Complainant is Sea Change Foundation, United States of America (“United States”), represented by Sideman & Bancroft LLP, United States.
Respondent is Contact Privacy Inc. Customer 1247105442, Canada / Larry Alexander, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2020. On June 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2020, 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 June 18, 2020, 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 June 23, 2020. 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 June 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2020. The Response was filed with the Center July 7, 2020. The Center appointed Robert A. Badgley, Peter J. Dernbach and Frank L. Politano as panelists in this matter on August 11, 2020. The Panel finds that it was properly constituted. Each member of 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. On August 26, 2020, the Panel issued Procedural Order No. 1, stating as follows: “Without making any determination on the substance of this dispute, the Panel requests Respondent to provide, on or before September 1, 2020, the following: 1. contemporaneous evidence (including but not limited to emails) to prove that he adopted the theme “Scholarship, Engagement, and Action” prior to receiving notice of the Complaint in this proceeding. Such evidence shall be authenticated by Respondent via sworn statement; 2. a sworn confirmation by Respondent that he was not aware of Complainant or its SEA CHANGE trademark at the time he registered the Domain Name; 3. a sworn statement by Respondent confirming whether he first sought to register the domain name 4. a sworn explanation by Respondent why he used a privacy protection service when registering the Domain Name. Complainant shall have five business days after receipt of Respondent’s reply to this Procedural Order No. 1 to respond thereto.” On August 28, 2020, Respondent submitted a filing in response to Procedural Order No. 1. 4. Factual Background According to the Complaint, Complainant is a nonprofit organization, founded in 2006, which “focuses its philanthropy on fighting global climate change and supporting clean energy initiatives.” Complainant asserts that it has used the mark SEA CHANGE FOUNDATION continuously since “as early as 2008.” Complainant has given more than USD 500 million to various charitable causes since its formation in 2006. Complainant has also sponsored charitable events, and has been discussed in various publications. On January 6, 2009, Complainant secured the registration with the United States Patent and Trademark Office (“USPTO”) for the mark SEA CHANGE FOUNDATION, Reg. No. 3,558,227, in connection with “charitable foundation services, namely, providing grants to charitable organizations.” Complainant has owned the domain name The Domain Name was registered on May 1, 2020. The Domain Name does not resolve to an active website. On February 28, 2020, Respondent filed with the Minnesota Secretary of State Articles of Incorporation for a non-profit corporation named the “Ida B. Wells Center on American Exceptionalism and Restorative Justice” (the “Wells Center”). According to Respondent, the Wells Center was created to “promote restitution for chattel slavery in the United States and to engage the global community in examining American exceptionalism.” On May 15, 2020, Respondent filed with the Secretary of State “Amended and Restated Articles of Incorporation” (“Amended Articles”) for the Wells Center. At that time, Respondent also filed a Charter, a Mission Statement, and Bylaws for the Wells Center. Article III, section 3.01 of the Amended Articles stated in part (with emphasis added): “Our raison d’être is to serve as a catalyst for ideas, strategies and to develop valued metrics through Scholarship, Engagement and Action to create civil and economic sea change and to create a global academic thought leadership forum.” These references to “Scholarship, Engagement and Action” and “sea change” are also repeated in the Mission Statement and Bylaws for the Wells Center that Respondent filed with the Secretary of State on May 15, 2020. In response to the Panel’s Procedural Order No. 1, Respondent provided some contemporaneous evidence that the Wells Center had adopted the “Scholarship, Engagement, and Action” and “sea change” themes prior to the filing of the Complaint in this proceeding on June 15, 2020. The Panel notes further that there is no evidence that Complainant made any contact with Respondent before the filing of the Complaint on June 16, 2020. According to Respondent, he registered the Domain Name because it captured the theme of the Wells Center’s above quoted raison d’être. Respondent notes the first letters of “Scholarship, Engagement, and Action” are “SEA.” Respondent swears under oath that he was not aware of Complainant or the SEA CHANGE FOUNDATION trademark. He also states that he was aware that the domain name (which Complainant owns) Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent asserts, as was set forth above, that he has a legitimate interest in the Domain Name, and that he was unaware of Complainant and its SEA CHANGE FOUNDATION trademark when he registered the Domain Name. Respondent also disputes Complainant’s allegation that the SEA CHANGE FOUNDATION is a well-known trademark. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (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. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark SEA CHANGE FOUNDATION through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the mark. The Domain Name fully incorporates the distinctive portion of the SEA CHANGE FOUNDATION mark, i.e., “sea change,” and omits the descriptive word “foundation.” Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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. The Panel need not decide this element, given its finding below that the Domain Name was not registered in bad faith. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the 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 its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s 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. The Panel concludes that Complainant has failed to prove that Respondent registered and used the Domain Name in bad faith. The Panel first observes that “sea change” is a fairly common expression. The Panel notes further that Complainant’s mark is SEA CHANGE FOUNDATION, not SEA CHANGE. The Panel also finds that Complainant has not supported with any meaningful evidence its claim that SEA CHANGE FOUNDATION is a well-known mark such that Respondent was more likely than not aware of it. In addition, the record includes Respondent’s sworn and unequivocal denial of any knowledge of Complainant or its mark at the time he registered the Domain Name on May 1, 2020. On the record developed in this case, the Panel finds that denial plausible. The Panel also notes that Respondent began adopting the theme “Scholarship, Engagement and Action” and the term “sea change” in its corporate documents before he received any notice of this dispute. Under the foregoing circumstances, and given the fact that Complainant bears the burden of proving each of the three elements required under the Policy for a transfer of the Domain Name, the Panel unanimously concludes that Complainant has failed to meet its burden of proving that the Domain Name was registered and has been used in bad faith. The Complaint fails. Complainant has not established Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, the Complaint is denied. Robert A. Badgley Peter J. Dernbach Frank L. Politano
Presiding Panelist
Panelist
Panelist
Date: September 14, 2020
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