WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Save the Children Federation, Inc. v. Proservices
Case No. D2011-0615
1. The Parties
Complainant is Save the Children Federation, Inc. of Westport, Connecticut, United States of America, represented by the law firm Weil, Gotshal & Manges LLP, United States of America.
Respondent is Proservices of Hattiesburg, Mississipi, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mysavethechildren.org> is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2011. On April 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the Registrant information, Complainant filed an amendment to the Complaint on April 13, 2011.
The Center verified that the Complaint as amended 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 April 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2011.
On April 19, 2011 and April 20, 2011, the Center received emails from a Thandi Nurse or Thandi Zulu respectively stating that she is the owner of the disputed domain name and requested the Center to serve her a complete copy of Complaint. On April 26, 2011, the Center forwarded a copy of formal Notification of Complaint to this Thandi Nurse or Thandi Zulu.
The Center appointed Richard G. Lyon as the sole panelist in this matter on May 10, 2011. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel’s Procedural Order No. 1, issued on May 16, 2011, is discussed in Section 6.
4. Factual Background
Few of the operative facts in this proceeding are disputed. Complainant is a not-for-profit corporation that for decades has provided emergency relief, health, education, and other services to children in many countries. It holds a trademark, duly registered in 1974 with the United States Patent and Trademark Office (USPTO), for SAVE THE CHILDREN that claims a first use in commerce of 1939. Since 1995 it has maintained its principal website at “www.savethechildren.org”. Complainant and its mark are well-known in the United States of America and around the world.
Respondent is another non-profit business run by an individual, Thandi Zulu, who resides in the State of Mississippi, United States of America. She registered the disputed domain name in February 2011. For some time1 she has operated a website at “www.zulufamily.net” that promotes aid to the indigent, stating as its “primary address” a village in Zambia. Although not entirely clear from the content at that website Respondent’s organization appears also to be a non-profit. Currently the disputed domain name resolves to a generic page of hyperlinks maintained by the Registrar, but initially it resolved to an active website very similar to Respondent’s site at “www.zulufamily.net”. That page included (as Respondent’s <zulufamily.net> page now includes) incidental commercial advertisements.2
The parties corresponded by email but were unable to resolve the issue of entitlement to the disputed domain name.
5. Parties’ Contentions
There is no real dispute between the parties as to Complainant’s rights in its USPTO-registered marks, the similarity of the disputed domain name to those marks, or whether Respondent has a right or legitimate interest in the disputed domain name. The parties’ respective contentions on the issue of bad faith are discussed in Section 6 below.
6. Discussion and Findings
Complainant has demonstrated, and Respondent does not contest, that it holds valid trademark rights in SAVE THE CHILDREN, and that the disputed domain name is similar to that mark. Complainant has never licensed Respondent to use its name or trademark, and there is no evidence that Respondent has ever been commonly known by that designation. While Respondent does claim a right in the disputed domain name by virtue of having first registered it, the very existence of the Policy defeats that argument.3 First-come, first served is the basic rule of domain name registration only to the extent the registration does not interfere with a third party’s rights in breach of the Policy. Nothing in record suggests (indeed Complainant does not allege) anything improper in Respondent’s business, but paragraph 4(a)(ii) of the Policy addresses entitlement (a right or legitimate interest) to use Complainant’s mark in connection with that business. Nothing in Respondent’s emails overcomes Complainant’s prima facie showing of no entitlement.
Complainant has carried its burden of proof under paragraphs 4(a)(i) and 4(a)(ii) of the Policy. That leaves the issues of whether Respondent registered and used the disputed domain name in bad faith.
To establish registration in bad faith requires Complainant to show that Respondent had actual knowledge of Complainant and its marks when the disputed domain name was registered, and that the disputed domain name was selected expressly to target Complainant to take advantage of its marks. See, e.g., The Institute of Electrical and Electronics Engineers, Incorporated v. IARAS / Administration IARAS, WIPO Case No. DAM2010-0001; Gold Medal Travel Group plc v. Damir Kruzicevic, WIPO Case No. D2007-1902. Ordinarily the doctrine of constructive notice from United States trademark law does not apply in Policy proceedings. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.4, and cases there cited.
Complainant advances a number of arguments, duly supported by evidence, to show knowledge of the mark: “(i) by registering a [d]omain [n]ame that is confusingly similar to Complainant’s well known, famous and distinctive trademarks where Respondent had actual or constructive knowledge of Complainant’s trademarks prior to her [d]omain [n]ame registration; (ii) by diverting consumers from the Save the Children website to Respondent’s own website for her own commercial gain; (iii) by using the [disputed domain name] to advertise other allegedly charitable services for children in Africa, which causes consumer confusion as to the source, sponsorship, or endorsement of the website; and (iv) by failing to engage in good-faith negotiations to transfer the [disputed domain name] <mysavethechildren.org> to Complainant.“ Complaint, paragraph 32. Only the last of these may be summarily handled. The email correspondence between the parties does not indicate any failure to negotiate in good faith; all that the Panel can discern is that Respondent didn’t see things Complainant’s way. Moreover, just as a respondent’s default in a UDRP proceeding does not automatically result in an order of transfer or acknowledgment of the truth of factual matters alleged in the complaint, so a refusal to negotiate (a refusal or failure to respond even) does not automatically constitute bad faith.
UDRP panels’ refusal to adopt the doctrine of constructive notice is not absolute. As stated in paragraph 3.4 of the WIPO Overview 2.0, “some panels have been prepared to [apply constructive notice] in certain circumstances including where a respondent was located in the US and a complainant had a federal US trademark registered before the domain name was obtained by the respondent, and there are indicia of cybersquatting”. In this case the first two predicate criteria are satisfied, and moreover Complainant’s trademark is undeniably well-known4 and of long standing. Respondent could be said to be a competitor of Complainant, as each party seeks donations for needy Zambians.5 Competitors are more likely to have knowledge of the marks of others in the same field of endeavor. Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416. Complainant presents a not unreasonable case for the Panel’s inferring actual knowledge from the longtime existence and international renown of its trademark.
However, the Panel finds this showing is undermined considerably by the fact that Complainant’s mark is descriptive of its activities and those of Respondent.6 As such it could well have incorporated into the disputed domain name for its everyday English meaning. Such action would not necessarily be deemed bad faith in the absence of knowledge of the mark, see Janet E. Sidewater v. Worldwide Media Inc., WIPO Case No. D2006-1281,7 but, given the renown of Complainant’s mark, would suffice to support bad faith registration with knowledge of the mark but a mistaken belief that anyone could register a common word or phrase, or that, as Respondent in this proceeding states, that domain names are always first come, first served. WIPO Overview 2.0, paragraph 2.2; Gigglesworld Corporation v. Mrs Jello, WIPO Case No. D2007-1189 (“Respondent is also mistaken in its assertion [. . .] that anyone has a right to a common word as his or her domain name.”)
Complainant asserts that “Respondent [in the parties’ email correspondence] [. . .] herself acknowledged that Complainant is a ‘big company charity’ and knew that Complainant had already registered <my.savethechildren.org>” prove actual knowledge, (Complaint, paragraph 35), and that this establishes actual knowledge. It does so only as to the date of the emails, not at to the critical date of registration of the disputed domain name.
For this reason, eschewing his usual reluctance to introduce anything beyond the two pleadings expressly authorized by the Policy and Rules,8 the Panel issued Procedural Order No. 1, which stated in relevant part:
“The Panel requests Ms. Thandi Zulu of Respondent to provide an answer to the following question:
“In February 2011 were you aware of the existence of Save The Children Federation Inc.?”
The Panel expects a single-word answer, “Yes” or “No”, to this question. Any answer will be deemed submitted under penalty of perjury. The Panel will not consider any material submitted by Respondent other than the verified answer to this question. The Panel has no power to compel an answer but reminds Respondent that an adverse inference may be drawn from her failure to provide one.
Respondent shall submit her answer to this question by email to the Center (simultaneous copy to Complainant) no later than 6 pm Geneva time (11 am Mississippi time) on Friday, May 20, 2011.
The Panel directs Complainant not to respond to Respondent’s answer to this question, and to submit any further information or argument, without the Panel’s express direction.”9
On May 17, 2011, Respondent replied to this Order as follows: “No I did not”.
As the foregoing should make clear the crucial issue, whether actual knowledge of Complainant’s marks can be found or imputed, is a murky one. The Panel does not have available to it the cross-examination or discovery that would allow further probing.10 The determinative factor that tips the balance in this proceeding to a decision for Respondent is the final criterion for use of constructive notice to impute actual knowledge: other indicia of cybersquatting. This Panel is aware of no case in which a panel found bad faith based only upon constructive notice of a mark. Rather, actions such as pages of hyperlinks, multiple infringing registrations, a series of panel findings against the respondent in other UDRP proceedings, and the like provided the panel a factual basis for inferring actual knowledge. See, e.g. Michelman, Inc v. Internet Design, WIPO Case No. D2007-1369.
The Complaint cites many indications of cybersquatting, summarized in clauses (i) through (iii) of the quotation from paragraph 32 of the Complaint above, but all are legal conclusions, not factual allegations, and all in this Panel’s opinion turn on the question of Respondent’s knowledge (actual or imputed) of Complainant’s mark at the date of registration of the disputed domain name. A look at the record in this proceeding discloses no conduct by Respondent falling within the examples set forth in the last sentence of the preceding paragraph, or other conduct which this Panel finds sufficient on balance to support a finding of bad faith in registration of the disputed domain name.
Complainant has failed to carry its burden of proof that Respondent registered the disputed domain name in bad faith, so the Complaint is denied.
Richard G. Lyon
Dated: May 19, 2011
1 The WhoIs information for the <zulufamily.net> website indicates that that domain name was first created in 2008.
2 The <zulufamily.net> site looks much like a generic web page for non-profits offered by several registrars, modified to describe the organization that purchased it.
4 Whether that mark is “famous” in the trademark sense is another question, and one the Panel need not decide. For purposes of this decision the Panel assumes that the mark is famous in the trademark sense.
5 Complainant has submitted evidence of its activities in Zambia.
6 The Panel sees no basis for Complainant’s allegation that its mark is “distinctive.”
8 See, e.g., Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103; Mani Brothers, LLC v. Lincoln Gasking, WIPO Case No. D2008-0097, paragraph 6.A. Here, where a yes-or-no answer to a single question would significantly impact the result of the case, the Panel deemed a request appropriate under paragraph 12 of the Rules.
9 As the Order requested only factual matter from Respondent and Complainant had already fully briefed the issue of deemed knowledge, no reply from Complainant was necessary. This Panel followed a similar procedure in Paul McMann v. J McEachern, WIPO Case No. D2007-1597.
10 . Both will of course be available should Complainant exercise its right under paragraph 4(k) of the Policy or commence an infringement action against Respondent. The legal standards in an infringement action may differ as well. Not only will constructive notice be available to Complainant, but trademark infringement (unlike the Policy) is a strict liability tort – bad faith is usually not required. Respondent should be advised to consider a reasonable settlement proposal from Complainant as an alternative to possibly lengthy and expensive litigation. This Panel’s decision or its factual and legal findings here are of course in no way binding on either party in subsequent litigation.