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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Americares Foundation, Inc. v. Americares and Mike Roper
Case No. D2001-0899
1. The Parties
The Complainant is Americares Foundation, Inc., a corporation organized in the State of Connecticut, United States of America (USA), with place of business in New Canaan, Connecticut, USA.
The Respondent is Americares Inc. d.b.a Mike Roper, with address in La Jolla, California, USA.
2. The Domain Name and Registrar
The disputed domain name is <americares.com>.
The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) Complainant initiated the proceeding by the filing of a complaint via e-mail and courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on July 16, 2001. Complainant paid the requisite filing fees. On July 18, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions (with the Registrar’s Response received by WIPO on July 23, 2001).
(b) On July 24, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail. WIPO also transmitted notification to Respondent’s technical contact via telefax.
(c) On July 14, 2001, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail.
(d) On July 25, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On August 20, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
(e) On August 21, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by September 4, 2000. On August 21, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.
(f) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision in this matter would be extended until September 11, 2001.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent’s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant is the holder of a valid and subsisting service mark registration for the term "AMERICARES" on the Principal Register at the U.S. Patent and Trademark Office (USPTO), Reg. No. 2310959, dated January 25, 2000, in International Class 36, covering "charitable fund raising services to support the distribution of food, clothing, medicine and medical services". Complainant’s application for registration of the "AMERICARES" mark claims a date of first use in commerce of December 24, 1981. (Complaint, para. 12.c & Annex 4).
Complainant has made extensive use of the "AMERICARES" mark in the United States and other countries, having as of the date of the filing of its complaint in this proceeding distributed over $2,000,000,000 in charitable aid (id., para. 12.a).
Complainant has registered the domain name <americares.org> and maintains an active website at Internet address (URL) <www.americares.org> (id., para. 12.j).
Complainant has also registered and uses the service mark "AMERICARES HOMEFRONT" (id., para. 12.d & Annex 5).
According to the registrar’s verification response to WIPO, dated July 23, 2001, "Americares" is the listed registrant of the disputed domain name <americares.com>. The Administrative Contact, at the same address, is "Roper, Mike". According to a Network Solutions’ WHOIS database printout furnished by Complainant, the record for the disputed domain name was created on August 27, 1996, and was last updated on August 23, 2000 (Complaint, Annex 1). Complainant represents that the mailing address listed in Respondent’s record of registration refers to a mail receipt facility, and not to Respondent’s business location (id., para. 7).
Pursuant to a default judgment rendered by the Federal District Court for the Southern District of California based upon an action for infringement brought by Complainant, Michael Roper has been permanently enjoined from "using the term ‘AMERICARES’ , and any trade name, mark or domain name which includes the term ‘AMERICARES’, and any other name or mark confusingly similar to ‘AMERICARES" (Americares Foundation, Inc. v. Michael Roper and William Mooney, CV No. 00cv2019 W(RBB), March 13, 2001 (S.D. Cal.), id., para. 12.f.& Annex 6).
Prior to the court injunction, Respondent had maintained an active website at URL <www.americares.com> that, inter alia, solicited contributions to an alleged non-profit public benefit corporation referred to as "Americares Inc." Such a corporation was not in fact established. (Id., para. 12.i).
On at least one occasion, a substantial charitable contribution intended for Complainant was mistakenly sent to Respondent as a result of Internet user confusion regarding an association between Respondent’s www.americares.com website and Complainant. On this occasion, Respondent promised to return the contribution to the person who had mistakenly made it, but Respondent as of the date of the filing of the complaint in this matter has failed to do so. (Id., para. 12.k & Annex 8 [containing affidavit of individual making mistaken charitable contribution]).
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts that it has rights in the service mark "AMERICARES" as evidenced by its USPTO registration and extensive use in charitable business (see Factual Background, supra).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because, inter alia, Respondent has not in fact organized a charitable corporation as it has publicly represented. Complainant also alleges that the court injunction against any use by Respondent of the term "AMERICARES" conclusively establishes that Respondent has no rights or legitimate interests in the term.
Complainant claims that Respondent registered and has used the disputed domain name in bad faith by intentionally attempting to attract for commercial gain Internet users to his website by creating confusion regarding Complainant’s sponsorship of or affiliation with that website.
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
Respondent has not replied to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Because the Respondent has defaulted in providing a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., paragraph 15(a)).
A federal district court in the United States has determined that Respondent infringed Complainant’s rights in the service mark "AMERICARES" by, inter alia, his use of the disputed domain name in connection with an alleged business. Such federal court has enjoined Respondent from use of the disputed domain name. Based on this judicial determination, the Panel finds that Complainant has rights in the mark "AMERICARES" and that the disputed domain name <americares.com> is confusingly similar to that mark.
Respondent has been permanently enjoined by a U.S. federal court from using the disputed domain name as a consequence of his infringement of Complainant’s mark. Respondent has not demonstrated rights or legitimate interests in the disputed domain name.
Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to his website by creating confusion as to Complainant’s sponsorship of or affiliation with that website. On at least one occasion, an Internet user mistakenly made a substantial payment to Respondent believing that such contribution was being made to Complainant, and Respondent as of the filing of the complaint in this matter failed to return such payment to the contributor. The Panel finds that such conduct represents bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has met the burden of establishing under paragraph 4(a) of the Policy that it has rights in a service mark, that Respondent has registered and used a domain name that is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and has used the disputed domain name in bad faith.
Based on its finding that the Respondent has engaged in abusive registration and use of the domain name <americares.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <americares.com> be transferred to the Complainant.
Frederick M. Abbott
Dated: September 11, 2001