Complainant is National Alliance for Research on Schizophrenia and Depression, Inc. (NARSAD) of Great Neck, New York, United States of America, represented by King & Spalding, United States of America.
Respondent is Vertical Axis, Inc, Domain Administrator/ Narsad.com c/o WhoIs Identity Shield of Christ Church, Barbados.
The disputed domain name <narsad.com> (the “Domain Name”) is registered with Nameview, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2009. On June 17, 2009, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the Domain Name. On June 24, 2009, Nameview Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 25, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.
Complainant filed an amended Complaint on June 25, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 June 26, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on July 17, 2009.
The Center appointed Clive L. Elliott as the sole panelist in this matter on July 27, 2009. 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.
Complainant is a corporation incorporated under the laws of the State of Kentucky. It is a non-profit corporation and charity involved with mental health research.
Respondent is called Vertical Axis, Inc, of Christ Church, Barbados. Apart from this, little information is provided as to the exact identity and business (if any) of Respondent.
In 1986 Complainant adopted and since that time has used the name and service mark NARSAD(the “NARSAD Mark”) in connection with its services, including charitable services; raising and distributing funds for scientific research into the causes, cures, treatments and prevention of psychiatric disorders and diseases and all necessary related activities.
The disputed Domain Name <narsad.com> was registered on February 9, 2003.
In 1998, Complainant registered and commenced use of the domain name <narsad.org>. The website which resolves to this domain name is said to be an important part of Complainant's business and is used to promote the services offered by it in the United States and worldwide.
Complainant asserts that by reason of the use and promotion of the NARSAD Mark it has acquired special and particular significance and valuable goodwill as identifying Complainant and Complainant's services, so that members of the public associate the NARSAD Mark exclusively with Complainant. Consequently, it is asserted that Complainant has acquired common-law rights in the NARSAD Mark.
It is asserted that Complainant has extensively promoted the NARSAD Mark for more than twenty years in connection with Complainant's charitable services. All fundraising and promotional activity related to these grants have made prominent reference to the NARSAD Mark. The Domain Name contains the entire NARSAD Mark and the Domain Name is nearly identical.
It is argued that there is no evidence that Respondent used or was preparing to use the Domain Name in connection with a bona fide offering of goods or services. Rather, the evidence demonstrates that Respondent has used the Domain Name to mislead and confuse the public by using it for a website that provides monetized links, allegedly relating to mental health issues. It is submitted that Respondent's registration and utilization of the Domain Name is likely to divert and mislead consumers.
Complainant submits that Respondent's use and registration of a domain name containing Complainant's well-known service mark on a monetized holding page with pay-per-click advertising does not constitute a legitimate use. Respondent has intentionally used the Domain Name to attract Internet users to the website associated with the Domain Name for the purpose of commercial profit by creating a likelihood of confusion.
It is contended that the NARSAD Mark is so well-known that Respondent must have been aware of it when selecting the Domain Name.
Finally, it is noted that the Domain Name was offered to be sold by Respondent for $30,000, demonstrating that Respondents registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name for valuable consideration in excess of its documented out-of-pocket cost.
Respondent did not reply to Complainant's contentions.
Complainant has since 1986 used the NARSAD Mark in connection with its services. These include a range of charitable services; revolving around principally the raising and distributing of funds for scientific research in relation to psychiatric disorders and diseases.
Complainant argues that by reason of the use and promotion of the NARSAD Mark for more than 20 years in connection with Complainant's charitable services it has acquired repute and valuable goodwill as identifying Complainant and its services. It is submitted that Complainant has acquired common-law rights in the NARSAD Mark. It is noted by Complainant that the Domain Name contains the entire NARSAD Mark and that the Domain Name is nearly identical.
The Panel accepts Complainant's contention that it is the owner of the NARSAD Mark at common-law and that, as further discussed below, the Domain Name is being used by Respondent without justification and that this conduct is likely to mislead, deceive and misdirect consumers.
The Panel finds that the Domain Name comprises or includes the NARSAD Mark and that the said Mark is clearly identifiable with the Domain Name. Respondent has had the opportunity to do so but has declined to explain why it registered the Domain Name. As a result, the Panel has no difficulty in finding that the Domain Name is the same as or confusingly similar to the NARSAD Mark.
Accordingly, it is found that Complainant has rights in the NARSAD Mark, that the NARSAD Mark comprises a dominant and confusing part of the Domain Name, and that the requirements of Paragraph 4(a)(i) of the Policy are met.
There is no evidence that Respondent used or was preparing to use the Domain Name in connection with a bona fide offering of goods or services.
Instead it is asserted by Complainant, without contradiction from Respondent, that Respondent has used the Domain Name to mislead and confuse members of the public. That is, by using the Domain Name on or for a website that provides monetized links allegedly relating to mental health issues. That is, on a holding page with pay-per-click advertising.
The Panel finds that Respondent has used the Domain Name to attract Internet users to the website associated with the Domain Name for the purpose of commercial profit and that such conduct does not constitute a legitimate use.
Complainant's factual assertions and submissions are not disputed. The Panel finds that Respondent's activities are not consistent with any rights or legitimate interests on Respondent's part.
It is therefore established that Respondent has no rights or legitimate interests in respect of the Domain Name under Paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires that the Respondent has registered and uses the domain name in bad faith.
On the evidence before it the Panel has no difficulty in inferring that Respondent knew or must have known of Complainant's NARSAD Mark at the time it registered the Domain Name. Complainant has provided sufficient material to justify its claim to be the common-law owner of the NARSAD Mark and Respondent has not disputed this claim.
Further, Complainant asserts that the Domain Name was offered for sale by Respondent for $30,000, and that this amount was in excess of the documented out-of-pocket costs of the Domain Name and that this is indicative of bad faith conduct. While this factor on its own may not be determinative it is relevant in terms of testing the arguments made by Complainant. In the absence of any statements or evidence contradicting Complainant's position the Panel concludes that the Domain Name was both registered and used in bad faith in accordance with 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 <narsad.com> be transferred to Complainant.
Clive L. Elliott
Dated: August 10, 2009