Complainant is Generate4 Schools, LLC of Amesbury, Massachusetts, United States of America (“US”) represented by Hinckley, Allen & Snyder, LLP, US.
Respondent is P of Phoenix, Arizona, US / MiCamp Merchant Services of Phoenix, Arizona, US, internally represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 12, 2014. On June 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on June 22, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2014. The Response was filed with the Center on July 15, 2014.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 23, 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 the Rules, paragraph 7. 4. Factual Background
Complainant is a company that offers merchants an opportunity to contribute funds to schools and charitable organizations by providing credit card payment processing services through vendors selected by Complainant whereby a portion of the fees charged normally by credit card companies are used instead to fund schools or other not-for-profit enterprises.
Complainant began operations in March 2011 under the name “Generate4”. Generate4 Schools LLC was formed in Massachusetts on January 1, 2012. Complainant has had a presence on the Internet since 2011, operating websites using the domain names and .
Complainant contends that it first used the GENERATE4 and GENERATE4SCHOOLS marks in 2011 and registered its domain names on September 13, 2011.
The Domain Name was registered on November 1, 2012. 5. Parties’ Contentions A. Complainant
Complainant states that its business model has enabled the company to experience success in a short period of time. To date, Complainant has over 61 independent merchants processing their credit card payments through its payment program with 60 schools receiving funds from the credit card processing fees paid by these merchants.
Since its inception in early 2011, Complainant explains that it has promoted its services to participating merchants through grassroots outreach as well as through programs with the Association of Fund-Raising Distributors & Suppliers and First Data Corporation. To promote itself, Complainant has engaged in voice call campaigns, email campaigns, and direct mail campaigns, conducted online marketing including search engine marketing and social media marketing, purchased paid searches and lead generation, and attended trade shows. Complainant also established a distributor channel for schools, worked on its public relations, issued press releases, and purchased television and print advertising all at great expense in excess of hundreds of thousands of US dollars. Complainant has indicated that its revenues increased 142 percent for the period 2012 to 2013, and projects an increase in revenue of 1000 percent in the 2014 calendar year.
Complainant states that the term “Generate4” is a fanciful term that has no meaning in the English language. Complainant has used GENERATE4 SCHOOLS since its formation in March 2011 and claims to have established common law trademark rights in the mark GENERATE4 SCHOOLS as well as GENERATE4. Complainant states also that it owns the following US trademark applications: Mark Application No. Application Filing Date
GENERATE4
86/223,180
March 17, 2014
GENERATE4SCHOOLS
86/223,243
March 17, 2014
Complainant contends that as a result of continuous and exclusive use of its GENERATE4 marks since early 2012, it has built up value and goodwill and this goodwill extends throughout the US. Complainant has spent substantial amounts of time and money in advertising and promoting its fundraising services offered under the GENERATE4 marks. Complainant transacts business with customers throughout the US through its websites at and . The marks and names GENERATE4 and GENERATE4SCHOOLS are of great value to Complainant.
Complainant further explains that it uses its websites to advertise its product and services as well as educate customers and potential recipients of its not-for-profit mission. Complainant’s websites operate 24 hours a day and permit merchants and schools and other charities to request information, register for services and learn about Complainant’s services. Information on the websites include a slideshow presentation about the GENERATE4 idea, corporate sponsorships, partnerships and reasons to join the GENERATE4 mission, as well as the GENERATE4 family which includes and will include: GENERATE4SCHOOLS, GENERATE4AFRICA, GENERATE4ART, GENERATE4CANCER, GENERATE4CHURCHES, GENERATE4DREAMS, GENERATE4KIDS, GENERATE4LIFE, GENERATE4ORGANIZATIONS, GENERATE4VETERANS, and GENERATE4WOMEN. These GENERATE4 marks illustrate the path of Complainant’s business and future beneficiaries of its not-for-profit organization.
Complainant states that it began its business using its domain names, and they are its primary means of communicating with prospective customers. Accordingly, the domain names and the Internet have become an important communication and marketing tool and revenue source for Complainant.
Complainant contends that after its first use of the GENERATE4 and GENERATE4SCHOOLS marks in 2011 and registration of its domain names on September 13, 2011, and without the consent of Complainant, Respondent registered the Domain Name. Sometime following Respondent’s registration of the Domain Name, Respondent began using it to point Internet users to its website offering services that allow business owners to partner with Respondent for credit card payment processing so that some of the funds from the processing are donated to schools and charities. These services directly compete with Complainant’s services, and such use is not considered a bona fide or legitimate use under the Policy.
Complainant alleges that Respondent states on its website that it is a subsidiary of MiCamp Merchant Services. MiCamp Merchant Services is one of the credit card payment processing companies to which Complainant sends its customers and has worked with Complainant since the inception of Complainant’s business. Respondent has no current connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the GENERATE4 marks or the GENERATE4 family of marks in a domain name or in any manner.
(i) Identical or confusingly similar
Complainant asserts that the Domain Name is identical or confusingly similar to Complainant’s GENERATE4 and GENERATE4SCHOOLS marks. The Domain Name is an attempt to capture users who may be looking for Complainant’s GENERATE4 and GENERATE4SCHOOL services. The Domain Name wholly incorporates the distinctive and dominant portion of the GENERATE4 marks and is therefore identical and/or confusingly similar to Complainant’s GENERATE4 marks. Under the Policy, a domain name is similar to Complainant’s trademark if that mark is incorporated in its entirety or if the dominant portion is incorporated.
Complainant argues that Respondent’s choice to combine in the Domain Name the generic and descriptive term “u”, together with the GENERATE4 trademark, raises not only an inference of bad faith, but is a combination that cannot be considered sufficient to distinguish Respondent’s Domain Name from Complainant’s GENERATE4 and GENERATE4SHOOLS marks. The only difference is the addition of the descriptive term “u,” which is the phonetic equivalent and common shortened form of “you.”
Complainant urges that numerous UDRP panels have characterized situations where a respondent’s domain name is one letter or character less than or different from a complainant’s trademark as “typosquatting” and have found such domain names to be confusingly similar to the complainant’s mark. Furthermore, numerous panels have held that common terms such as “u or “you”” are rarely distinguishing elements and where, as here, the common term selected coincides with and connotes, if not denotes, the services in respect of which the other element of the domain name is registered as a trademark, confusion is inevitable.
Complainant further contends that confusion in this case is bolstered by the fact that it is commonly accepted that when consumers who are looking for a company on the Internet do not know the company’s precise Internet address, they attempt to guess at the address by typing in the company’s name and a term that describes the company’s business. If, however, a consumer looking for Complainant enters the Domain Name into an Internet browser, the consumer will not find Complainant but, rather, end up instead on Respondent’s GENERATE4 branded website where Respondent advertises and offers competing services.
(ii) Rights or legitimate interest
Complainant asserts that Respondent has no rights or legitimate interests with respect to Complainant’s GENERATE4 and GENERATE4 SCHOOLS marks or the Domain Name. Respondent has no current connection or affiliation with Complainant and has not received any license or consent, express or otherwise, to use the GENERATE4 marks in a domain name or in any other manner.
Complainant alleges that Respondent did not, prior to this dispute, use the Domain Name, or a trademark corresponding to the Domain Name, in connection with a bona fide offering of goods or services, nor has Respondent made a legitimate noncommercial or fair use of it. Respondent uses the Domain Name to offer competing services using Complainant’s GENERATE4 marks. Respondent’s use of Complainant’s GENERATE4 mark in the Domain Name and on the website at “www.” only serves to create a false impression that Respondent’s site and services are sponsored or affiliated with Complainant. Respondent’s use does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use.
(iii) Registered and used in bad faith
Complainant contends that Respondent registered and is using the Domain Name in bad faith primarily for the purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website which promotes competing services by creating a likelihood of confusion with Complainant’s GENERATE4 and GENERATE4 SCHOOLS marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website and of any service offered on its site. Respondent has registered the Domain Name that encompasses, in its entirety, Complainant’s distinctive GENERATE4 mark and the dominant portion of the GENERATE4 SCHOOLS mark. Respondent uses this Domain Name to attract Internet users who are looking for information about Complainant and its services, to Respondent’s website where Respondent advertises and offers competing services.
Complainant states that its rights in the GENERATE4 marks and GENERATE4 family of marks would have been obvious to Respondent through basic domain name searches. Additionally, Respondent claims to be affiliated with MiCamp Merchant Services, the company that serves as one of Complainant’s credit card payment processing companies. Respondent is thus deemed to have, at a minimum, constructive notice of Complainant’s common law trademark rights. In addition, because: (1) Respondent’s Domain Name resolves to a website that advertises and promotes competing services, (2) Respondent’s Domain Name encompasses in its entirety Complainant’s GENERATE4 mark and the dominant portion of its GENERATE4SCHOOLS mark, and (3) that Respondent claims to be a subsidiary of MiCamp Merchant Services, a business that has processed credit card payments for Complainant for 4 years, it is reasonable to conclude that Respondent had actual knowledge of Complainant’s rights in the GENERATE4 and GENERATE4SCHOOLS marks when Respondent registered the Domain Name. Registration of the Domain Name infringing on Complainant’s rights, despite actual or constructive knowledge of Complainant’s mark, is evidence of bad faith.
Respondent’s unauthorized and unapproved misdirection of consumers searching for Complainant and its GENERATE4 and GENERATE4SCHOOLS branded services to Respondent’s competing website is solely for the purpose of achieving commercial gain. Such behavior has been found by many previous UDRP panels to constitute bad faith registration and use. B. Respondent
Respondent explains that MiCamp Solutions LLC was formed on August 9, 2007 in Arizona, and that MiCamp Merchant Services is an unregistered entity used by MiCamp Solutions LLC as part of its sales and marketing operations. For the purposes of this Response, these two entities can be referenced interchangeably. Respondent provides a variety of merchant-related services to businesses and generates revenues in part by signing up business organizations to accept credit card transactions. The company has many marketing programs by which it generates new business leads for each of its business segments, and a large number all of those marketing programs have websites and domain names to support them.
Respondent states that by February 2012 it had signed-up 68 organizations using the “generate4u” business model, which led to the registration of the Domain Name and its use in the day-to-day marketing efforts of the company.
(i) Identical or confusingly similar
Respondent contends that the Domain Name is neither identical nor similar to any trademark or service mark that had been used by Complainant prior to the filing of the Complaint. Respondent adamantly defends that the Domain Name is not similar to GENERATE4 or GENERATE4SCHOOLS, as Complainant alleges. Respondent does not maintain a business name with this Domain Name as it uses the Domain Name as a part of its ongoing business model of generating new merchants for which it is paid a fee. Additionally, Complainant did not apply for a trademark application until March 17, 2014, well after the established use of the Domain Name by Respondent.
(ii) Rights or legitimate interests
Respondent maintains that it has an established basis for continuing to use of the Domain Name. Respondent has invested substantial resources to create and develop a business model with marketing programs that target organizations through a website pointed at this Domain Name. Respondent spends substantial amounts of time and money in advertising and promoting its fundraising services offered under the Domain Name. At no time has Respondent suggested that it is related to Complainant’s business, and Respondent does not directly compete in the same markets as Complainant.
(iii) Registered or used in bad faith
Respondent believes that it is acting with good faith in the use of the Domain Name. Respondent does not directly compete with the GENERATE4 or GENERATE4SCHOOLS in any specific market, as the two companies are in significantly different geographical markets. Respondent does operate the website linked the Domain Name and offers services that are similar to those of Complainant. However, Respondent was a functional business prior to Complainant and has continued to operate the website as part of its core business since its initial registration. Respondent did not purchase the Domain Name with an intent to resell, and has made a substantial business around the name. 6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith. A. Identical or Confusingly Similar
The Panel must first determine whether the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. Complainant has submitted evidence to show that through widespread use since March 2011, it has established unregistered common law rights for its GENERATE4 or GENERATE4SCHOOLS marks. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered and unregistered marks. See, e.g., The Highland Street Connection dba Highland Street Foundation v. Chris McGrath,WIPO Case No. D2006-0516. In this case, the GENERATE4 or GENERATE4SCHOOLS marks include the fanciful term “Generate4”, which combines the word “generate” with the number “4”. The Panel finds that this term is distinctive and serves as a unique identifier for Complainant’s business. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.
The Panel also determines that the Domain Name is confusingly similar to Complainant’s GENERATE4 and GENERATE4SCHOOLS marks. The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion, and typically involves a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. WIPO Overview 2.0, paragraph 1.2. The Domain Name incorporates the distinctive and dominant portion of the GENERATE4 and GENERATE4 SCHOOLS marks, with the difference being the addition of the descriptive term “u,” which is the phonetic equivalent and a vernacular form of “you.” The Panel finds that this minor change from Complainant’s name and trademark does not avoid confusing similarity with Complainant’s mark. See Red Bull GmbH v. Grey Design,WIPO Case No. D2001-1035 (finding confusingly similar to RED BULL); Playboy Enterprises Int’l Inc. v. SAND Web Names For Sale,WIPO Case No. D2001-0094 (finding confusingly similar to PLAYBOY). Moreover, the fact that Complainant did not apply for a trademark registration until March 17, 2014, after the commencement of use of the Domain Name by Respondent, does not prevent a finding of identity or confusing similarity under the Policy. WIPO Overview 2.0, paragraph 1.4. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, Complainant must prove that Respondent has no rights or legitimate interests in respect of the Domain Name. A complainant is normally required to make out a prima facie case that a respondent lacks rights or legitimate interests in a domain name. Once such prima facie case is made, the respondent carries the burden of demonstrating its rights or legitimate interests. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In this case, Complainant has established a prima facie case. Complainant did not license or otherwise authorize Respondent to use its GENERATE4 and GENERATE4SCHOOLS name or marks in the Domain Name. Further, Respondent is not commonly known by the Domain Name and there is no noncommercial or fair use involved. Complainant has alleged and submitted evidence to show that Respondent uses the Domain Name to offer competing services using Complainant’s GENERATE4 marks, and that this serves to create an impression that Respondent’s site and services are sponsored or affiliated with Complainant, and Respondent’s use, therefore, does not constitute a bona fide offering of goods or services.
Respondent in its Response acknowledges that it does not maintain a business name with this Domain Name, but instead uses it as a part of a business model to generate new business. Respondent contends that it has established a basis for continuing to use of the Domain Name, through investment of resources to develop a business model with marketing programs targeting organizations through a website linked to the Domain Name. Respondent has also stated that at no time has it suggested that it is related to Complainant’s business, and Respondent does not directly compete in the same geographic markets as Complainant.
The Panel finds that Respondent’s arguments do not establish rights or legitimate interests in the Domain Name. Respondent has not denied that it was aware of Complainant and targeted Complainant’s name and mark when it registered the Domain Name. Respondent has not supplied any other reason for why it chose the term “Generate4” in combination with the letter “u” for the Domain Name. Respondent likely became aware of this term through its business relationship with Complainant. As indicated above, Complainant began using the GENERATE4 and GENERATE4SCHOOLS name and marks in 2011 and registered its domain names and in September 2011. The Domain Name was registered by Respondent more than a year later in November 2012. Further, Complainant indicates that it had worked with Respondent’s affiliate since the inception of Complainant’s business. Complainant indicates that it offers its services to businesses across the country, contradicting Respondent’s assertion that they compete in different geographic markets.
Under these circumstances, the Panel is unable to find that Respondent has rights or legitimate interests in respect of the Domain Name pursuant to the Policy. Accordingly, the Panel finds that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith.
Here, Respondent registered the Domain Name, , which is confusingly similar to Complainant’s GENERATE4 and GENERATE4SCHOOLS name and marks. The Domain Name is very specific to Complainant’s name and marks. As noted above, Respondent has not provided any plausible reason for why it chose this Domain Name, and the Panel cannot think of any reason except that Respondent was targeting Complainant. Thus, this is not a case in which a third party registered the Domain Name for its own reasons or descriptive value. Instead, Respondent must have been aware that the name of Complainant, Generate4 Schools, an entity that had been doing business with its affiliate, was confusingly similar to the Domain Name it sought to register. In this regard, Respondent is responsible for the legal representations that it made as part of the registration agreement for the Domain Name. Under the Policy, paragraph 2, Respondent represented and warranted that “to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party” and “[i]t is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
From the circumstances surrounding the registration of the Domain Name, the Panel determines, on the balance of the evidence, that Respondent registered and is using the Domain Name for the bad faith purpose of using it to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s GENERATE4 name and mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on its website. Policy paragraph 4(b)(iv).
The Panel therefore concludes that Respondent registered and is using the Domain Name in bad faith. Accordingly, the Panel finds that Complainant has satisfied the third element of the Policy. 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 Complainant.
Christopher S. Gibson
Sole Panelist
Date: August 19, 2014
Full & Egal Universal Law Academy