The Complainants are Military Order of the Purple Heart of Springfield, Virginia, United States of America (“USA”) and Military Order of the Purple Heart Service Foundation, Inc. of Annandale, Virginia, USA, represented by Quarles & Brady LLP, USA.
The Respondent is Privacy Protection Service INC d/b/a PrivacyP of Nobby Beach, Queensland, Australia/Sebastjan Stjepanovic of Šoštanj, Styria, Slovenia. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2014. On January 20, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 22, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on January 24, 2014 providing the registrant and contact information disclosed by the Registrar and invited the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 28, 2014.
The Center verified that 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 30, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was February 19, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 20, 2014.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on March 5, 2014. 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 paragraph 7 of the Rules. 4. Factual Background
The first Complainant (Military Order of the Purple Heart) is a federally chartered USA corporation that was formed in 1932 for the protection and mutual interest of all who have received the Purple Heart medal. It consists exclusively of those who have received the Purple Heart and is the only USA veterans service organization that is strictly comprised of “combat” veterans. The second Complainant (Military Order of the Purple Heart Service Foundation, Inc.) is a Wisconsin, USA corporation that was chartered in 1957, and is the exclusive national fundraiser for the first Complainant. Its objectives include raising funds for services, welfare and rehabilitation in connection with members of the first Complainant (i.e. receivers of the Purple Heart). The Complainants are the registered owners of the domain names , and , through which they promote their services. The Complainants also hold the registered trade mark rights in the USA for PURPLE HEART since 1998; MILITARY ORDER OF THE PURPLE HEART OF THE USA 1782 1932 & Design, since 1998; and MILITARY ORDER OF THE PURPLE HEART SERVICE FOUNDATION & Design, since 1998 (“Purple Heart Trade Marks”).
The Respondent is based in Slovenia. The Respondent registered the Disputed Domain Name on March 19, 2009 through the proxy service provider Privacy Protection Service INC d/b/a PrivacyP. 5. Parties’ Contentions A. Complainants
The Complainants’ contentions can be summarized are as follows:
a) The Complainants have been using the PURPLE HEART mark continuously and extensively since at least 1957. Since 1998, the Complainants have held the registered trade mark rights in the Purple Heart Trade Marks in the USA. Due to the Complainants’ extensive marketing of its services, the Purple Heart Trade Marks are well-known.
b) The Complainants have never authorized the Respondent to use the Complainants’ PURPLE HEART trade mark. There is also no evidence that the Respondent is using or has made any preparations to use the Disputed Domain Name for a bona fide offering of goods or services.
c) The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name. The Disputed Domain Name currently resolves to a website featuring links to advertisements that result in pay-per-click revenue. The Disputed Domain Name therefore threatens to divert donations away from the Complainants.
d) The Disputed Domain Name is not connected to the name of the Respondent, and there is no legitimate basis for the Respondent’s registration of the Disputed Domain Name.
e) The Respondent registered the Disputed Domain Name with full knowledge of the Complainants’ long prior use and ownership of its Purple Heart Trade Marks.
f) The Respondent registered the Disputed Domain Name in bad faith, in full knowledge of the Complainants’ existing prior rights in the well-known Purple Heart Trade Marks. The Respondent is using the Disputed Domain Name in bad faith, primarily for the purposes of disrupting the business, donations and advertising funds intended to support the services of the Complainants. The Respondent’s registration and use of the Disputed Domain Name is intended to attract consumers for commercial gain, by leading consumers into falsely believing that the Respondent is affiliated in some way with the Complainants, in order for the Respondent to generate pay-per-click revenue. B. Respondent
The Respondent did not reply to the Complainants’ contentions. Whilst failure to file a Response does not automatically result in a decision in favor of the Complainants, it may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainants are required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainants have rights in the PURPLE HEART mark based on their Purple Heart Trade Mark registrations in the USA.
The Disputed Domain Name incorporates the Complainants’ PURPLE HEART mark in its entirety, the only difference being the word “donations” that appears after the words “purpleheart” in the Disputed Domain Name. It is well-established that in cases where the distinctive and prominent element of a disputed domain name is the complainant's mark and the only addition is a generic term that adds no distinctive element, then such an addition does not negate the confusing similarity between the disputed domain name and the mark (see Goyard St-Honoré v Ye Shi, WIPO Case No. D2012-1178; Monsoon Acccesorize Limited v Zhang Qianqian, Fundacion Private Whois, WIPO Case No. D2012-1689; Diageo Ireland v. Guinnessclaim,WIPO Case No. D2009-0679; The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088). In fact, the Panel finds that the use of the generic word “donations” in the Disputed Domain Name only serves to increase the confusing similarity between the Disputed Domain Name and the Complainants’ Purple Heart Trade Marks, since the services provided by the Complainants are related to raising funds and collecting donations.
Further, it is also a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain extension, in this case “.net”, may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainants’ registered marks, and that paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainants are required to establish a prima facie case in respect of the lack of rights or legitimate interests of the Respondent in the Disputed Domain Name. Once a prima facie case is established, the Respondent then bears the burden of proving otherwise, failing which, paragraph 4(a)(ii) of the Policy shall be deemed to have been satisfied (see paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 and Accor v. Eren Atesmen,WIPO Case No. D2009-0701).
The Panel accepts that the Respondent is not a licensee nor is it associated with the Complainants in any way that could give rise to any licence, permission or other right by which the Respondent could own or legitimately use the Complainants’ PURPLE HEART mark or other Purple Heart Trade Marks. The Panel further accepts that the Respondent has not provided any evidence to demonstrate a registration of the PURPLE HEART trade mark anywhere in the world or any evidence that it has become commonly known by the Disputed Domain Name. Accordingly, the Panel is of the view that a prima facie case is established and it is for the Respondent to prove it has rights or legitimate interests to the Disputed Domain Name. However, as no Response was filed by the Respondent, the Panel will assess whether or not the Respondent has any rights in the Disputed Domain Name based on the inferences that can be reasonably drawn from the Complainants’ evidence and the website to which the Disputed Domain Name resolves (the “Website”).
The Website includes: (a) information in relation to the Complainants and the services they provide; (b) links to the Complainants' website; (c) a mark that is similar to the Complainants' Purple Heart Trade Marks; and (d) an image of the Purple Heart medal. The Website also includes a number of links to advertisements, which it is reasonable to assume that the Respondent receives revenue for every time a user clicks on one of the links, i.e. pay-per-click revenue. Based on the contents of the Website and the confusing similarity of the Disputed Domain Name to the Complainants’ PURPLE HEART trade mark, the Panel finds that the Respondent has been using the Disputed Domain Name to misleadingly divert consumers to its Website in order to generate pay-per-click revenue, which cannot confer any rights or legitimate interests to the Respondent in the Disputed Domain Name.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainants have satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
The Respondent registered the Disputed Domain Name more than 11 years and more than 52 years after the Complainants first registered and first began using the Purple Heart Trade Marks, respectively. It is clear from the contents of the Website that the Respondent must have been aware of the Complainants and their Purple Heart Trade Marks when the Respondent registered the Disputed Domain Name. The Website is dedicated to providing information in relation to the Complainants and the methods in which donations can be made. The way in which the contents of the Website are written, falsely suggests that donations can be made to the Complainants via the Website by clicking on the advertisement links that contain words such as “donate now”, “donate” or “donation” – the fact that they are advertising links, and in no way connected to the Complainants, may not be clear to users.
Further, whilst there is a statement on the Website that states that the Disputed Domain Name and Website are in no way affiliated with the Complainants, this disclaimer is not readily apparent to users.
Due to the contents of the Website and the confusing similarity between the Disputed Domain Name and the Complainants’ Purple Heart Trade Marks and the fact that the Respondent must have been aware of the Complainants’ and their Purple Heart Trade Marks at the time he registered the Disputed Domain Name (for the reasons stated above), the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith to mislead and confuse Internet users into falsely believing that the Disputed Domain Name is associated with the Complainants and its Purple Heart Trade Marks, in order to increase the number of Internet users that access the Website for commercial gain, i.e. to earn pay-per-click revenue. As stated in Paris Hilton v. Deepak Kumar,WIPO Case No. D2010-1364, “it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page…the confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay–per-click site that it then becomes clear that the website is unconnected with the trade mark holder.”
The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied. 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 Complainants.
Gabriela Kennedy
Sole Panelist
Date: March 11, 2014
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