Complainant is JDRF International, United States of America (“United States” or “U.S.”), represented by Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., United States.
Respondent is Janice Green, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 1, 2019. On May 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 1, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2019. The Center received an email communication from a third party on May 8, 2019, indicating that the reply party was the webhosting company and that they had “forwarded your complaint to the responsible customer”. Respondent did not submit any response. Accordingly, the Center notified the Parties that the matter would proceed to panel appointment on May 29, 2019.
The Center appointed John C. McElwaine as the sole panelist in this matter on June 6, 2019. 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 global non-profit dedicated to funding research for the treatment, prevention, and cure of Type One diabetes (T1D).
Complainant is also the owner of U.S. Trademark Registration No. 4,360,046, registered on July 2, 2013 for the mark JDRF, which is registered in connection with the following services: “Pre-recorded video tapes and downloadable video recordings, audio tapes, and audio and video discs, all featuring information on type 1 diabetes (T1D); Magazines, informational flyers, pamphlets, and brochures about type 1 diabetes (T1D); T-shirts and sweat shirts; Association services, namely, promoting the public interest and awareness of curing, treating, and preventing type 1 diabetes (T1D); Charitable fundraising services relating to type 1 diabetes (T1D); Providing non-downloadable videos, via a website, featuring information about type 1 diabetes (T1D)”.
On March 3, 2003, Respondent registered the Domain Name with the Registrar. Complainant submitted evidence that the website under the Domain Name used the JDRF Mark in its header with links to third parties. The Domain Name currently resolves to an inactive page. 5. Parties’ Contentions A. Complainant
Complainant was founded in 1970 as the Juvenile Diabetes Foundation, and later changed its name to the Juvenile Diabetes Research Foundation, which was often abbreviated as JDRF. In 2000, Complainant formally adopted the mark, JDRF, after statistics began to clarify that what was then known as “juvenile diabetes” and is now referred to as “type one diabetes” (T1D) afflicts an equal number of children and adults. Complainant contends that it is an international organization with a strong presence and high visibility in the United States. Complainant alleges that it has local chapters throughout the United States, including JDRF Illinois, which is physically located in Chicago, Illinois.
As stated above, Complainant has obtained a United States trademark registration for the JDRF trademark and Complainant alleges that nearly two decades of continuous, exclusive, and highly visible use of the JDRF Mark for association services focused on T1D has made this trademark highly recognizable nationwide with a strong consumer association to Complainant’s services. Collectively, Complainant’s trademark rights in the registered JDRF trademark, U.S. Reg. No. 4,360,046, and its unregistered, common law rights in the JDRF trademark are referred to as the “JDRF Mark”. Complainant avers significant funding raising over the years under the JDRF Mark.
With respect to the first element of the Policy, Complainant contends that it owns a trademark registration for the JDRF Mark. Complainant further points out that only difference between the JDRF Mark and the Domain Name is that “Illinois” appears after “JDRF”. Complainant asserts that the addition of this geographically descriptive term is not sufficient to distinguish the Domain Name from the JDRF Mark.
With respect to the second element of the Policy, Complainant asserts that it has not been able to contact Respondent or confirm Respondent’s identify. In addition, Complainant is unaware of whether Respondent may have been commonly known by the Domain Name previously. Complainant alleges, however, that Respondent’s use of the Domain Name is a clear case of “spoofing” to improperly divert web traffic from Complainant’s legitimate domain name(s). Complainant alleges that in addition to using Complainant’s JDRF Mark in the Domain Name, Respondent has incorporated infringing content, and other content designed to suggest an affiliation with Complainant. Complainant alleges that the website displayed at the Domain Name (the “Website”) includes a header in which the JDRF Mark and the tagline “Juvenile Diabetes Research Foundation International” (a version of Complainant’s former corporate name) are prominently displayed. Immediately beneath this header, and displayed prominently, is the phrase “Dedicated to Find a Cure”, which Complainant claims slogans used by Complainant. In addition, Complainant asserts that the Website includes the following terms, appearing as links to purportedly relevant content: “Life with Diabetes”, “Education and Support”, “Advocacy”, “Research” and “Health”. Complainant asserts that this content is an attempt to confuse consumers into thinking that they have landed on the webpage for Complainant or its Illinois chapter, whose legitimate website appears at “/illinois”. Complainant characterizes the entirety of the Website’s content to be sponsored content designed solely to attract web traffic and is not connected to any legitimate service offering. For example, the Website includes headings such as “Rumors, Deception and Mattress Coupons”, which directs to an “article” purportedly about how to arrange a mattress, “The 5-Minute Rule for West Palm Beach” which directs to an “article” purportedly about on-line reservation systems and pest control, “Almond Toffee at a Glance” and “Simple Habits to Beat Cancer”. Complainant contends that the Website is not a bona fide offer for any legitimate goods or services.
With respect to the third element of the Policy, Complainant alleges that Respondent has used the Domain Name intentionally to attract, for commercial gain, Internet users to its website or other by creating a likelihood of confusion with Complainant’s JDRF Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Complainant asserts three reasons for this allegation: (1) the use of Complainant’s JDRF Mark with a geographically descriptive term as the Domain Name; (2) the use of Complainant’s, JDRF Mark, alongside a version of Complainant’s former corporate name, Juvenile Diabetes Research Foundation International, prominently in the header of the Website; and (3) the use of other indicators of source on the Website that appear deliberately designed to confuse the Internet consumer into believing that the Website is affiliated with Complainant by echoing JDRF’s mission and areas of focus, including “Dedicated to Find a Cure”, “Life with Diabetes”, “Education and Support”, “Advocacy”, “Research” and “Health”.
Complainant further alleges that Respondent registered the Domain Name to prevent Complainant from reflecting Complainant’s JDRF Mark in a corresponding domain name, such as that operated by Complainant’s Illinois chapter.
Complainant concludes by alleging that Respondent’s actions are detrimental to Complainant’s well-known trademark rights and that UDRP panels have consistently found bad faith where the domain name in question is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating:
(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) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. By virtue of its trademark registration and use of the mark JDRF in commerce, which began as early as 2000, the Panel finds that Complainant owns trademark rights in the JDRF Mark, which predate the registration of the Domain Name.
The Domain Name contains Complainant’s JDRF Mark in its entirety, as a dominant element. It is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307. Here, the Domain Name consists of the JDRF Mark and geographic term “Illinois.” Numerous panels have found that the addition of a geographically descriptive word is insufficient to mitigate confusion between a domain name and a complainant’s trademark. See, e.g., Société des Produits Nestlé S.A. v. Pedro Flores,WIPO Case No. D2014-2220 (finding to be confusing similar to NESTLE mark); Jaguar Land Rover Limited v. GKG.NET Domain Proxy Service Administrator / Grupo Sanchez Estrada, S.A. de C.V., Alejandra Ruiz,WIPO Case No. D2014-1631 (finding to be confusingly similar to LAND ROVER mark); Inter Ikea Systems B.V. v. Luis Fernando Kosonoy Michel,WIPO Case No. D2011-1971 (finding to be confusingly similar to IKEA mark). Compounding a finding of confusing similarity here, Complainant has an Illinois chapter.
The Panel finds that Complainant has met its burden of showing that the Domain Name is confusingly similar to the JDRF Mark in which Complainant has valid trademark rights. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that Respondent is not associated with Complainant and that Respondent is not authorized to use the JDRF Mark. Although properly notified by the Center, Respondent failed to submit any response justifying its use of the Domain Name, the content on the Website or explaining its decision to use the JDRF Mark on the Website. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of a domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Complainant has made a prima facie showing on this element, at which point the burden shifts to Respondent to establish that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As an initial matter, Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as Janice Greene. See Moncler S.p.A. v. Bestinfo,WIPO Case No. D2004-1049 (“the Panel notes that the Respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name”).
Complainant asserts that the Domain Name resolves to a website that is a case of “spoofing” to improperly divert web traffic from Complainant’s websites. Complainant points out that the Website uses the JDRF Mark and the tagline “Juvenile Diabetes Research Foundation International” (a version of Complainant’s former corporate name) and contains links to other unrelated third-party websites. The Website’s content appears to be trying to earn click-through revenue from traffic driven to the Website by use of the JDRF Mark. The use of the JDRF Mark in connection with the Website is not a bona fide use of the Domain Name. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByP / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options).
Lastly, Respondent’s use of the Domain Name is not noncommercial or fair use under paragraph 4(c)(iii) of the Policy, given that Respondent is using the Domain Name in connection with the Website that uses the JDRF Mark along with unrelated content, such as posts entitled, “Rumors, Deception and Mattress Coupons”, “SEO Brisbane” and “Diamond Rings Exposed”. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is comprised of Complainant’s JDRF Mars and the word, “Illinois”, which creates the commercial impression that the Domain Name is related to Complainant or its Illinois state chapter. There is no explanation for Respondent to have chosen to register the Domain Name and to use its as Respondent has done and is currently doing other than to trade off the goodwill and reputation of Complainant’s JDRF Mark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.
Further with respect to the use of the Domain Name, paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” As discussed herein, Respondent registered the Domain Name and has linked it to a Website that is using JDRF Mark in its header but is posting content wholly unrelated to Complainant or its mission. Moreover, nothing on the Website informs Internet users as to why the JDRF Mark is being used or disclaims a relationship with Complainant. See Ident gene, Inc. v. Genetest Laboratories,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith. 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.
John C McElwaine
Sole Panelist
Date: June 20, 2019
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