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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc.

Case No. D2006-0388

 

1. The Parties

The Complainant is Save the Children Federation, Inc., Westport, Connecticut, United States of America, represented by Weil, Gotshal & Manges LLP, United States of America.

The Respondent is Steve Kerry dba North West Enterprise, Inc., Santa Fe Springs, California, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <savechildren.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2006. On March 29, 2006, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On March 31, 2006, OnlineNic, Inc. d/b/a China-Channel.com 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 April 4, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2006.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 8, 2006. 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.

On May 8, 2006, the Center received an e-mail from Respondent indicating that he had not received documents from the Center in this proceeding. The Center immediately forwarded that correspondence to the Panel. The Panel reviewed Respondent’s e-mail in light of information in the case file. Respondent’s May 8 correspondence used the e-mail address which the Center and Complainant used to contact it on a number of previous occasions, including for the transmission of the Complaint. In light of Respondent’s prior history as complained-against party under the Policy (see Factual Background, infra), the Panel concluded that the Center had given proper notice to Respondent, including by the transmission of documents, and that Respondent’s e-mail of May 8, 2006, represented an effort to delay these proceedings. The Panel took no further action with respect to Respondent’s e-mail of May 8, 2006.

 

4. Factual Background

Complainant has registered the word trademark and service mark SAVE THE CHILDREN on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 2582204, dated June 18, 2002, service mark in International Class (IC) Class 36, covering, inter alia, “charitable fund raising services”, claiming date of first use and first use in commerce of November 30, 1939, and; reg. no. 1380438, dated January 28, 1986, word trademark in ICs 18, 21 and 39, covering various products, including clothing. Complainant also has registered the word service mark SAVE THE CHILDREN FEDERATION on the Principal Register of the USPTO, reg. no. 991617, dated August 20, 1974, in 1C 42, covering ‘‘eleemosynary services”, claiming date of first use and first use in commerce of November 30, 1939. (Complaint, para. 11 & Exhibit 3)

Complainant has long used its SAVE THE CHILDREN trademark and service mark in the United States and other countries in connection with fund-raising, education and assistance for impoverished children. As a consequence of this long and extensive usage, Complainant’s mark has become well-known in the United States. (Complaint, paras. 10-12 & Exhibit 4)

Complainant has since 1995 operated an Internet website which promotes and supports its charitable enterprise at URL “www.savethechildren.org”. In addition to the domain name <savethechildren.org>, Complainant has registered numerous other domain names incorporating or substantially similar to its SAVE THE CHILDREN mark, such as <savechildren.org> and <savethechildren.com>. Complainant’s additional domain names resolve to its website at “www.savethechildren.org”. (Complaint, para. 14 & Exhibit 4)

According to the registrar’s Verification Response, Respondent is registrant of the disputed domain name <savechildren.com>. According to an OnlineNIC Whois search report submitted by Complainant, the disputed domain name was registered on August 8, 2001. (Complaint, Exhibit 1)

As late as February 7, 2006, the disputed domain name resolved to a website homepage captioned “savechildren.com” that included prominent links to various subject matters, including “Accommodations”, “Child Care” and “Toddlers”. On its right-hand side, this homepage included various sponsored links, such as to “www.christianchildrensfund.org” and “www.amazon.com”. (Complaint, para. 22 and Exhibit 9) Subsequent to the transmittal by Complainant of cease and desert and transfer demands to Respondent, the aforementioned content was removed from the website. (Complaint, para. 22)

Respondent Steve Kerry has been the subject of numerous complaints under the Policy, also doing business, inter alia, as North West Enterprise, Inc. and WWW Enterprise, Inc.1 A number of those complaints involved the practice known as “typo-squatting”. In all cases identified by Complainant, the panel has ordered transfer of the disputed domain name.2 (Complaint, para. 18)

The Registration Agreement in effect between Respondent and OnlineNic, Inc. d/b/a China-Channel.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that it holds rights in the trademark and service mark SAVE THE CHILDREN and that the disputed domain name is confusingly similar to that mark. Complainant argues that its SAVE THE CHILDREN mark is well-known in the United States and other countries.

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

Complainant requests the Panel to transfer the disputed domain name to it.

B. Respondent

The Respondent did not reply to the 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 establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center transmitted notification of the Complaint to Respondent at the addresses indicated for its registration of the disputed domain name. The Center’s record of e-mail transmissions indicates that there were no problems with its outbound messages to Respondent, and Respondent recently contacted the registrar using the same e-mail address employed by the Center. The Panel is satisfied that Respondent was given adequate notice of these proceedings.

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.

A. Identical or Confusingly Similar

Complainant has submitted evidence of registration of the trademark and service mark SAVE THE CHILDREN on the Principal Register of the USPTO (see Factual Background, supra). Such registration establishes presumptive validity of the mark. Respondent has not challenged Complainant’s rights in the mark. The Panel finds that Complainant has rights in the trademark and service mark SAVE THE CHILDREN.

Complainant has submitted evidence that the trademark and service mark SAVE THE CHILDREN is well-known in the United States and other countries based on long and extensive use, and recognition by the public. The Complainant’s mark is composed of common descriptive terms. This mitigates to a certain extent against a finding of strong secondary meaning. However, the Complainant has provided substantial evidence that its trademark and service mark are among the most widely recognized of those in use by charitable organizations. The Panel finds that Complainant’s SAVE THE CHILDREN mark is well-known in the United States.3

The disputed domain name <savechildren.com> incorporates Complainant’s mark, while omitting the definite article “the” in the disputed domain name. 4 The extent to which terms are confusingly similar as a matter of trademark law depends upon a comparison of the visual impression (sight), sound and meaning of the terms.5 There is a visual similarity between the terms SAVE THE CHILDREN and “savechildren”. The sounds of the terms are identical, but for the omission of the term “the” in the domain name. The meaning of the combined terms is virtually identical. Because Complainant’s mark is well known, the possibility for consumer confusion is elevated as Respondent’s use of similar terms is more likely to trigger an association by consumers with the activities of Complainant.

The Panel determines that the disputed domain name <savechildren.com> is confusingly similar to Complainant’s SAVE THE CHILDREN mark.

Complainant has established the first element necessary for a finding of abusive domain name registration and use.

B. Rights or Legitimate Interests

There is insufficient evidence on the record to establish that Respondent has rights or legitimate interests in the disputed domain name. There is no evidence that Respondent used the disputed domain name for a bona fide offering of goods or services prior to notice of the dispute. Complainant’s mark is well-known, and Respondent is presumed to have been aware of it when it registered the disputed domain name. Respondent had constructive notice of a dispute when it registered the disputed domain name.6

Respondent has not offered evidence that it has been known by the disputed domain name, nor is there evidence that it has made legitimate noncommercial or fair use of the domain name.

Complainant has demonstrated that Respondent has no rights or legitimate interests in the disputed domain name and thus has established the second element for a finding of abusive domain name registration and use.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that a respondent “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 [the respondent has] engaged in a pattern of such conduct (Policy, paragraph. 4(b)(ii)), and; (2) that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] website or location of a product or service on [its] website or location” (id., paragraph 4(b)(iv)).

Respondent has used the disputed domain name, which is confusingly similar to Complainant’s well-known mark, for the purpose of intentionally attracting for commercial gain Internet users to Respondent’s website, by creating confusion as to source, sponsorship, affiliation or endorsement by Complainant of Respondent’s website. Such action constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Respondent has engaged in a practice of registering domain names reflecting the trademarks or service marks of third parties, and preventing them from registering those same domain names. Respondent has again engaged in that practice with respect to the disputed domain name here and Complainant’s trademark and service mark. Such action constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy.

The Panel finds that Respondent registered and has used the disputed domain name in bad faith. Complainant has satisfied the third element of the Policy.

The Panel will direct the registrar to transfer the disputed domain name to Complainant.

 

7. Decision

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, <savechildren.com> be transferred to the Complainant.


Frederick M. Abbott
Sole Panelist


Dated: May 15, 2006

1 See Deutsch Telekom AG v. WWW Enterprise, Inc., WIPO Case No. D2005-1136 and Hormel Foods Corporation, Hormel Foods Sales, LLC and Hormel Foods LLC v. Steve Kerry dba North West Enterprise, Inc., NAF Claim No. FA0601000621103, and 15 other cases cited in Complaint, note 2.

2 The Panel has reviewed several but not all 17 cases cited by Complainant. The fact that transfer was ordered in all cases is taken as Complainant’s undisputed factual representation.

3 For purposes of this proceeding, there is no need for the Panel to make a determination regarding whether the mark is well-known outside the United States. This is entirely without prejudice to any future determination on that point.

4 Use of the generic top-level domain identifier “.com” is not relevant to this determination under the Policy.

5 On the legal standards for assessing confusing similarity of terms, see, e.g., Zatarain’s v. Oak Grove Smokehouse, 698 F. 2d 786 (5th Cir. 1983) and AMF v. Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979).

6 Moreover, Respondent’s use of the disputed domain name to direct Internet users to other charitable organizations is not a bona fide offering of services.

 

Источник информации: https://internet-law.ru/intlaw/udrp/2006/d2006-0388.html

 

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