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WIPO Arbitration and
Nordiska Föreningen för Falun Dafa and Eastern US Buddha’s Study Association v. Ted Smathers/Webforce, Inc.
Case No. DNU2004-0001
1. The Parties
The Complainants are Nordiska Föreningen för Falun Dafa, Gothenburg, Sweden; and Eastern US Buddha’s Study Association, New York, New York, United States of America, represented by Groth & Co KB, Sweden.
The Respondent is Ted Smathers/Webforce, Inc., Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <falundafa-se.nu> is registered with .NU Domain Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2004. On January 28, 2004, the Center transmitted by email to .NU Domain Ltd., a request for registrar verification in connection with the domain name at issue. On January 28, 2004, .NU Domain Ltd., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2004.
The Center appointed Peter G. Nitter as the Sole Panelist in this matter on March 4, 2004. 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
The Complainants represent an organization, which practices a traditional Chinese spiritual discipline Falun Dafa, also called Falun Gong, which is based on an ancient practice called qigong. The practice includes exercises and meditation.
Eastern US Buddha’s Study Association has two registered trademarks upon which the Complaint is based. They are US Registration No. 2596982, FALUN DAFA, dated July 17, 2000, and US Registration No. 2593739, FALUN GONG, dated July 10, 2000. The registrations are verified in Annex E to the Complaint which are printouts from the USPTO website. The printouts verify that Eastern US Buddha’s Study Association is the legal owner of the above-mentioned trademarks and that the date of first use is May 13, 1992.
5. Parties’ Contentions
The disputed domain name incorporates the Complainants’ trademark FALUN DAFA in its entirety. The addition of the suffix "-se" is not sufficient to distinguish the domain name from the trademark. Such a suffix is generally understood as a geographical abbreviation for the country Sweden. According to previous WIPO case law, the addition of a generic word to a trademark has little or no legal significance.
Thus, the Complainants are of the opinion that the disputed domain name <faludafa-se.nu> is confusingly similar to the trademark FALUN DAFA in which the Complainants’ have rights.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not owner of any trademark, service mark or other rights with a name similar to the domain name in question. The Respondent is not commonly known by the domain name. Neither is the Respondent making a legitimate non-commercial or fair use of the domain name without intent for commercial gain. The Respondent is, by misleading conduct, diverting consumers to his website, and by this practice the trademark at issue is also tarnished. In previous correspondence, the Respondent has not indicated that he has rights or legitimate interests in the domain name.
The Respondent registered the domain name as soon as the Complainants failed to renew their registration. This was done in order to take advantage of the Internet traffic that had already been established on the Complainants’ website. The Respondent has copied the content from the Complainants’ website and modified it by adding hyperlinks to various websites containing adult and explicit pornographic material. Due to the fact that the Respondent inserted words of a sexual nature into the original text of the copied website, Internet users on the site found distorted information about the Complainants.
The Complainants made a complaint to the Registrar on July 7, 2003. The Registrar requested the Respondent to remove all copyrighted material.
On July 12, 2003, the Complainants contacted the Respondent and requested him to have the disputed domain name transferred and to post a message on the website connected with the disputed domain name stating that the Complainants’ website had moved. After a further letter from the Complainants of July 14, 2003, the Respondent, on July 15, 2003, answered that the disputed domain name "will generate $1000+ per month in revenue for at least the next 6-12 months" and that he cannot "give it back."
The Complainants have secured various material from the website clearly indicating that the Respondent registered and is using the confusingly similar domain name in order to attract Internet users to commercial pornographic websites.
Printouts of the source code of the disputed domain name also provide evidence that the Respondent is using the domain name in question in order to display links to websites with pornographic content.
The Respondent did not reply to the Complainants’ letter of August 7, 2003, requesting him to transfer the domain name.
The Complainants are of the opinion that the above-mentioned circumstances show that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring the domain name to the owner of the trademark or to a competitor.
Furthermore, by using the domain name as described above, the Respondent intentionally attempts to attract, for commercial gain, internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainants’ trademark.
Finally, the Complainants are of the opinion that the registration was done in order to prevent the Complainants from continuing to reflect their trademark in a corresponding domain name and to tarnish the mark.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant Eastern US Buddha’s Study Association is the legal owner of the trademark registrations US Registration No. 2596982, FALUN DAFA, dated July 17, 2000, and US Registration No. 2593739, FALUN GONG, dated July 10, 2000. This is confirmed by Annex E to the Complaint, which also shows that the date of first use of the trademarks was May 13, 1992.
The domain name in dispute consists of the mark FALUN DAFA with the addition of the term "-se." The domain name is thus not identical to the Complainant’s trademark. The question is then whether the domain name is confusingly similar to the trademark.
The term "falundafa" must be said to be the dominant and distinctive component of the domain name. The first part of this term is also to be found in the Complainants’ mark FALUN GONG, which must be said to be widely known. The dominant "falundafa" comes first in the domain name, and thus leaves the impression that the domain name is in some way linked to the owners of the FALUN DAFA trademark.
Previous cases under the Policy have shown that simply adding a common or generic
term to a famous mark is not sufficient to give the domain name an individual
meaning and prevent the overall impression that the domain name has some sort
of connection with the Complainant, see WIPO
Case Nos. D2001-0174, D2000-0022,
D2000-0477 and NAF Case No. FA 95404.
The Panel is in some doubt as to whether the term "-se" can be characterized as a generic term. It is not a common word as was the case in the above-mentioned decisions under the Policy. However, the Panel recognizes that the term is a common geographical abbreviation for the country of Sweden. Furthermore, the term ".se" is the Swedish Top Level Domain. The two terms are very similar, as the only difference is that the term added to the Complainants’ trademark has a hyphen in front of it, while the Top Level Domain has a dot in front.
Considering that "falundafa" clearly is the dominant in the domain name, and especially in light of the added term being very similar to the Swedish Top Level Domain, the addition of the abbreviation simply leaves the impression that the domain name is linked to the website of the Swedish "branch" of the Complainants’ organization.
Thus, the term does not have the necessary distinguishing effect, and the addition
of the term is not sufficient to avoid the domain name of being confusingly
similar to the trademark. In this regard, the Panel makes reference to WIPO
Case No. D2001-1231, in which the Panel found that the addition of the term
"-uk" to the registered trademark BMW was not sufficient to avoid
the finding that the trademark and the domain name were confusingly similar.
Hence, the Panel finds that the domain name in question is confusingly similar to a mark in which the Complainants have rights, and the prerequisite in the Policy, paragraph 4(a)(i) is fulfilled.
B. Rights or Legitimate Interests
The Panel has considered the assertion made by the Complainant as to the lack of rights or legitimate interests of the Respondent in respect of the domain name at issue.
The Complainants claim that the Respondent has not been commonly known by the domain name. The Complainants also hold that the Respondent is not making a legitimate noncommercial or fair use of the domain name. On the contrary, they find that the Respondent uses the domain name to tarnish the trademark at issue.
The Respondent has not argued that he has rights or legitimate interests in the domain name in his previous correspondence with the Complainant, see Annex F to the Complaint. Neither has he filed any Response to the Complaint.
The Panel has visited the "www.falundafa-se.nu" website, in order to investigate whether evidence could be found as to the Respondent’s rights or legitimacy of interest in the contested domain name.
At present, the site does no longer appear in the same form as it is presented in the Complaint, Annexes H and I. The website now only shows a page with the headline ‘What is Falun Gong?’ and below a brief description of the Falun Dafa practice. There is also a hyperlink to the website "www.falundafa.org," which seems to be the Complainants’ website.
Thus, the site neither gives any indications as to whether the Respondent has rights or legitimate interests in the domain name. There is nothing on the present site indicating that the Respondent has been commonly known by the domain name or whether he has made legitimate noncommercial or fair use of the domain name or not.
However, based on the evidence presented to the Panel by the Complainants, the Panel is not in doubt that the Respondent has not made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain. The Respondent has used the domain name to mislead and to divert consumers to pornographic websites for his own commercial gain, a conclusion which is supported by his own statements, confirming that the domain name generates large incomes and that he therefore cannot give the domain name back, see Annex F to the Complaint.
Thus, the Panel has found nothing on or outside of the website, or in the Annexes to the Complaint as being evidence of the Respondent’s rights or legitimate interests in the domain name.
Hence, the Panel finds that the Respondent does not have rights or legitimate interests in the domain name, and the prerequisites in the Policy, paragraph 4(a)(ii) are therefore fulfilled.
C. Registered and Used in Bad Faith
The Respondent registered the domain name on June 16, 2003, just after the Complainants had failed to renew their registration.
The Respondent then copied all the content on the Complainants’ website and modified the information by adding hyperlinks to other websites containing pornographic material. The hyperlinks are inserted into the original text of the copied website as words of a sexual nature. Thus, the Internet users visiting the site were exposed to distorted information about the Complainants.
The Complainants have contacted the Respondent several times in order to persuade him to stop this practice and to transfer the domain name in dispute to the Complainants. The Respondent has replied to these requests that the domain name generates substantial amounts of money, and that he therefore cannot transfer the domain name to the Complainants.
The Complainants hold that the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainants or to a competitor, something that is considered evidence for registration and use in bad faith. The Panel finds that it has not been proved that the domain name was registered in order to be sold or rented to the Complainant. On the contrary, the Respondent in his email correspondence with the Complainant advises against buying the domain name for the amount he would ask, Annex F to the Complaint.
Further, the Complainants assert that the Respondent registered the domain name in order to prevent the Complainants from continuing to reflect their trademark in a corresponding domain name. The Panel finds that such intent has not been proved, and neither that the Respondent has engaged in a pattern of such conduct.
However, the Panel finds that the Respondent’s conduct leaves no doubt that he both registered and used the domain name in bad faith. The Respondent exploited the traffic already generated to the site connected to the domain name and diverted it to pornographic websites, by copying and using material produced by the Complainants. The Respondent has himself admitted that he earns money on the site and this practice, Annex F to the Complaint.
Thus, it must be clear that the Respondent intentionally has attempted to attract
Internet users to his website and further to other pornographic websites for
commercial gain. This was done by intentionally creating a likelihood of confusion
between the domain name and the Complainants’ trademark. The practice of attracting
Internet users by creating a likelihood of confusion has been considered evidence
of bad faith in previous panel decisions under the Policy, see for example WIPO
Case Nos. D2000-0654, D2000-0923,
D2000-0948 and D2001-1319.
In particular, using the domain name to display hyperlinks to pornographic
material has been considered evidence of bad faith in several previous panel
decisions under the Policy, see WIPO Case
Nos. D2003-0501 and D2003-0513.
Such use of a domain name, which is confusingly similar to a registered trademark, does not only confuse the consumers, it also tarnishes the Complainants’ trademark. Especially the latter, since the Respondent displays the hyperlinks to pornographic websites by inserting words of a sexual nature into the original text written by the Complainants describing and informing the public of the Complainants’ and their practice and activities.
Hence, the Panel finds that the domain name is registered and used in bad faith by the Respondent, and the prerequisites in the Policy, paragraph 4(a)(iii) are fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <falundafa-se.nu>, be transferred to the Complainant.
Peter G. Nitter
Dated: March 18, 2004