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy, and that Complainants have satisfied the second element of their claim. 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 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).
Complainants have not alleged bad faith registration and use under either paragraph 4(b)(i) or paragraph 4(b)(ii) of the Policy. They have alleged bad faith registration and use under paragraph 4(b)(iii) of the Policy, but have submitted no evidence in support of this claim.
Complainants have also alleged bad faith registration and use under paragraph 4(b)(iv) of the Policy, based upon a February 15, 2012 screenshot of the domain name attached as Annex 13 to the Complaint, which shows links to car donation programs offered by companies other than Complainants and shows no reference or link to information about Respondent’s brother David Capps, and upon a similar May 23, 2012 screenshot of Respondent’s website attached as Annex 3 of the Supplemental Submission, which does include the “David Capps US MARINE AWARDED PURPLE HEART” reference and link. These documents evidence Respondent’s current bad faith use in 2012 but do not in themselves provide a basis for an inference of bad faith registration fourteen years earlier, at the time of the registration of the domain name on January 18, 1998, and are thus insufficient to establish the third element of their claim, which requires a showing of both bad faith registration and use. See The Knot, Inc. v. Ali Aziz,WIPO Case No. D2007-1006.
However, Respondent has made specific statements in his Response, filed on March 17, 2012, that he registered the domain name solely to honor his brother, the recipient of a Purple Heart for heroism in the Vietnam War, and that he has used the domain name to honor his brother. These affirmative statements by Respondent as to his intent at the time of registration and as to his use of the website to honor his brother are immediately followed by a link to the website: “The web page at provides information about the Purple Heart service medal and individual recipients, including David Capps, the brother of Respondent, as well as links to other web sites and comments from visitors.” In arguing that the domain name was not registered in bad faith and is not being used in bad faith, Respondent further states that he has the right to use even if Complainants have legitimate trademarks “because he has been using it for more than ten years and is publicizing his brother’s award of the Purple Heart medal.”
Notwithstanding these statements with respect to (1) Respondent’s alleged sole intention to honor his brother by the 1998 registration of the domain name and (2) his subsequent use of the domain name for over ten years to honor his brother by publicizing his Purple Heart medal, there was no documentary evidence before the Panel that supported these assertions. The only documentary evidence submitted to the Panel with the Parties’ initial submissions demonstrated the absence of any reference to Respondent’s brother or his Purple Heart medal in the February 15, 2012 screenshot and the sudden appearance of such references on the website soon after the filing of the Complaint, as noted by the Panel in its own review and comparison of the Complaint and Annex 13 with the Response and its link to the domain name, and as confirmed by the May 23, 2012 screenshot submitted by Complainants in their Supplemental Submission.
In Panel Procedural Order No. 1, the Panel requested that both parties submit information and documents showing, inter alia, Respondent’s use of the domain name website after its registration on January 18, 1998, including specifically any evidence that the website was or was not altered in response to the Complaint and any evidence demonstrating the timing of the website’s disclosure of Respondent’s brother’s alleged military service and connection to the Purple Heart medal, as well as any screenshots of the Respondent’s use of the domain name after the January 18, 1998 date of registration, from the parties’ own records, or other identified source.1 Neither party objected to the request, but Respondent did not produce any documents or other response to Panel Procedural Order No. 1.
Respondent’s failure to substantiate his allegations about his alleged use of the domain name, considered along with the other documentary evidence in the record, supports a finding that Respondent did not include any reference to his brother, or his brother’s Purple Heart medal, until after this dispute arose, more than a decade after the domain name was registered. That long delay, and then the sudden revision of the website after the dispute arose, tend to raise an inference that Respondent’s claimed sole intention registering the domain name may also be suspect.
Respondent’s allegations as to his intent in registering the domain name and his use of the domain name are further belied not only by comparison of the pre-Complaint and post-Complaint screenshots of the use of the domain name, but also by his February 22, 2012 email to the Center confirming that he is the owner of both and , the registrant of the domain name.
From Respondent’s admission that he is the owner of “www.N”, a website where Respondent has listed hundreds of domain names for sale, including the domain name, and from the historical screenshots of N and the “www.” website described herein, it appears that Respondent’s assertion that he registered the domain name solely to honor his brother is unlikely. He has been an Internet domain name broker since at least 1998, registering domain names for the primary purpose of reselling them for a profit, and in the interim using them for the purpose of revenues from PPC links placed on the websites.
A screenshots of Respondent’s “www.N” website show that the domain name has been offered for sale there for various prices ranging from USD 5,000 to USD 15,000. Annex 2 to the Complaint evidencing Complainant’s WhoIs query shows that was offered for sale as recently as February 25, 2012.
Annex 13 to the Complaint and Annex 3 to Complainants’ Supplemental Submission show that the “www.” website is currently being used for PPC revenues, and screenshots show use of the “www.” website for similar PPC links in 2006, 2007, 2010 and 2011. Respondent admits in the Response that he has realized financial gain from the registration of the domain name and advertising placed at the address by the registrar.
Respondent argues that the Complainants do not have a monopoly on the use of the term “purple heart” and that he has a right to use the term in a domain name solely to honor his brother. Those issues need not be determined by the Panel in this case, because Respondent has not used his domain name solely to honor his brother. In light of all of the evidence, the Panel concludes that it cannot credit Respondent’s assertion that he registered the domain name solely to honor his brother, and thus the Panel need not consider whether Respondent might have registered and used the domain name in good faith had he in fact registered it for, and consistently used it to, honor his brother and his brother’s receipt of the Purple Heart medal.
Rather, the Panel finds (again, on the limited record presented, which is limited in part because of Respondent’s refusal to submit any documentary evidence in response to the Panel’s request) that Respondent, who has been an Internet domain name broker since at least 1998, registering domain names for the primary purpose of reselling them for a profit, and in the interim using them for the purpose of revenues from PPC links placed on the websites, likely registered the domain name for the same purpose of reselling the domain name for a profit, and in the interim, using it to collect PPC revenue.
The examples of bad faith registration and use set forth in Paragraph 4(b)(iv) of the Policy are not exhaustive. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (“Respondent's conduct does not fall within any of the circumstances specifically enumerated in paragraph 4(b) of the Rules. But that is not the end of the matter. These circumstances do not constitute a code and there are many other circumstances which may evidence bad faith.”); Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393 (“As the set of circumstances listed under paragraph 4(b) does not constitute a comprehensive listing, the Complainant can rely on other facts and circumstances to prove bad faith registration and use of the disputed domain name.”); Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273 (“The four circumstances exemplified in paragraphs 4(b)(i) - (iv) of the Policy are not exclusive and bad faith may be found alternatively.”).
The Panel finds that the apparently false statements made by Respondent in this proceeding with direct reference to his alleged intent in registering the domain name solely to honor his brother and his alleged use of the domain name for over ten years to publicize his brother’s receipt of the Purple heart medal are in themselves sufficient indicia of bad faith with respect to the registration and use of the domain name to satisfy the third element of Complainants’ claim. 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 Complainants.
Lynda J. Zadra-Symes
Presiding Panelist
David H. Bernstein
Panelist
Dana Haviland
Panelist
Dated: June 14, 2012
1 See WIPO Overview, paragraph 4.5. (“A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name, consulting a repository such as the Internet Archive (at www.) in order to obtain an indication of how a domain name may have been used in the relevant past, reviewing dictionaries or encyclopedias to determine any common meaning, or discretionary referencing of trademark online databases. […] If a panel intends to rely on information from these or other sources outside the pleadings, especially where such information is not regarded as obvious, it will normally consider issuing a procedural order to the parties to give them an opportunity to comment. Alternatively or additionally, if the panel feels that it requires supplemental information to make a decision in a proceeding, it can issue a procedural order to the parties requesting the submission of such information.”)
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