Complainant is Kind World Foundation of Santa Fe, New Mexico, United States of America, represented by Ridder, Costa & Johnstone LLP, United States of America (“US”).
Respondent is Perfect Privacy, LLC of Jacksonville, Florida, United States of America / Katerina Brown of Aurora, Colorado, US. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2016. On April 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 27, 2016, 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 Complainant on April 29, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 4, 2016.
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 Respondent of the Complaint, and the proceedings commenced on May 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2016. Respondent did not submit a response. Accordingly, the Center notified Respondent’s default on June 1, 2016.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 9, 2016. 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 charitable foundation that has provided grants and scholarship opportunities under its US federally registered trademark, KIND WORLD FOUNDATION, no. 4785140 on the US Principal Register, for 15 years since beginning operations in 2000. Complainant uses its mark in connection with charitable foundation services, namely, providing and facilitating fundraising activities, funding, grants, scholarships, and/or financial assistance for the programs and services of others, including for (i) programs that provide humanitarian relief and aid; (ii) environmental programs; (iii) programs that provide opportunities for at risk populations; (iv) programs that provide holistic substance abuse recovery, diagnosis, and treatment services, (v) programs that provide economic and vocational training; (vi) programs that improve the lives of woman; (vii) capital campaign programs; and (viii) programs that bolster community based arts and culture.
Complainant has offered and supported programs geared towards community enhancement and capital development, education, human services, and the arts. Some of its domestic projects include providing scholarship opportunities for students in the greater Sioux Falls, North Dakota area, and providing a donation to the Railyard Park and Plazaproject in Santa Fe, New Mexico. Complainant is an active supporter of The Santa Barbara Bowl Foundation, which provides performing arts education to those in greater Santa Barbara, California. Complainant is also active in funding artistic works intended for national audiences, and has sponsored several films addressing important social issues of the day. For example, in 2014 it helped fund Private Violence, a feature-length documentary film and audience engagement campaign that explored the dangers of domestic abuse. Complainant operates outside the US as well, including through partnerships with Macy’s MADREprogram, which works to help woman and families worldwide, and Oprah Winfrey’s Project O Braceletproject, which helps develop global markets for artisans. As a result of its membership in the Clinton Global Initiative, Complainant also provides its services and support in connection with the H2O FOR LIFEinitiative, a program that empowers American high school students to raise money forschools abroad that need clean water for sanitation and hygiene, and the Rwanda Path to Peaceprogram, which assists Rwandan women artisans and their families.
The Domain Name was registered on February 24, 2014. The Domain Name previously resolved to a website which purported to provide adoption-related charitable grants and is currently parked and has no content. 5. Parties’ Contentions A. Complainant
(i) Identical or confusingly similar
For the past 15 years Complainant has provided services in a wide variety of contexts and has invested millions of dollars in a multitude of charitable projects throughout the US and the world. Complainant states that owing to longstanding and extensive use, it owns common law rights in its KIND WORLD FOUNDATION trademark. Complainant also owns a US federally registered trademark for KIND WORLD FOUNDATION.
Complainant states that the Domain Name is identical to Complainant’s KIND WORLD FOUNDATION trademark. The Domain Name is nothing more than a combination of the entirety of Complainant’s mark and the generic Top-Level Domain suffix, “.com”. Complainant contends that in such circumstances, UDRP panels have uniformly found that a disputed domain name is identical or confusingly similar to the trademark at issue.
(ii) Rights or legitimate interests
Complainant states that while it recognizes that there are several circumstances that can demonstrate a respondent’s right or legitimate interest in a disputed domain name, none of these circumstances are present in this case.
While the Policy, paragraph 4(c)(ii), provides that a right or legitimate interest may be demonstrated where a respondent has been legitimately known by the domain name, to the best of Complainant’s knowledge, Respondent is not legitimately known as Kind World Foundation. Further, it is not clear to Complainant that Respondent is a legitimate organization that actually offers the services it once purported to offer. In the 15 years it has provided charitable services, Complainant has never heard of Respondent, other than by virtue of its registration of the Domain Name, which briefly purported to provide adoption-related charitable grants, but is currently “parked” and has no content. Even if Respondent were a charitable organization, it could not be known by the Kind World Foundation designation, because this use would be likely to confuse consumers in light of the similar services provided by Complainant and its longstanding, continuous, and extensive use of its KIND WORLD FOUNDATION mark.
Complainant also asserts that Respondent does not use the Domain Name in connection with a bona fide offering of goods and services; instead, it is currently parked. When it was in use, rather than offering bona fide goods and services, Respondent used the Domain Name for the improper purpose of offering (or purporting to offer) charitable services similar to those offered by Complainant under its KIND WORLD FOUNDATION trademark. Complainant does not know whether Respondent has ever actually offered charitable services or merely purported to do so. Multiple emails from counsel for Complainant to Respondent have gone unanswered. However, even an actual offer of charitable services would not constitute a bona fide offering, because such services would infringe Complainant’s trademark rights.
Finally, Complainant states that Respondent’s registration and use of the Domain Name is not a legitimate noncommercial or fair use. Respondent has instead used the Domain Name for an infringing commercial purpose – to offer goods and services that are confusingly similar to those offered by Complainant – and such use is likely to misleadingly divert consumers to Respondent’s offerings and away from Complainant’s official offerings. For all these reasons, Complainant contends that Respondent has no rights or legitimate interests with respect to the Domain Name.
(iii) Registered and used in bad faith
Complainant states that Respondent appears to be a competitor. Though the Domain Name is currently inactive – visitors are presented with the message “Looks Like This Domain Isn’t Connected To A Website Yet!” – Respondent has in the past used the Domain Name to purportedly offer charitable services that are closely related to those offered by Complainant under its KIND WORLD FOUNDATION trademark. Complainant submitted a copy of the website that was linked to the Domain Name as of November 4, 2014. At the website, Respondent described itself as follows: “Kind World Foundation is [a] Christian based organization that opened March, 2014. [Kind World Foundation] wants to help children all around the world to be in permanent homes.” The website described Respondent’s mission as: “[o]ur mission is to provide financial aid to families that need assistance with adopting a child because no child should be without a home.” Respondent’s website solicited donations for its charitable purpose. Respondent’s website also calls to action the very same class of consumers – students – to whom Complainant routinely makes its charitable and scholarship opportunities available. In sum, Respondent’s website reflected an organization that purports to be a charity, to provide charitable grants, to collect charitable donations, to provide opportunities to students, and to provide charitable services that are closely related to those offered by Complainant under its longstanding registered KIND WORLD FOUNDATION mark.
Complainant contends that it is apparent, based on the facts of this case, and in light of Complainant’s longstanding use of its trademark to provide charitable services, that Respondent intentionally selected the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Where a domain name is confusingly similar to a trademark used by a complainant, its direction of visitors to a webpage advertising goods or services similar to those offered by that complainant will show registration and use in bad faith.
In addition, even if Respondent had not offered charitable services that were closely related to those of Complainant, Complainant contends that the passive holding of the Domain Name does not preclude the finding of a bad faith intent to register and use it, particularly where Respondent has taken steps to conceal its true identity, identified only as “Perfect Privacy, LLC” in this case.
For all of the reasons set forth above, Complainant maintains that the Domain Name was registered and is being used in bad faith. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied, as follows:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights 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. In this case, Complainant has demonstrated its longstanding registered trademark rights in its KIND WORLD FOUNDATION mark, which was registered in 2000 and first used in commerce as of 1998. The Domain Name incorporates this mark in its entirety and without any changes, and thus is identical to Complainant’s mark.
Accordingly, Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
Regarding the second element 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 the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent has the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has never authorized or licensed Respondent to incorporate Complainant’s KIND WORLD FOUNDATION trademark in the Domain Name or to use it in any capacity. Complainant is not affiliated with, and has never endorsed or sponsored, Respondent. Respondent has not been commonly known as “Kind World Foundation”.
Further, the evidence presented by Complainant shows that Respondent’s use of the Domain Name was not bona fide and did not give rise to any right or legitimate interest in the Domain Name on the part of Respondent. The Domain Name is identical to Complainant’s longstanding KIND WORLD FOUNDATION trademark and was registered in February 2014, approximately 15 years after Complainant started using its mark in connection with charitable services. When the Domain Name was active, it was used in direct conflict with Complainant by linking to a website that purportedly offered charitable services that are closely related to those offered by Complainant under its KIND WORLD FOUNDATION trademark. Now that the Domain Name is not in use, it is linked to a webpage with the message “Looks Like This Domain Isn’t Connected To A Website Yet!” Thus, Respondent’s use of the Domain Name since its registration does not give rise to any rights or legitimate interests in it.
Respondent has not responded to the Complaint and therefore has offered nothing to establish any rights or legitimate interests in the Domain Name.
Accordingly, the Panel determines that Respondent has no rights or legitimate interests in the Domain Name, and Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
In view of the discussion above, the Panel also determines, on the balance of the probabilities, that Respondent has opportunistically registered and used the Domain Name in bad faith. As noted above, Respondent registered the Domain Name, which is identical to Complainant’s distinctive trademark, approximately 15 years after Complainant began using its mark in relation to charitable services. Respondent then linked the Domain Name to a website purportedly offering competing charitable services. When Complainant’s legal counsel wrote to Respondent, Respondent failed to reply. Respondent has filed no response in this case. In the Panel’s view, Respondent’s Domain Name creates a likelihood of confusion, is disruptive of the charitable business of Complainant, and has been used for commercial advantage to attract Internet users to Respondent’s website, indicative of bad faith under the Policy. The fact that the Domain Name is currently not in use, does not prevent a finding of bad faith.
Accordingly, the Panel finds, in view of all of the above circumstances and the allegations and evidence submitted in this case, that the Domain Name was registered and is being used in bad faith, satisfying 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 Domain Name, , be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: June 15, 2016
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