WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AmeriCares Foundation, Inc. v. Mark Ewing
Case No. D2003-0347
1. The Parties
The Complainant is AmeriCares Foundation, Inc., of New Canaan, CT, United States of America, represented by Kirschstein, Ottinger, Israel & Schiffmiller of United States of America.
The Respondent is Mark Ewing of San Diego, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <americare.org> is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 6, 2003. On May 8, 2003, the Center transmitted by email to Melbourne IT a request for registrar verification in connection with the domain name at issue. On May 9, 2003, Melbourne IT 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 May 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2003. On May 28, 2003, the Response due date was extended to June 4, 2003. The Response from the Respondent was filed with the Center on May 29, 2003.
The Center appointed David H. Bernstein as the sole panelist in this matter on June 13, 2003. 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 June 18, 2003, Complainant filed a request for leave to file a Reply, along with a copy of its proposed Reply. That request is hereby denied. The proposed Reply does not present new facts or legal precedents that were unavailable to Complainant at the time it filed its Complaint. Instead, it merely reargues the same issues and purports to respond to Respondentís arguments. The Policy, however, does not contemplate such Replies. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001). Accordingly, the Panel has disregarded this submission.
In response to Complainantís Reply, Respondent on June 26, 2003, submitted a proposed Sur-Reply. Because the Panel has disregarded Complainantís Reply, Respondentís request for leave to file a Sur-Reply is moot.
4. Factual Background
Complainant is a non-profit organization that provides disaster relief and humanitarian aid, and has done so since 1981. Complainantís website, "www.americares.org", contains information describing Complainant, articles describing Complainantís activities, and provides a mechanism for donating money to Complainant.
Respondent is the Director of Operations for AmeriCare MedServices Inc., incorporated in California on May 10, 1996. AmeriCare MedServices Inc. registered a Fictitious Business Name Statement on May 23, 1996, stating that it is doing business as "AmeriCare Ambulance."
On August 18, 2000, Respondent registered the domain name <americare.org>. The Internet site at "www.americare.org" is active at present. It provides contact information for AmeriCare Ambulance, job descriptions for currently available positions, email addresses to which people interested in those positions may send email, and pictures of ambulances.
Complainant owns United States trademark registrations for the marks AMERICARES, Reg. No. 2,310,959, and AMERICARES (and design), Reg. No. 2,310,960. Both registrations are for "charitable fund raising services to support the distribution of food, clothing, medicine and medical services" and were registered on January 25, 2000. Complainant also owns a United States trademark registration for the mark AMERICARES FREE CLINICS (and design), Reg. No. 2,533,777, for "providing primary health care services on a non-profit basis to uninsured and underinsured persons" registered on January 29, 2002.
On October 9, 2002, Complainant wrote to the address provided on the "www.americare.org" website, complaining of the use of the <americare.org> domain name. On December 31, 2002, Complainant wrote a second letter, this time addressed both to AmeriCare MedServices and to Respondent, alerting them of its intention to commence a proceeding to effect the transfer of the domain name. Neither Respondent nor anyone else responded to those letters.
5. Partiesí Contentions
Complainant alleges that Respondentís domain name is confusingly similar to Complainantís trademarks. First, Complainant alleges that the domain name <americare.org> is confusingly similar to its trademark AMERICARES and its other related trademarks. Second, Complainant alleges that the ambulance services marketed at the disputed domain are confusingly similar to the "charitable fund raising services to support the distribution of food, clothing, medicine and medical services" and "primary health care services on a non-profit basis to uninsured and underinsured persons" for which its marks are registered. Third, Complainant provides examples of several instances of actual confusion in which third party websites mistakenly linked to Respondentís website instead of Complainantís website. Fourth, Complainant alleges that the ".org" gTLD is primarily used by charitable and other non-profit groups, and that the corporation whose services are marketed at the disputed domain is not a charitable or non-profit group. Finally, Complainant alleges that the Respondent uses a font substantially similar to the font used in one of their trademarks, and that Respondent capitalizes the same letter in the middle of their name that Complainant does.
Complainant further alleges that Respondent has no legitimate interest in respect of the domain name. First, Complainant alleges that neither the name of the Respondent nor the name of the corporation whose services are marketed at the disputed domain are the same as the disputed domain. Second, Complainant notes that Mike Roper, the registrant for the <americares.com> domain name, resided in the same city that the Respondent listed in the disputed domain nameís registration, that both of those websites featured an animated American flag, and that Complainant sent Mike Roper a notice of infringement two months before the Respondent registered the disputed domain name. The <americares.com> domain name was transferred to the Complainant pursuant to the decision in Americares Foundation, Inc. v. Americares Inc., WIPO Case No. D2001-0899 (September 11, 2001). Finally, Complainant alleges that Respondent has not acquired a license for any of Complainantís trademarks.
Complainant further alleges that Respondent has registered and is using the domain name in bad faith. First, Complainant alleges that Respondent registered the disputed domain name with the intention of gaining the benefit of the fame and good will possessed by Complainant. Second, Complainant alleges that Respondentís registration in the .org gTLD increases the likelihood of confusion between Respondentís and Complainantís respective websites. Third, Complainant alleges that Respondentís website has been used to market medical services and that medical services are one of the core services provided by the Complainant. Finally, Complainant alleges that Respondentís actions constitute "typosquatting," which further evidences bad faith because people who make a typing error by omitting a single letter will reach Respondentís website instead of Complainantís website.
Respondent alleges that his domain name, used for his companyís services, is not identical or confusingly similar to the Complainantís trademark. First, Respondent alleges that the font claimed by Complainant is a commonly used font and that the practice of capitalizing a letter in the middle of their name is also a common practice. Second, Respondent alleges that instances of actual confusion are better remedied by care on the part of the confused party than by transfer of the disputed domain name. Third, Respondent alleges that Complainant and Respondent are dramatically separated geographically and that they offer substantially different services, and therefore that there is minimal risk of confusion between the two on the part of third parties. Fourth, Respondent alleges that he attempted to obtain the <americare.com> domain name for use by his company, but someone else had already registered it.
Respondent further alleges that he has a legitimate interest in the domain name. First, Respondent alleges that his company has invested time and money advertising the website set up at the disputed domain. Second, Respondent alleges that he had never heard of Complainant before this dispute. Third, Respondent alleges that his company has been using the name "AmeriCare Ambulance," an "AmeriCare" logo, and an "AmeriCare" seal continuously since 1996. Finally, Respondent denies any knowledge of or connection to Mike Roper or AmeriCares, Inc.
Respondent further alleges that he did not register and has not used the domain name in bad faith. In addition to repeating the allegations already mentioned, Respondent alleges that he has not attempted to attract users to this website by creating confusion, and that he would have nothing to gain by attracting such visitors.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Ownership of a US trademark registration is prima facie evidence of the validity of the mark. EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000). Therefore, it is clear that Complainant owns the mark AMERICARES.
Equally clear is that the domain name is confusingly similar to that trademark. The only difference is the letter "s" at the end of the trademark. The gTLD .org is to be ignored for purposes of this analysis. J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000). Complainant thus easily sustains its burden of proof under the first factor.
B. Rights or Legitimate Interests
Complainant has not, however, sustained its burden under the second factor. Respondent is an executive with AmeriCare MedServices. Though it might have been better for the company rather than one of its employees to own this registration, the Panel notes that it is not uncommon for domain names to be registered in the name of a companyís executive or employee. See. e.g., PRL USA Holdings, Inc .v. Catherine Mary Witham, WIPO Case No. D2002-0361 (July 29, 2002). Therefore, in analyzing the Respondentís claim of a legitimate interest, it is appropriate to consider the claimed interest of his employer.
Under that standard, Respondentís legitimate interest under the Policy seems to be clear. AmeriCare MedServices has been doing business under this name for some seven years, long before this dispute arose. Moreover, there is no evidence in this case that such use has not been bona fide. It is common to shorten a corporate name to a single word when registering a domain name. AmericCare MedServiceís preexisting use of the "AmeriCare" name means that its registration of the domain name cannot be considered abusive cybersquatting under the Policy. Policy paragraph 4(c)(i).
Complainantís arguments to the contrary are beside the point. If AmeriCare MedServiceís use of the name is infringing or confusing, Complainant should pursue a trademark infringement claim, not a UDRP claim. Complainantís efforts to suggest a connection between Respondent and Mr. Roper, the respondent in a prior case, is too circumstantial and in any event is irrelevant given Respondentís legitimate interest in this name. Complainantís suggestion that Respondent, a for-profit enterprise, should not have registered a domain name in the .org gTLD registry is without merit given that, as currently run, the .org registry is unrestricted and domain names within that gTLD can be registered and used by anyone. Buhl Optical Co. v. Mailbank.com, Inc., WIPO Case No. D2000-1277 (March 1, 2001).
C. Registered and Used in Bad Faith
In light of the Panelís conclusion regarding Respondentís legitimate interest, it is not necessary to consider the allegations of bad faith. Nevertheless, the Panel does briefly note that, on this record, there does not appear to be evidence sufficient to support a finding that Respondent registered the disputed domain to profit by selling or renting it to Complainant, Policy paragraph 4(b)(i), nor is there evidence that Respondent registered the domain name as part of a pattern to prevent Complainant and others from reflecting their marks in their domain names, id., paragraph 4(b)(ii), nor are the parties competitors, id., paragraph 4(b)(iii), nor has the Respondent used the domain name to intentionally attempt to attract, for commercial gain, users to its website by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of their website, id., paragraph 4(b)(iv).
For all the foregoing reasons, the Complaint is denied.
David H. Bernstein
Dated: June 26, 2003