Complainant is Birthright Counseling St. Louis of St. Louis, Missouri, United States of America (“United States”), represented by Leritz & Plunkert, P.C., United States.
Respondent is Domains By Proxy, LLC, DomainsByP of Scottsdale, Arizona, United States / Henry George of Akron, Ohio, United States. 2. The Domain Name and Registrar
The Disputed Domain Name, , is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 30, 2016, 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 Complainant on July 8, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on July 13, 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 July 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2016. The Center received a total of five email communications from an individual on the following dates: July 18, 2016; July 19, 2016; August 5, 2016; and August 11, 2016.
The Center appointed Richard W. Page as the sole panelist in this matter on August 11, 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.
The Panel has reviewed and considered the email communications dated: July 18, 2016; July 19, 2015; August 5, 2016; and August 11, 2016 (although they do not constitute a formally-compliant Response to the Complaint). 4. Factual Background
Complainant’s corporate name is “Birthright Counseling St. Louis”. Complainant is an independent chapter of Birthright International, a Canadian corporation that owns the BIRTHRIGHT trademark in the United States, registered on August 1, 1972. Complainant was given authority from Birthright International to use the BIRTHRIGHT mark. In addition to its corporate name, Complainant has used the name “Birthright” continuously for over 40 years since it was chartered as a not-for-profit corporation in 1972. Complainant has provided services to women facing untimely pregnancies and will continue to provide such services in the future. Complainant’s service area is the City of St. Louis and County of St. Louis.
The Disputed Domain Name is owned by Respondent and was registered using a private registration service. 5. Parties’ Contentions A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s corporate name “Birthright Counseling St. Louis” and to the BIRTHRIGHT mark.
Complainant further contends that the Disputed Domain Name resolves to an outdated and obsolete website which was once used by Complainant. The outdated and obsolete website uses the BIRTHRIGHT mark and the corporate name “Birthright Counseling St. Louis”. The outdated and obsolete website lists a prior address for Complainant’s main office in St. Louis, Missouri, as well as Complainant’s telephone number, thus compounding the confusion.
Complainant alleges that Respondent does not operate a service for women with untimely pregnancies in St. Louis City or St. Louis County. Complainant further alleges that Respondent is trying to appropriate its identity and that this confusing situation makes Complainant’s operation and mission more difficult and is highly prejudicial to Complainant.
Complainant avers that the Disputed Domain Name is not associated with any legitimate business operated by Respondent. The outdated and obsolete website to which the Disputed Domain Name resolves offers “free and confidential services” for women experiencing an untimely pregnancy and advises that “Birthright Counseling St. Louis” can help. Its links fail to operate. Complainant further avers that Respondent does not operate a service for pregnant women, and thus has no legitimate rights or interest in respect of the Disputed Domain Name. Respondent’s motive in maintaining the Disputed Domain Name is unknown.
Complainant argues that Respondent’s actions do not exactly fit the circumstances set out in Paragraph 4(b) of the Policy, but the evidence can lead to no other conclusion than Respondent’s bad faith. Bad faith is provable by both circumstantial and direct evidence. It requires consideration of a party’s state of mind. In 2000, Complainant created the website at . At some unknown date after 2000, Complainant failed to renew the domain name registration and it came under the control of persons unknown.
The WhoIs Registry record, dated September 30, 2013, shows “Registration Private” and that the Disputed Domain Name, , was created on August 12, 2000, and was updated on August 7, 2013. The WhoIs Registry record, dated June 24, 2016, shows “Registration Private” and that the Disputed Domain Name, , was last updated on September 17, 2015. Complainant has recently been informed that the present owner of the Disputed Domain Name is Henry George.
Complainant further argues that when Respondent took control over and registered the Disputed Domain Name, Complainant had been operating a free professional counseling service for over forty years under the name “Birthright”. Respondent used the “Birthright” name for the Disputed Domain Name and as part of its website.
Complainant further argues that at the time it lost control of the Disputed Domain Name, the Disputed Domain Name resolved to the same obsolete and outdated website that it brings up at the present time. The website has not changed. The website was then and still is entitled “If You Are Pregnant”. The website contains false and misleading information as Respondent did not operate a pregnancy counseling service. Respondent had no connection with Complainant. Nevertheless, in bad faith, Respondent from the very beginning claimed that it operated and maintained a pregnancy counseling service under the name of and at the address of Complainant. Respondent maintained then and still maintains this false and misleading website which intentionally distributes false and misleading information to women in distress. It is impossible to conceive of any use of the Disputed Domain Name by Respondent which would be legitimate. Complainant avers that this is the very essence of bad faith and fraud: making false promises and statements intending people to rely on them and act on them, which they do to their prejudice and detriment. Respondent’s motive is hard to understand but is really irrelevant. Clients seeking information and direction on the Internet have been directed to offices and locations of Complainant long since closed. B. Respondent
Respondent has not responded to the contentions of Complainant. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”
Respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable may be taken as true and Respondent would be subject to the inferences that flow naturally from the information provided by Complainant: (see Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441).
Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify whether the essential elements of the claims are met.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant contends that it has rights in BIRTHRIGHT, because Complainant for 40 years has continuously used the name “Birthright Counseling St. Louis” to identify it as a provider of services for women with untimely pregnancies in St. Louis City or St. Louis County. Complainant also contends that it has been granted authority from Birthright International to use the BIRTHRIGHT mark. Additionally, the Panel finds that Complainant has common law service mark rights in the name “Birthright Counseling St. Louis”, because of the apparent secondary meaning attached to it in the relevant community. These are protectable trademark rights for purposes of this proceeding. (Collectively, the “BIRTHRIGHT Mark”).
Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the BIRTHRIGHT Mark pursuant to the Policy paragraph 4(a)(i).
Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that the Disputed Domain Name is identical or confusingly similar to a registered trademark. See The Nasdaq Stock Market, Inc. v. Green Angel,WIPO Case No. D2001-1010; Kabushiki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution Purchasing & Logistics Corp.,WIPO Case No. D2000-0464.
The Panel notes that the entirety of the BIRTHRIGHT Mark is in the Disputed Domain Name.
Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the BIRTHRIGHT Mark.
Therefore, the Panel finds that the Disputed Domain Name is confusingly similar to the BIRTHRIGHT Mark pursuant to the Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii).
Paragraph 4(a)(ii) requires Complainant to prove that Respondent has no rights or legitimate interests in the Disputed Domain Name. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that once the complainant makes a prima facie case in respect of the lack of rights or legitimate interests of a respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Respondent has no relationship with or permission from Complainant for the use of the BIRTHRIGHT Mark.
The Policy paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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 trademark or service mark at issue.
Complainant contends that the Disputed Domain Name resolves to an outdated and obsolete website which was once used by Complainant. The outdated and obsolete website uses the BIRTHRIGHT Mark. Complainant further contends that Respondent has never offered any new content on the outdated and obsolete website, hence by inference, has offered no bona fide goods or services or has offered any legitimate noncommercial or fair use of the Disputed Domain Name. Complainant further contends that Respondent has never been known as “Birthright”.
The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has made no showing to the contrary.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to the Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your [Respondent’s] documented out-of-pocket costs directly related to the Disputed Domain Name; or
(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the BIRTHRIGHT Mark in a corresponding domain name, provided that you [Respondent] have engaged in a pattern of such conduct; or
(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s BIRTHRIGHT Mark as to the source, sponsorship, affiliation, or endorsement of your [Respondent’s] website or location or of a product.
Complainant admits that Respondent’s actions do not fit the circumstances set out in paragraph 4(b) of the Policy, but Complainant argues that the evidence can lead to no other conclusion than Respondent’s bad faith. The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows,WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.
One such factor is that Respondent has made no use of the Disputed Domain Name other than to perpetuate an obsolete website previously used by Complainant. Complainant alleges that Respondent has not developed any active website at the Disputed Domain Name, other than to leave outdated and obsolete information about Complainant. See Telstra, supra .
In Telstra, supra, it was established that registration together with “inaction” or “passive use” and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent panels. Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren,WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang,WIPO Case No. D2000-0055; Compaq Computer Corporation v. Boris Beric,WIPO Case No. D2000-0042; Sanrio Company, Ltd. and Sanrio, Inc. v. Neric Lau,WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eR,WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc.,WIPO Case No. D2000-0090; Strålfors AB v. P D S AB,WIPO Case No. D2000-0112; InfoS, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075.
A second factor found to support a finding of bad faith is Respondent’s inferred knowledge of Complainant’s trademark rights when Respondent took control of the Disputed Domain Name, which is evidenced by Respondent’s use of the Disputed Domain Name to perpetuate an obsolete website previously maintained under Complainant’s control. Nor has Respondent refuted that it had knowledge of the BIRTHRIGHT Mark.
A third factor is the use of Complainant’s entire mark in the Disputed Domain Name, thus making it prima facie difficult to infer a legitimate use of the Disputed Domain Name by Respondent.
Respondent’s motive is hard to understand. However, it is difficult, under these circumstances, to conceive of any use of the Disputed Domain Name by Respondent which would be legitimate. Notwithstanding that the Disputed Domain Name has more recently been pointed to an “under construction” site, Internet users seeking information and direction on the Internet have been directed to offices and locations of the Complainant long since closed.
Respondent has failed to come forward with any facts to contradict or explain the assertions of Complainant.
The evidence establishes: (i) inaction or passive use by Respondent in the use the Disputed Domain Name to post any original content on the Internet or for any other legitimate purpose; (ii) knowledge by Respondent of Complainant’s rights in the BIRTHRIGHT Mark in light of Respondent’s use of the Disputed Domain Name; and (iii) the use of Complainant’s entire mark in the Disputed Domain Name, creating an unrebutted inference of an absence of any plausible use of the Disputed Domain Name that would constitute good faith.
Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii). 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.
Richard W. Page
Sole Panelist
Date: August 14, 2016
Full & Egal Universal Law Academy