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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Samaritan’s Purse v. Spiral Matrix

Case No. D2006-1601

 

1. The Parties

The Complainant is Samaritan’s Purse, North Carolina, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Spiral Matrix, Eldoret, Kenya.

 

2. The Domain Name and Registrar

The disputed domain name <operationchristmaschild.info> is registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2006. On December 19, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 19, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on December 28, 2006. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on December 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 18, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2007.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 31, 2007. 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 non-profit organization and has been administering the Operation Christmas Child program for approximately 14 years. The said operation is based on the deliver of shoeboxes filled with toys and gifts to deprived children in several countries. The amount of boxes sent in this program has reached the number of 46 million, distributed over 130 countries and has transformed this operation on the largest Christmas program directed to children.

Due to the work developed in several countries, Complainant received worldwide attention, specially from the press, which helped to publicize the project. Complainant has several offices located around the world.

The trademark OPERATION CHRISTMAS CHILD has been used by Complainant since 1993, in several charity services with the purpose of making people conscious about the importance of donating gifts and changing children’s reality. Complainant owns numerous registrations for such trademark in various countries, such as United States, Canada, Australia, Republic of Korea and New Zealand, as exposed below:

TRADEMARK	REGISTRATION No.	COUNTRY
OPERATION CHRISTMAS CHILD	1.937.796	United States of America
OPERATION CHRISTMAS CHILD	3.116.509	United States of America
(Image)	1.972.496	United States of America
OPERATION CHRISTMAS CHILD	676827	Australia
(Image)	TMA577282	Canada
OPERATION CHRISTMAS CHILD	TMA449588	Canada
OPERATION CHRISTMAS CHILD	2624484	Community Trade Mark
(Image)	2624922	Community Trade Mark
OPERATION CHRISTMAS CHILD	4101324940000	Republic of Korea
OPERATION CHRISTMAS CHILD	702809	New Zealand
(Image)	702806	New Zealand

Complainant also registered the domain names <operationchristmaschild.com> , <operationchristmaschild.org> and <operationchristmaschild.net> in May 26, 2000, and has since then been using the last two domain names in connection with the Operation Christmas Child.

 

5. Parties’ Contentions

A. Complainant

Complainant claims the disputed domain name to be identical to its registered trademark, since there is no addition or deletions that could distinguish the disputed domain name as the suffix .info does not add any distinctiveness thereto.

Complainant also asserts that it started to use the expression “OPERATION CHRISTMAS CHILD” as trademark and domain name well before the registration of the disputed domain by Respondent, which occurred almost fourteen (14) years after.

In addition, Complainant affirms that Respondent was aware of the fact that the trademark it used to create a domain name was already registered by Complainant, since Respondent chose to register the disputed domain name with the suffix .info, probably after discovering that Complainant had already registered and uses the disputed domain name with the suffixes .net and .org.

Complainant also affirms that Respondent registered the disputed domain name nearly thirteen (13) years after Complainant’s first use of OPERATION CHRISTMAS CHILD establishment of rights regarding the said mark by its federal registrations obtained and massive use of it in its campaigns.

Furthermore, Complainant clarifies that there never was any kind of relationship between the parties that could result in any license, permission or rights authorizing the use of the above-mentioned trademark by Respondent. There is also no evidence of previous register of the said mark or its use by Respondent.

Complainant also states that Respondent is using the disputed domain name to profit by the web traffic caused in view of its mark, since the disputed domain name only offers links related to children and its interests.

Finally, Complainant argues that Respondent was aware of the fact that Complainant has prior rights and use regarding its trademark, and that has also been the practice of Respondent in several other cases.

B. Respondent

Respondent did not reply to Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy Complainant must prove each of the following:

(i) that the domain name registered by Respondent is identical or confusingly similar to the trademarks or service marks in which Complainant has rights;

(ii) that Respondent has no rights or no legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is used in bad faith.

A. Identical or Confusingly Similar

To determine whether a domain name and a trademark are identical or confusingly similar, the gTLDs that composes the domain name shall be ignored.

For that reason, in connection with paragraph 4(a)(i) of the Policy, the Panel finds that domain name <operationchristmaschild.info> is identical to Complainant’s registered trademark OPERATION CHRISTMAS CHILD.

B. Rights or Legitimate Interests

Respondent registered the disputed domain name almost fourteen (14) years after Complainant started using the trademark OPERATION CHRISTMAS CHILD in connection with a beneficent program, which demonstrates Complainant’s prior rights regarding the said mark.

The lack of rights and legitimate interests can also be proved by the fact that there is no relationship established between the parties or authorization for the use of Complainant’s trademark.

Respondent has not replied to the Complaint and has not presented any other evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name. Therefore, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

In this sense, the Panel finds that Respondent has no right or legitimate interest in respect of the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant’s mark was used in its original form by Respondent to register the disputed domain name. Respondent did not add any letter or word that could properly distinguish its domain name from Complainant’s mark.

Furthermore, the Panel is not convinced on the evidence that Respondent was unaware that such trademark was already registered and being used by Complainant, not only due to Complainant’s numerous trademark registrations, but also to the extensive media coverage of Complainant’s activities, as well as to the fact that since May 26, 2000, Complainant owns identical domain names under the gTLDs .com, .org and .net.

At the time of the filing of the Complaint, Respondent was clearly using the recognition of Complainant’s trademark to earn profit from web traffic by attracting consumers interested in Complainant’s programs. This practice of misleading the consumers to believe they are accessing Complainantґs site in order to make commercial gain configures bad faith, as decided in many other cases, such as Tia Carrere v. Steven Baxt, WIPO Case No. D2005-1072:

“This Panel finds that Respondent registered the disputed domain name in order to trade off that reputation by creating a false impression of association between Respondent and Complainant and thereby attract Internet users seeking Complainant’s site to Respondent’s website. Therefore, Respondent registered the disputed domain name in bad faith.”

See also International Organization for Standardization v. International Supplier Operations Audit Services, WIPO Case No. D2002-0460:

“The Panel finds that the Respondent deliberately and unjustifiably selected the Domain Names with a view to associating itself and/or its services with the Complainant and in the hope that it would attract internet users to its website for commercial gain, those internet users believing that they would be visiting a site of the Complainant.”

Finally, bad faith in this case is also corroborated by the fact that Respondent is an habitual registrant of domain names infringing third party trademark rights, as has been decided in other cases, such as Humana Inc. v. Spiral Matrix, WIPO Case No. D2006-0822; Jafra Cosmetics, S.A. de C.V. v. Spiral Matrix, WIPO Case No. D2006-0716; F. Hoffmann-La Roche AG v. Spiral Matrix, WIPO Case No. D2006-0781. In all such cases, the Panel’s decisions were to order the transfer of the disputed domain name to Complainant.

Thus, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. The Panel therefore, concludes that Complainant has proven Respondent’s bad faith pursuant to paragraph 4(a)(iii) of the Policy.

 

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, <operationchristmaschild.info> be transferred to Complainant.

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Gabriel F. Leonardos
Sole Panelist

Dated: February 14, 2007