WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Business For Social Responsibility v. Dr. R.L. Bhatia, Center for Change Management
Case No. D2007-1008
1. The Parties
The Complainant is Business For Social Responsibility, San Francisco, California, United States of America, represented by Morrison & Foerster, LLP, United States of America.
The Respondent is Dr. R.L. Bhatia, Center for Change Management, Mumbai, Maharashtra, India.
2. The Domain Name and Registrar
The disputed domain name <businessforsocialresponsibility.com> is registered with Direct Information PVT LTD d/b/a PublicDomainRegistry.Com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2007. On July 21, 2007, following the identification of a clerical error, the Center transmitted by email to Direct Information PVT LTD d/b/a PublicDomainRegistry.Com a request for registrar verification in connection with the domain name at issue. On July 23, 2007, Direct Information PVT LTD d/b/a PublicDomainRegistry.Com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2007.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on August 29, 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
The Complainant is Business for Social Responsibility, a not-for-profit business association founded in 1992, with its head office in San Francisco and offices in Europe and China. The Complainant offers a number of services relating to socially responsible business practices in the form of business consultancy, advice and conferences. The Complainant claims use of the mark BUSINESS FOR SOCIAL RESPONSIBILITY as its trade name and in connection with the provision of services since 1988.
The Complainant has registered US service marks for BUSINESS FOR SOCIAL RESPONSIBILITY (reg. no. 2,007.954, registered October 15, 1996), and “BSR” (reg. no. 2,097,680, registered September 16, 1997; and 3,206,137, registered February 6, 2007). The first mentioned registration covers educational services, namely, conducting conferences, seminars and other instructional programs in the field of socially responsible business practices and distributing course material in connection therewith. The second mentioned registration cover business, educational and consulting services in the field of socially responsible business practices including the provision of information and technical assistance, business networking services, the conducting of conferences, seminars and other instructional programs, and distributing course materials in connection with those, and co-ordinating businesses, the public sector and public interest organizations in their efforts to promote socially responsible business practices. The third mentioned registration again covers consulting services in the field of socially responsible business practices including the organizing, planning, convening and managing of events in this sector.
The Complainant is known by its full name and, whilst its website is “www.bsr.org” use of BSR on the website homepage is followed by the full name Business for Social Responsibility. The Complainant claims to have acquired global distinctiveness and goodwill in this area of expertise by virtue of its work and sponsorship of a global conference dedicated to corporate responsibility.
5. Parties’ Contentions
The Complainant asserts that each of the three elements specified in paragraph 4(a) of the Policy is present in this case:
(1) The domain name <businessforsocialresponsibility.com> is virtually identical and confusingly similar to the Complainant’s registered service mark BUSINESS FOR SOCIAL RESPONSIBILITY.
Since it started in 1992, as an association of approximately 50 companies, the Complainant has assisted companies of all sizes and sectors to engage in successful, socially- responsible business practices, policies and processes. It achieves this by working through companies to promote more responsible business practices, innovation and collaboration by providing its member companies with an extensive array of practical resources, including issue expertise, advisory services, training and insight on news, trends and innovations. These resources are accessible through consultation, custom reports, publications and the Complainant’s website at “www.bsr.org”.
Also, the Complainant organizes an annual conference which attracts more than 1,000 people from over 40 countries. Participants attend in order to discuss trends in sustainable business, meet like minded businesses, learn about successful strategies to create shareholder and societal value, and to interact with NGO and public policy leaders from around the world who are shaping the future intersection of business, society and the environment. The Annual BSR conferences generally have a theme. For example, in 2005, the annual conference was entitled “Questioning Assumption – Changing Frameworks” and the 2007 BSR Conference is entitled “Designing a Sustainable Future”.
The Complainant has used the marks and names BUSINESS FOR SOCIAL RESPONSIBILITY and BSR (the “BSR Marks”) as its organization’s name and in connection with its services and conferences since well before August 7, 2006, when the disputed domain name was registered by the Respondent. It first started to use BUSINESS FOR SOCIAL RESPONSIBILITY in 1988 and BSR in 1992. The Complainant is the sponsor of the largest global gathering dedicated to corporate responsibility and in that role, its BSR marks have acquired distinctiveness and significant goodwill globally.
The Complainant owns United States registered marks for the names BSR and BUSINESS FOR SOCIAL RESPONSIBILITY and, since 1996, has operated its official website at “bsr.org”.
The disputed domain name is virtually identical and confusingly similar to the Complainant’s BUSINESS FOR SOCIAL RESPONSIBILITY mark. Indeed, the disputed domain name consists of the Complainant’s BUSINESS FOR SOCIAL RESPONSIBILITY mark in its entirety, adding only the generic top level domain “.com”. This conclusively establishes that the domain names are confusingly similar as it is the consensus view of UDRP panels that the addition of a generic top level domain name does not distinguish a domain name from an identical mark
(2) The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent registered the disputed domain name in August 2006.
In about late June 2007, the Complainant became aware that the Respondent was using the disputed domain name in relation to a website which copied large portions of the Complainant’s website. For example, the Respondent’s website contains exact or near exact copies of the Complainant’s “BSR Details”, “BSR History”, “Mission”, and “About BSR” web pages. Also, the Respondent has used the name of the Complainant’s 2005 Annual conference “Questioning Assumptions – Changing Frameworks” to advertise its own summit on corporate governance on December 15, 2006.
The Complainant has not authorized or licensed the Respondent to use its BUSINESS FOR SOCIAL RESPONSIBILITY mark or any of its marks or to make such use of the Complainant’s website material nor does the Complainant have any business connection with the Respondent.
The website uses both the disputed domain name and the BSR mark prominently.
In making such use of its website, the Respondent is holding itself out as the Complainant and appears to have registered the disputed domain name and established the website solely to use the Complaint’s mark, goodwill, reputation and copyright materials to promote its own conference.
To the Complainant’s knowledge, the Respondent has not been commonly known by the disputed domain name nor has the Complainant been able to find any evidence of use of the disputed domain name by the Respondent before its registration.
The use of the disputed domain name by the Respondent in relation to a website which claims to offer the same services as the Complainant would have constituted infringement of the Complainant’s BSR marks.
The Respondent is not making legitimate non-commercial or fair use of the disputed domain name: the use creates confusion among consumers and misappropriates the Complainant’s goodwill.
(3) The disputed domain name was registered and is being used in bad faith.
The disputed domain name incorporates the Complainant’s BUSINESS FOR SOCIAL RESPONSIBILITY mark in its entirety which constitutes strong evidence of the Respondent’s bad faith.
The Respondent has copied text directly from the Complainant’s website and is holding itself out as being the Complainant. This strongly indicates that the Respondent knew of the Complainant’s marks when it registered the disputed domain name and is further evidence of bad faith.
By appropriating entire pages of text from the Complainant’s website and displaying the Complainant’s BSR marks, the Respondent induces Internet users encountering the Respondent’s website to mistakenly believe that they have reached a genuine website of the Complainant. Consumers are thereby misled into believing that the website and the people, companies and services contained there are sponsored by, affiliated with, or authorized by the Complainant. Creating such confusion for commercial gain is strong evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent’s Default:
The Respondent did not file a Response.
Rules paragraph 10(a) requires that the Panel ensure that each party is given a fair opportunity to present its case. Rules paragraph 14 reads as follows:
(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
The Panel further notes that the Registrar’s Registration Agreement requires the Respondent to keep its contact information (including postal address) “up-to-date, complete and accurate”. A respondent cannot hide behind the provision to the Registrar of either an incorrect or out-of-date postal address.
As previously indicated, the Respondent failed to file any reply to the Complaint and has not sought to answer the Complainant’s assertions, evidence or contentions in any other manner. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondent’s default does not automatically result in a decision in favour of the Complainant. The Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. While a panel may draw negative inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding: The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.
Rules paragraph 15(a) provides that the Panel shall decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw such inferences as are appropriate from the Respondent’s failure to reply to the Complainant’s assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panel’s decision is based upon the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to reply.
A. Identical or Confusingly Similar
The disputed domain name, <businessforsocialresponsibility.com> fully incorporates the BUSINESS FOR SOCIAL RESPONSIBILITY mark.
It is well established that the specific top level domain name is not an element of distinctiveness that is taken into consideration when evaluating the identity and similarity of the Complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
The domain name is therefore identical to a mark in which the Complainant has rights and the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Although these are illustrative examples, they give good guidance as to whether a Respondent has rights or legitimate interests in respect of a domain name.
The Panel needs to decide whether the name Business For Social Responsibility was used by the Respondent in connection with a bona fide offering of goods or services; whether the Respondent has been commonly known by the domain name; or, whether the Respondent has been making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
There is no evidence that the Respondent used the disputed domain name or was known by it before it registered the disputed domain name on August 7, 2006. The only evidence of use by the Respondent is in connection with the website which it established following this and it is abundantly clear to the Panel from a comparison of the Complainant’s website and that of the Respondent which were put in evidence that the Respondent has copied almost the entire content of whole sections of the Complainant’s website and, in doing so has represented itself as the Complainant’s business.
An example from the material put by the Complainant in evidence illustrates this:
Under the heading “BSR History” in the Respondent’s website, it states the following:
“Business for Social Responsibility began in 1992 as an association of approximately 50 companies dedicated to helping businesses be both commercially successful and socially responsible. Many of these founding companies were small and medium sized businesses – such as Ben and Jerry’s, Patagonia and Tom’s of Maine – which themselves strongly believed in and pursued responsible business practice.”
This statement is identical to the statement in the Complainant’s website. Not only is it a blatant copy but it appears to be a statement of the Complainant’s history not the history of the Respondent! It is difficult to imagine a statement more designed to confuse than this.
The effect of this evidence is that, in the view of the Panel, the Complainant has made a prima facie case that the Respondent’s conduct was not a bona fide offering of services under the disputed domain name by the Respondent before it became aware of the dispute. Further, the Respondent’s use of the disputed domain name in relation to its website containing material taken from the Complainant’s site was illegitimate, commercial and in all likelihood aimed to divert consumers for commercial gain to the Respondent. The fact that the website at the disputed domain name now appears to resolve to a “link farm” from which commercial revenue is presumably derived in no way changes, and indeed tends to reinforce the panel’s view in this regard.
Although paragraph 4(c) of the Policy requires the Complainants to prove the presence of this element, panels in a number of cases found that once a complainant makes a prima facie showing, the burden of production on this factor shifts to the respondent to rebut the showing by providing concrete evidence that it has rights to, or legitimate interests in the domain name (See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 <croatiaairlines.com>; Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110 <belupo.com>).
The Respondent has chosen not to put any evidence in this proceeding.
As a result, the Panel finds on the evidence before it that the Respondent has no rights or legitimate rights in respect of the domain name and that the requirements of paragraph 4(a)(ii) of the Policy are met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including
“(iv) by using the domain name, the respondent 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 the respondent’s website or location or of a product or service on its website or location.”
The two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith.
As to bad faith registration, the Panel believes that the Respondent, by the apparent nature of its business and by its substantial use of material from the Complainant’s website and the nature of that material, must in the circumstances have been well aware of the Complainant’s business and its marks at the time that it registered the disputed domain name.
The Panel finds that the Respondent has also used the disputed domain name which is identical and clearly confusing to the Complainant’s mark, in bad faith: among other things the incorporation of extensive parts of the Complainant’s website without any authority from the Complainant and the nature of those parts, an example of which has been referred to earlier, is compelling evidence of this.
As a result, the Panel finds that the Complainant has also established registration and use in bad faith under paragraph 4(a)(iii) of the Policy.
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 <businessforsocialresponsibility.com> be transferred to the Complainant.
Dated: September 5, 2007