WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
March of Dimes Foundation v. Whois Privacy Inc.
Case No. D2007-1710
1. The Parties
The Complainant is March of Dimes Foundation, White Plains, New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Whois Privacy Inc., General Delivery, Georgetown, Grand Cayman GT, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <marchofdime.com> (the “Domain Name”) is registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 20, 2007. On November 22, 2007, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the Domain Name. On November 23, 2007, CSL Computer Service Langenbach GmbH dba Joker.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 November 29, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2007.
The Center appointed Warwick Smith as the sole panelist in this matter on December 28, 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.
In the absence of a Response, the Panel has checked whether the Center has discharged its responsibility to notify the Complaint to the Respondent in accordance with Paragraph 2 of the Rules. While attempts to deliver copies of the complaint to the Respondent by courier proved unsuccessful, and the “postmaster” email address at the Domain Name was reported to have “permanent fatal errors”, the Complaint was successfully transmitted to the email address provided for the billing contact for the Domain Name. The Respondent therefore appears to have received actual notice of the Complaint.
4. Factual Background
The following (uncontested) information is taken from the Complaint.
The Complainant is a voluntary health organization. Its mission is to improve the health of babies by preventing birth defects, premature birth, and infant mortality. It was founded in 1938, and over the years since then has been a substantial fundraiser for research, education, and family support relating to new born babies.
The Complainant now operates globally, with international partners. Its activities include providing education to healthcare professionals about best practices in perinatal health and medical genetics. In 2006, its revenue exceeded US$245 million.
The Complainant’s principal website is at “www.marchofdimes.com”, and the electronic copy of the Complaint contains a hyperlink to that website. The Panel has visited the website, and ascertained (from the 2005 and 2006 auditors’ reports for the Complainant which are available at the site) that, at some time between December 31, 2005 and December 31, 2006, the name of the Complainant was changed from “March of Dimes Birth Defects Foundation” to the present name, “March of Dimes Foundation”.
The Complainant’s Trademarks
The Complainant has numerous trademark and service mark registrations for MARCH OF DIMES, including various MARCH OF DIMES trademarks and service marks registered on the principal register maintained by the United States Patent and Trademark Office.
It is not necessary to refer to all of the Complainant’s trademark registrations. It is enough to note that in the United States the Complainant is the proprietor of the word mark MARCH OF DIMES in international classes 41 and 42, and a MARCH OF DIMES logo mark registered in various classes. The class 41 registration of the word mark has been in effect since December 1999, and covers “educational services namely, providing classes and seminars in the field of birth defects research, birth defects prevention and healthcare”. This registration refers to a first use in commerce date of February 29, 1940. The class 42 registration of the word mark covers “promoting public awareness of the need for birth defects research and prevention; providing health information”. It has been registered with effect from December 22, 1999, and again, the registration refers to a first use in commerce date of February 29, 1940.
The MARCH OF DIMES logo mark consists of the expression “March of Dimes” with a simple figure which appears to represent a mother holding a baby.
In addition to the United States registrations, the Complainant also holds Community Trademark registrations for the “March of Dimes” logo mark, having effect from April 5, 2000, and registrations in a number of other countries including Belarus, Mexico, India, and South Africa.
The Complainant asserts that it has made widespread and extensive use of its MARCH OF DIMES mark in connection with its charitable services, such that the mark has become uniquely associated with the Complainant and its services, and has attained considerable fame and widespread acclaim in the United States and throughout the world.
The Respondent and the Domain Name
The Whois information provided by the Complainant shows that the Domain Name was created on July 30, 2006. Some modification to the registered Whois particulars was made on November 6, 2007, but the nature of that modification is not apparent from the record. The Domain Name resolves to a landing page displaying pregnancy and child-birth-related links.
The Complainant has produced a print out of this landing page (“the Respondent’s website”), printed on November 16, 2007. It contains a number of click-on links grouped under a heading “Childbirth”, including “Pregnant Belly”, “Breast Feeding”, “Rubella”, “Baby Names”, “Pregnant”, and “Pregnancy”. There are additional click-on links at the bottom of the landing page, separately grouped under the headings “Pregnant Belly”, “Breastfeeding”, and “Labor Doula”.
The click-on links take the Internet browser eventually to various third party websites covering topics generally related to pregnancy, childbirth, and various childhood ailments or conditions (e.g. one link leads to a page containing further links to a number of websites dealing with the topic of autism).
Beyond what is apparent from the Respondent’s website, little information about the Respondent is known. However, the Complainant asserts that the Respondent is a “serial cybersquatter”, who has registered hundreds of domain names, some being obvious “typosquatting” infringements of well known third party trademarks (e.g. <budweiseer.com>, and <oparhwinfery.com>).
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to its MARCH OF DIMES mark. The Respondent has engaged in a classic form of typosquatting, simply omitting the “s” from the Complainant’s mark.
2. The Respondent has no right or legitimate interest in the Domain Name, for the following reasons:
2.1 The Respondent has no connection or affiliation with the Complainant, and has not received any license or consent to use the Complainant’s mark whether in a domain name or otherwise.
2.2 There is no evidence that the Respondent has ever been known by the Domain Name.
2.3 The Respondent’s only use of the Domain Name has been for the purpose of misdirecting internet traffic to the Respondent’s website, which advertises links to pregnancy and child-birth-related sites. Such a use is not a use in connection with a bona fide offering of goods or services, and does not constitute a legitimate interest (citing ACCOR v. Steve Kerry/North West Enterprise Inc., WIPO Case No. D2006-0649).
2.4 The Respondent’s misappropriation of the Domain Name was no accident. The Complainant’s mark is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant (citing Pfizer Inc. v. Jeff Ferris, WIPO Case No. D2006-1242, and Telstra Corp Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). A “trader” such as the Respondent could have no legitimate interest in the Complainant’s mark.
3. The Respondent registered, and has been using, the Domain Name in bad faith, for the following reasons:
3.1 The Complainant’s MARCH OF DIMES mark enjoys widespread recognition, and it is inconceivable that the Respondent was unaware of the Complainant’s mark when it registered the Domain Name (referring to Dow Jones & Co & Dow Jones LP v. Powerclick Inc, WIPO Case No. D2000-1259). Even if the Respondent was not on actual notice of the Complainant’s rights, it could easily have educated itself by conducting basic searches of Whois databases or the USPTO’s publicly available websites. The Respondent was therefore, at a minimum, on constructive notice of the Complainant’s rights (citing Marconi Data Sys., Inc. v. IRG Coins & Ink Source, Inc., WIPO Case No. D2000-0090).
3.2 The mere fact that the Respondent registered the confusingly similar Domain Name without authorization is, in and of itself, evidence of bad faith (citing Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163 – bad faith found where the Domain Name was “so obviously connected with such a well known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
3.3 With respect to the misspelling of the Domain Name, it is well settled that the practice of typosquatting, of itself, is evidence of bad faith registration of a domain name (ESPN Inc v XC2, WIPO Case No. D2005-0444).
3.4 The Respondent has attempted to mislead Internet users by omitting the letter “s” from the Complainant’s mark. That form of typosquatting has been recognized as bad faith use of a domain name under the Policy (see Edmonds.com Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319 and NetWizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768).
3.5 The Respondent’s use of the Domain Name for a search engine linking Internet users to third party services related to the Complainant’s services, clearly establishes the Respondent’s bad faith (referring to ACCOR v. Steve Kerry/North West Enterprises Inc, supra, and Fox News Network LLC v. Warren Reid, WIPO Case No. D2002-1085).
3.6 The format of the Respondent’s website, with links leading visitors to commercial sites, strongly suggests that the Respondent is obtaining “click-through” revenue from the Domain Name. This exploitation of the Complainant’s goodwill for financial gain by creating confusion, demonstrates the Respondent’s bad faith (citing Groupama SA v. Domain Drop SA, WIPO Case No. D2007-1188). Moreover, the fact that many of the featured links offer goods and services closely related to the Complainant’s services, is further evidence of the Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. General Principles under the Policy
Under Paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) That the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondents have no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the Panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
If a respondent does not submit a response, Paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under Paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (by filing a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has sufficiently proved that it is the registered proprietor of the mark MARCH OF DIMES, in a number of jurisdictions including the United States of America and the European Union. (While the copies of trademark certificates produced by the Complainant show the registered proprietor as “March of Dimes Birth Defects Foundation”, the auditors’ certificates which were available on the Complainant’s principal website at “www.marchofdimes.com” sufficiently explain that the Complainant is the same corporation as that shown in the various trademark certificates.)
The Domain Name is obviously confusingly similar to the Complainant’s MARCH OF DIMES mark. The only differences are the deletion of the letter “s” from “DIMES”, and the addition of the generic suffix “.com”, which is not to be taken into account in the comparison. Visually and phonetically the Complainant’s mark is almost identical to the Domain Name, and the Domain Name conveys the same “idea”, or “impression” as the Complainant’s MARCH OF DIMES mark.
The Complainant has proved this part of the Complaint.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, 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) Where [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) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests in the Domain Name on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has proved that the Domain Name is confusingly similar to its MARCH OF DIMES mark, and that it has not licensed or authorized the Respondent to use its mark (or an expression which is almost identical to the Complainant’s mark), whether in the Domain Name or otherwise. There is no evidence suggesting that the Respondent, or any business conducted by it, might be known by the Domain Name, and the Respondent’s website appears to be commercial in nature (so that the Respondent’s use of the Domain Name could not be considered a legitimate non-commercial or fair use, without intent for commercial gain). Accordingly, the examples of rights or legitimate interests provided at paragraphs 4(c)(ii) and (iii) of the Policy could not apply.
In the above circumstances, the Complainant has provided sufficient proof on this part of its Complaint, and the evidentiary onus shifts to the Respondent to provide some plausible evidence of a right or legitimate interest. The Respondent has failed to file any Response, and, strictly speaking, that is enough for the Complainant to succeed on this part of its Complaint.
Having reviewed the record in the case, however, the Panel adds that it is difficult to imagine any plausible response which could have been put forward by the Respondent. The Complainant’s mark MARCH OF DIMES is a most unusual expression, and whether or not that mark can be categorized as famous, the Panel accepts the Complainant’s submission that the mark is not “one traders would legitimately choose unless seeking to create an impression of an association” with the Complainant (Pfizer Inc. v. Jeff Ferris, supra, and Telstra Corp Limited v. Nuclear Marshmallows, supra).
Not only is the Domain Name almost identical to the Complainant’s mark, but the Respondent’s website is substantially concerned with the same general field of activity (pregnancy and the care of new born babies) in which the Complainant is active. In the absence of any Response, the Panel infers that the Respondent has been deriving pay-per-click (“PPC”) revenue from the sponsored links to third party websites. The circumstances fall squarely within the example of bad faith registration and use which is provided at paragraph 4(b)(iv) of the Policy – by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s MARCH OF DIMES mark, as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Any such bad faith use of the Domain Name could never qualify as a use “in connection with a bona fide offering of goods or services”, so paragraph 4(c)(i) of the Policy could not have any application.
For the foregoing reasons, the Complainant succeeds on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent has] 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; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.
The Panel also finds this part of the Complaint proved.
The Complainant’s MARCH OF DIMES mark is a sufficiently unusual expression, and the Domain Name so nearly identical to it, that the Respondent must have known of the Complainant and its mark when the Domain Name was registered. The possibility that the Respondent might have thought of the expression “March of Dime” without knowledge of the Complainant and its mark, is so faint as to be completely improbable. The Panel therefore finds that the Respondent was aware of the Complainant and its MARCH OF DIMES mark when it registered the Domain Name. (That is a finding, on the balance of probabilities, of actual knowledge – the Panel does not need to consider the Complainant’s submissions based on the concept of constructive knowledge.)
As noted above, the Panel accepts the Complainant’s submission that the Domain Name is not one a trader would legitimately choose unless the trader was seeking to create an impression of association with the Complainant. The Complainant made essentially the same point in its submission based on the Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co case, that bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. It is not necessary for the Panel in this case to make a finding that the Complainant or its mark is famous, or “well-known” – it is enough for the Panel to find, as it does, that the Complainant’s MARCH OF DIMES mark is sufficiently singular or unusual that any use of a domain name consisting of that mark minus the final “s”, equally suggests “opportunistic bad faith”.
Looking at the Respondent’s website, it is immediately clear that the Respondent has been trading off the Complainant’s goodwill in its MARCH OF DIMES mark. The focus of the Respondent’s website is too close to the focus of the Complainant’s activities using its MARCH OF DIMES mark, for there to be any innocent explanation. The case appears to be one of blatant “typosquatting”, where the Respondent has simply altered one letter of the Complainant’s mark with a view to creating confusion and attracting some Internet users to the Respondent’s website. The circumstances fall squarely within paragraph 4(b)(iv) of the Policy set out above.
The Complainant having established its case on all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
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, <marchofdime.com> be transferred to the Complainant.
Dated: January 11, 2008