WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
St. Baldrick's Foundation Inc. v. Jonathan Harris
Case No. D2007-1542
1. The Parties
Complainant is St. Baldrick's Foundation Inc., of Springfield, New Jersey, United States of America, represented by Palmer & Dodge, LLP, United States of America.
Respondent is Jonathan Harris, of Louisiana, United States of America
2. The Domain Name and Registrar
The disputed domain name <saintbaldricks.com> is registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2007. On October 19, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On October 25, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 31, 2007. 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 November 2, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was November 22, 2007. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 23, 2007.
The Center appointed Mark V.B. Partridge as the sole panelist in this matter on November 30, 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 not-for-profit foundation operating a fundraising program for children's cancer research.
Complainant owns two trademark registrations containing the term “ST. BALDRICK'S” in the United States, Reg. Nos. 2,815,463 (Registered February 17, 2004); and 2,642,667 (Registered October 29, 2002).
Complainant operates a website at “www.stbaldricks.org” to advertise its services.
The domain name <saintbaldricks.com> was registered on May 8, 2006.
5. Parties' Contentions
Since 1999, Complainant has engaged in activities to raise funds and awareness to cure children's cancer by supporting cancer research and fellowships. Complainant has raised over $20 million dollars in its mission to save children's lives and to improve the long-term quality of life for children who survive.
Complainant's ST. BALDRICK'S marks are famous and recognized worldwide as a result of its commitment to the highest quality service standards.
Respondent's domain name is confusingly similar to Complainant's marks in that it merely spells out “saint”.
Complainant contends that Respondent has no right or legitimate interests in the Domain Name nor is the Respondent making legitimate fair use of the Domain Name.
Respondent's intent in maintaining the Domain Name and website offered under the name is to mislead consumers looking for Complainant's fundraising events.
Respondent's registered the Domain Name long after Complainant had acquired valuable rights in its marks. Respondent is using the Domain Name in bad faith to provide links to third party websites.
Respondent's use of the Domain Name puts Complainant at risk of irreparable injury due to the lack of control Complainant has over the use of the domain name and/or the nature and quality of products or services offered by Respondent in the future.
Respondent did not reply to the Complaint.
6. Discussion and Findings
Paragraph 14 of the Rules provides in the event of default that the Panel “may draw such inferences therefrom as it considers appropriate.”
Paragraph 15(a) of the Rules instructs the Panel that “A panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable.”
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. See Time Equipment Corp. v. Stage Presence WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, WIPO Case No. D2003-0829; Mondich v. Brown, WIPO Case No. D2000-0004.
A. Identical or Confusingly Similar
The Panel finds that Complainant possesses established legal rights in its ST. BALDRICK'S trademark by reason of its long and continuing use of the mark in commerce and Complainant's two registrations of the mark in the United States of America.
The Panel finds that the Domain Name <saintbaldricks.com> is confusingly similar to Complainant's trademarks. Respondent's domain merely expands the abbreviation “St.” to “saint” which does nothing to distinguish the domain name from Complainant's ST. BALDRICK'S marks. See, St. Baldrick's Foundation v. Wan-Fu China, Ltd. WIPO Case No. D2007-0705
Therefore, the Panel finds Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence that Respondent ever had any rights or legitimate interests in the Domain Name in question. Respondent does not appear to have been known by the Disputed Domain Name and is not using the Domain Name in connection with a bona fide offering of goods and services. The Panel finds Respondent's Domain Name is used to produce revenue based on the links provided on the webpage. Prior panels have decided that the use of confusingly similar domain names in connection with a “click-through” scheme does not serve to establish a bona fide offering of goods and services. (See The Evening Store v. Henry Chan, WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic, WIPO Case No. D2005-0356).
The Panel also accepts Complainant never authorized, licensed or permitted Respondent to use its ST. BALDRICK'S Trademark.
The Panel is therefore, satisfied Complainant has made a prima facie showing of Respondent's lack of rights or legitimate interest in the Disputed Domain Name. Once a complainant has made this prima facie showing, the respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).
As Respondent has not filed any evidence in response, the Panel finds Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows Complainant's trademark ST. BALDRICK'S is distinctive and has been widely used for over six years. The Panel accepts that the mark is known and enjoys a reputation both in the United States of America and internationally, as a result of Complainant's fundraising efforts and charitable events held across the United States of America and in approximately 10 countries around the world. Complainant's trademark is not named after an actual Saint; rather, “St. Baldrick” is merely fictional character - a morphing of “St Patrick's” (the day the event was born) and the word “bald” which references the activities of volunteers who shave their heads to show solidarity with children's cancer patients who are undergoing chemotherapy.
The Panel is also prepared to find Respondent registered the Domain Name and is operating the website purposes of monetary gain by providing links to sites of other companies which offer products and services. Respondent has by expanding the abbreviation of the word “st” in the Domain Name <saintbaldricks.com> deliberately traded on the goodwill and reputation of Complainant, by diverting Internet users intended for the Complainant's website to the Respondent's websites. Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate “click-through” sites can be considered to be evidence of bad faith. (See CareerBuilder, LLC v. Names for Sale, WIPO Case No. D2005-0186 and Air Austral v. WWW Enterprise, Inc., WIPO Case No. D2004-0765). While Respondent's website may not contain links to any products or services which are related to Complainant's business, the fact among others that “ST. BALDRICK” is not an actual Saint leads the Panel to conclude the only reason for registering and using the Domain Name is to divert Internet users to its website for non bona-fide commercial purposes
For these reasons, the Panel finds that Complainant has satisfied the third requirement of paragraph 4(a) 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 <saintbaldricks.com> be transferred to Complainant .
Mark V.B. Partridge
Dated: December 17, 2007