The Complainant is Community Bible Study of Colorado Springs, Colorado, United States of America ("USA"), represented by Bryan Cave, LLP, USA.
The Respondent is Ryan G Foo, PPA Media Services of Santiago, Chile; Whois Privacy Corp.of Nassau, New Providence, The Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the "Disputed Domain Name") is registered with I Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2015. On September 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 29, 2015, 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 Complainant on September 29, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 2, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 27, 2015.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on November 10, 2015. 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 is a worldwide non-profit organization incorporated in the USA. The Complainant was founded in 1975, and offers bible study classes and curriculum for all age groups worldwide. The Complainant holds registered rights in the COMMUNITY BIBLE STUDY mark and COMMUNITY BIBLE STUDY & Logo ("Community Bible Study Marks"), based on its trade mark registrations in the USA. The Complainant also owns several domain names incorporating its COMMUNITY BIBLE STUDY mark.
According to the Registrar, the Respondent acquired the Disputed Domain Name on July 18, 2013. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarized as follows:
a) The Complainant has been using the COMMUNITY BIBLE STUDY mark continuously and extensively since 1975. Since July 2012, the Complainant has held the registered trade mark rights in the Community Bible Study Marks in the USA. The Complainant also owns various domain names that incorporate its COMMUNITY BIBLE STUDY mark and its abbreviation (i.e., CBS). The Complainant actively uses the Internet to promote its bible study courses, curriculum and services in connection with the Community Bible Study Marks. Due to the extensive amount of resources, money, time and effort that the Complainant has expended into marketing and generating goodwill in its goods and services under the Community Bible Study Marks, the Community Bible Study Marks are distinctive and well-known worldwide.
b) The Disputed Domain Name incorporates and is identical to the Complainant's COMMUNITY BIBLE STUDY mark, save for domain extension ".com", which should be disregarded as it is required for the functioning of the Disputed Domain Name and does nothing to distinguish it.
c) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Disputed Domain Name resolves to a parking page that provides links to various websites, which offer goods or services that compete with the Complainant. The Respondent chose to register the Disputed Domain Name, which is identical to the Complainant's COMMUNITY BIBLE STUDY mark, for the purpose of redirecting traffic to the Respondent's parking page and to the Complainant's competitors in order to obtain pay-per-click revenue, and to also use as a phishing scam to obtain sensitive information from Internet users. As such, the Respondent cannot be said to be using the Disputed Domain Name for a bona fide offering of goods or services. The Respondent is wrongfully profiting and trading upon the Complainant's COMMUNITY BIBLE STUDY mark.
d) The Complainant has never authorized the Respondent to use the Complainant's COMMUNITY BIBLE STUDY trade mark, and the Respondent is in no way associated with the Complainant.
e) There is no evidence that the Respondent is commonly known by the Disputed Domain Name. The Respondent has also not sought to register any trade marks, trade names or company names that correspond to "community bible study". The Respondent is also not making any legitimate noncommercial use of the Disputed Domain Name.
f) The Respondent registered the Disputed Domain Name in bad faith, in full knowledge of the Complainant's existing prior rights in the well-known Community Bible Study Marks. The Complainant began offering goods and services under its COMMUNITY BIBLE STUDY mark in 1975, and began using its COMMUNITY BIBLE STUDY & Logo mark in 1991.
g) The Respondent is using the Disputed Domain Name in bad faith to intentionally trade on the Complainant's reputation and divert, for commercial gain, Internet users to the Respondent's parking page and ultimately to the Complainant's competitors. The Respondent is also using the Disputed Domain Name as a phishing scam, as the Disputed Domain Name occasionally resolves to a virus report that asks users to call a phone number, which is a well-known scam line. Further, the Respondent has no trade mark, service mark or other intellectual property rights in the Disputed Domain Name, which demonstrates bad faith.
h) Lastly, the Respondent has been named as a defendant in over 150 different UDRP proceedings, whereby he was found to have violated the Policy. The Respondent is therefore a prolific and active cybersquatter. B. Respondent
The Respondent did not reply to the Complainant's contentions. Whilst failure to file a Response does not automatically result in a decision in favor of the Complainant, 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 Complainant is 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 Complainant has 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 or is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the COMMUNITY BIBLE STUDY mark based on its trade mark registrations in the USA since July 2012, and notes that prior to this date the Complainant had common law rights in the unregistered trade mark COMMUNITY BIBLE STUDY, which it had been using since at least 1975.
The Disputed Domain Name incorporates the Complainant's COMMUNITY BIBLE STUDY mark in its entirety. It is 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 ".com", may be disregarded (see Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
Accordingly, the Panel finds paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") states the consensus among UDRP panels that once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel accepts that the Complainant has not authorised the Respondent to use the COMMUNITY BIBLE STUDY mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the COMMUNITY BIBLE STUDY mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to prove it has rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response to the Complainant's contentions, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant's evidence.
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 Disputed Domain Name currently resolves to a parking page which contains sponsored links. As stated in paragraph 2.6 of the WIPO Overview 2.0, use of a domain name to post parking pages or pay-per-click links "may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services" or from 'legitimate noncommercial or fair use' of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder." A common example of permissible use of parking pages or pay-per-click links, which may amount to a right or legitimate interest, is a domain name that consists of a dictionary or common word, and the pay-per-click links genuinely relate to the generic meaning of the domain name and the respondent had no intention of targeting the complainant (see National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424).
Whilst the Panel accepts that the words "community bible study" may be a generic phrase, the Panel is not convinced (in the absence of any evidence from the Respondent to the contrary) that the Respondent registered the Disputed Domain Name with the generic phrase in mind for the purposes of legitimately using the Disputed Domain Name in relation to its generic meaning. This is based on the following:
(a) the Complainant has been using its COMMUNITY BIBLE STUDY mark since 1975, and registered its mark in July 2012, which is long before the Disputed Domain Name was acquired by the Respondent on July 18, 2013.
(b) the parking page to which the Disputed Domain Name resolves includes click-through links to competitors of the Complainant;
(c) the Respondent has been subject to over 150 UDRP proceedings administered by the Center or the National Arbitration Forum;
(d) in accordance with the Panel's powers granted under paragraph 10(a) of the Rules, the Panel conducted its own factual research in respect of the other UDRP proceedings to which the Respondent had been involved. The Panel found that the Respondent registers many domain names that incorporate third party brands or trade marks, including ones that appear on the face of it to be generic phrases. Such domain names appear to mainly be used by the Respondent to resolve to a parking page which contains links incorporating the relevant complainant's trade marks and refers users to various other websites, including competitors of the complainant (e.g. Sensormatic Electronics, LLC v. PPA Media Services, Ryan G Foo / Fundacion Private Whois,WIPO Case No. D2013-0649; Miami Heat Limited Partnership v. Whois Privacy Corp. / Ryan G Foo, PPA Media Services,WIPO Case No. D2015-1479; Wal-Mart Stores, Inc. v. Whois Privacy Corp. / Ran G Foo, PPA Media Services,WIPO Case No. D2014-1864; Santana Tesoro, LLC v. PPA Media Services and Fundacion Private Whois,WIPO Case No. D2013-1317; and Saks & Company, Saks Direct, LLC v. PPA Media Services / Ryan G. Foo,WIPO Case No. D2013-0556. In particular, the Panel refers to L'Oréal v. PPA Media Services, Ryan G Foo / Fundacion Private Whois, Domain Administrator,WIPO Case No. D2013-2230, which involved the same Respondent and the domain name . In that case, the panel held that the "Respondent's use of the Complainant's Mark for a website displaying click-through links to the Complainant's competitors does not constitute either a bona fide offering of goods or services, or a legitimate noncommercial or fair use".
In light of the above, and in the absence of any explanation from the Respondent as to his reasons for registering the Disputed Domain Name, the Panel finds that the Respondent intentionally targeted the Complainant and registered the Disputed Domain Name to trade off the goodwill of the Complainant's mark in order to increase its pay-per-click revenue.
The Panel accordingly finds that the Complainant has not satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith
Based on the fact that the Complainant has been using the COMMUNITY BIBLE MARK since 1975, and the Respondent has a history and is in the business of registering domain names that reflect third party brands (including those that appear on the face of it to be generic phrases), the Panel finds that the Respondent likely knew about the Complainant, and purposefully registered the Disputed Domain Name with the intent of misleading Internet users into believing that the Disputed Domain Name was affiliated with the Complainant.
The Respondent has also clearly engaged in a pattern of bad faith as he: (i) has registered many domain names which incorporate third party marks; and (ii) has been the subject of over 150 UDRP proceedings, the majority of which have resulted in decisions being issued in favor of the complainants. These cases demonstrate that the Respondent is a regular cyber squatter. The Respondent also appears to be using the Disputed Domain Name as a phishing scam, in order to display a false virus report that asks users to call a phone number, which may then be used to gather personal data of the callers. The Panel finds that such use amounts to clear bad faith use of the Disputed Domain Name.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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 Complainant.
Gabriela Kennedy
Sole Panelist
Date: November 24, 2015
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