Complainant is Save the Children Federation, Inc. of Westport, Connecticut, United States of America, represented by Weil, Gotshal & Manges LLP, United States of America.
Respondent is Steve Kerry, North West Enterprise, Inc, of Santa Fe Springs, California, United States of America.
The disputed domain name <savechildren.com> (“Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2009. On October 22, 2009, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the Domain Name. On October 27, 2009, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that 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” 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 October 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 18, 2009.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 25, 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 not-for-profit corporation that provides health, education, living essentials, fund-raising and other assistance for impoverished children and their families throughout the United States. It also brings health, education, economic opportunity and emergency relief to nearly 12 million children in over 45 developing countries. Complainant has operated since 1939.
Complainant owns U.S. Registration Nos. 2,582,204 (for charitable fund-raising and eleemosynary services) and 1,380,438 (for canvas tote bags, mugs, clothing) for the mark SAVE THE CHILDREN (“the Mark”), issuing on June 18, 2002 and January 28, 1986 respectively. The former claims a date of first use and first use in commerce back to November 30, 1939 and the latter claims dates of first use and first use in commerce in 1980 and 1981 respectively. Complainant also owns U.S. Registration No. 991,617 for the service mark SAVE THE CHILDREN FEDERATION, issuing on August 20, 1974 with first use and first use in commerce in November 1939 for use in conjunction with eleemosynary services.
Since 1995 Complainant has operated an Internet website to further its charitable purpose at “www.savethechildren.org”. In addition to the domain name <savethechildren.org>, Complainant has registered over 60 other domain names incorporating the SAVE THE CHILDREN mark or one substantially similar to it, such as <savechildren.org> and <savethechildren.com>. All of these domain names resolve to its website at “www.savethechildren.org”.
According to an OnlineNIC WhoIs search report submitted by Complainant, the Domain Name was registered on August 8, 2001.
Complainant attempted to register <savechildren.com>, but was unable to do so because Respondent had registered it. Upon learning of this, Complainant wrote Respondent, demanding that he cease using the Domain Name and facilitate the transfer of it to Complainant. Respondent failed to respond to this demand. Once again on February 16, 2006 Complainant sent its demand to Respondent, and once again Respondent failed to respond to it. On March 27, 2006, Complainant initiated a UDRP proceeding with WIPO against Respondent. On May 15, 2006, the WIPO Panel ordered that the domain name <savechildren.com> be transferred to Complainant. After the decision issued, Respondent registered the Domain Name again before Complainant had a chance to register it. This came to Complainant's attention only recently. Once again Complainant sent a cease and desist letter to Respondent by mail and email. The letter was returned as undeliverable and Respondent never replied to the email.
Respondent has been the subject of numerous complaints under the Policy, also doing business, inter alia, as North West Enterprise, Inc. and WWW Enterprise, Inc. A number of those complaints involved the practice known as “typo-squatting”. In all cases identified by Complainant, the panel has ordered transfer of the disputed domain name.
Complainant alleges that it holds rights in the mark SAVE THE CHILDREN and that the Domain Name is confusingly similar to it.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name.
Complainant alleges that Respondent registered and used the Domain Name in bad faith.
Complainant requests the Panel to transfer the Domain Name to it.
Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent's domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has submitted uncontested evidence showing its registration of the SAVE THE CHILDREN mark on the Principal Register of the U.S. Patent and Trademark Office. The Panel thus finds that Complainant has rights in that mark.
The Domain Name <savechildren.com> incorporates the distinctive aspects of Complainant's mark, while omitting the definite article “the” and adding the generic top-level domain “.com.” Such differences are immaterial for purposes of assessing similarity. See Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381 (deleting the article “the” only serves to confuse Internet users into believing that a relationship exists between complainant and the domain name; domain transferred); Summerfield Hotel Company v. WWW Enterprise, Inc., NAF Claim No. FA0501000411803 (adding the top-level domain does not serve to distinguish respondent's domain name from complainant's mark; domain name transferred). In fact, Complainant made of record one incident of confusion that can be found on the U.S. Government's Export Portal website, which contains a document entitled, “U.S. Government Iraq Reconstruction: Prime Contracts and Subcontracts Awarded.” See “http://www.trade.gov/static/iraq_contracts03.pdf”. This document lists as one of the contracts the “Iraq Community Action Program” and as one of the 5 organizations associated with that contract “Save the Children Federation, Inc.” The domain name provided for Complainant, however, is Respondent's domain name “www.savechildren.com”, not any of Complainant's domain names.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant must prove Respondent has no rights to or legitimate interests in the Domain Name. Once a complainant makes a prima facie showing that a respondent has no rights or legitimate interests in a domain name, the burden of proof on this factor shifts to the respondent to rebut the showing. The burden of proof, however, remains with complainant. See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270. Pursuant to paragraph 4(c) of the Policy, “[a]ny of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent's] rights or legitimate interests to the domain name for purposes of [p]aragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
Complainant's uncontested facts establish: (1) Complainant has not licensed or otherwise permitted Respondent to use the Mark in any manner including as a domain name; (2) Respondent is not associated with Complainant in any way; (3) Respondent has not used or prepared to use the Domain Name or any name corresponding to the Domain Name in connection with a bona fide offering of goods or services (the Panel finds Respondent's use of the Domain Name is an infringing one); (4) there is no evidence that Respondent is commonly known as “Save the Children” or “SaveChildren”. The only evidence of record shows that Respondent's name is Steve Kerry, d/b/a North West Enterprises, Inc., and other aliases such as WWW Enterprise, Inc. and KerryWeb Enterprises, Inc.; and (5) Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The homepage to which the Domain Name resolves is titled <savechildren.com> it includes many hyperlinks on the first page (e.g., “Save The Children,” “Child Safety,” “Save the Children Fund”). These links direct users to other web pages with additional links, and those hyperlinks direct the user to other websites, some of which are relevant to children, but also to sites having nothing to do with children. For example, users may be taken to sites for Sentry Industrial Protection Products, Erico Lighting Protection Products, LasikPlus Laser Eye Centers, and AARP. The format of Respondent's website is that of a pay-per-click site, i.e., a site that generates money for Respondent each time a user clicks on one of the hyperlinks. Such a use is not a legitimate or bona fide use of the Domain Name.
Once prima facie evidence has been adduced, as in the present case, it is then incumbent upon the respondent to rebut the complainant's evidence. In this case, because Respondent has failed to file a Response, the Panel finds that the Complainant's facts are to be taken as proven.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
The Policy provides that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that a respondent “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 (Policy, paragraph. 4(b)(ii)), and; (2) that a respondent “by using the domain name, … [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 [respondent's] website or location of a product or service on [its] website or location” (Policy, paragraph 4(b)(iv)).
Respondent either knew, or should have known, of Complainant's SAVE THE CHILDREN mark when it registered the Domain Name insofar as, well before Respondent registered the Domain Name, the Mark had been in use (since 1939), the Mark was well-known in the United States and abroad, and the Mark was registered by the U.S. Patent and Trademark Office. Respondent clearly had constructive, and likely had actual, notice of the Mark as used in conjunction with Complainant's charitable services for children but nonetheless selected a domain name that incorporated the prominent portion of the SAVE THE CHILDREN mark. Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384. To have proceeded with registration knowing of Complainant's rights in the SAVE THE CHILDREN mark demonstrates Respondent's bad faith. See, America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (Respondent's knowledge of Complainant's mark before he registered the disputed domain name constitutes bad faith, especially where Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name); See also, Educational Testing Service v. Park Jeong Foreign Language Institute, WIPO Case No. D2001-1064; Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.
Respondent has used the Domain Name to intentionally attract for commercial gain Internet users to Respondent's website, by creating a likelihood of confusion with Respondent's website. Such action constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Respondent has also engaged in a practice of registering domain names reflecting the trademarks or service marks of third parties, and preventing them from registering those same domain names. Indeed, Respondent has again engaged in that practice with respect to the Domain Name. Such action constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Finally, Respondent's bad faith is manifested in its repeated decisions not to respond to Respondent's cease and desist letters in this and the previous UDRP proceeding in 2006 relating to the domain name at issue here, and Respondent's registration of the Domain Name after Complainant prevailed against him in the previous UDRP proceeding relating to the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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, <savechildren.com> be transferred to the Complainant.
Harrie R. Samaras
Dated: December 9, 2009