WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Edatanetworks Inc. v. Joe Racek, Network of Giving
Case No. D2015-1608
1. The Parties
The Complainant is Edatanetworks Inc. of Edmonton, Canada, represented by Norton Rose Fulbright LLP, Canada.
The Respondent is Joe Racek, Network of Giving of Blacksburg, Virginia, United States of America ("US").
2. The Domain Names and Registrar
The disputed domain names <networkofgiving.com> and <networkofgiving.org> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 9, 2015. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 10, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed slightly from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 16, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 16, 2015.
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" 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 22, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 13, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on October 23, 2015. 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
The Complainant, which was incorporated in 2001 in Canada, develops and supplies technology linking businesses and charities with their customers and supporters for the purpose of generating charitable donations, including by means of loyalty, coupon and incentive programs.
Since 2007, the Complainant has advertised its services in connection with the NETWORK OF GIVING trade mark including via a website at "www.automatedcausemarketing.com".
The Complainant owns the US trade mark No. 4430387 for NETWORK OF GIVING, filed on July 31, 2008, in international classes 35, 36, 39 and 42, as well as Canadian trade mark No. TMA843311 filed on the same date for the same words covering a similar range of goods and services to those specified by the US trade mark. The Complainant also owns Canadian and US trade marks Nos. TMA843415 and 4430388 respectively for NETWORK OF GIVING (logo), filed on the same date and for the same goods and services as the respective Canadian and US word marks mentioned above.
The disputed domain names were registered on May 5, 2005.
On August 17, 2005, a corporation called Network of Giving, Inc was incorporated in Virginia with a principal office in located in Blacksburg, Virginia. At some unspecified point thereafter, the corporation was recorded as "terminated".
Since at least December 23, 2008, and continuing until at least May 17, 2014, <networkofgiving.com> resolved to a website entitled "Network of Giving" plus a logo and a banner photograph of people holding hands. The site stated:
"Network of Giving is an easy to way to give to your church or favorite charity. You can do that right here. It makes tax time a breeze for all the Network of Giving members you give to during the year.
It's also a network of churches and non-profits brought together to create a culture of generosity uniting everyone towards a common cause to further good works in the name of Jesus throughout the earth."
The site included links to an invitation to sign up to in order to donate to a church or charity, to "Frequently Asked Questions" for users and organizations, to a list of "our organizations" and to recommend a friend or organization. The copyright notice was in the name of "Network of Giving a 501(c)(3) non-profit".
By December 18, 2014, the website had been replaced with a notice stating that "NetworkofGiving.com" had closed down and that the service "is no longer available October 1, 2014". The notice added that "[t]his domain name is not for sale."
As of August 26, 2015, <networkofgiving.org> redirected to a <networkofgiving.com> server error message.
The Respondent did not respond to purchase enquiries for <networkofgiving.com> sent on behalf of the Complainant in February and March 2015.
5. Parties' Contentions
A summary of the Complainant's contentions is a follows:
Over the years, the Complainant has developed substantial goodwill and reputation for its business and services operated under its name and trade marks, including NETWORK OF GIVING.
The Complainant has invested and continues to invest substantial resources in the use and advertisement of its trade marks including in brochures and poster advertising campaigns.
According to WhoIs records available to the Complainant, the disputed domain names were registered through GoDaddy on May 5, 2005, in the name of an association purported to be called "Network of Giving". A Virginia corporate search evidences that there is currently no corporation of that name registered in Virginia.
The disputed domain names are identical to the Complainant's registered trade marks.
The Complainant has never authorised or licensed the Respondent to use its trade marks.
The Respondent did not start using the disputed domain name <networkofgiving.com> until after the Complainant had begun using and promoting its trade marks and, as a result, the Complainant had created widespread recognition of its trade marks. The disputed domain name <networkofgiving.org> has had no data and it currently redirects to the other disputed domain name.
The disputed domain names displayed the Complainant's trade mark from 2008 to 2014 in association with services which purported to facilitate the consolidation of donations to member churches and non-profit organisations. Using a domain name identical to a trade mark in association with a site closely related to the trade mark owner's activities does not constitute a bona fide offering of services. The website competed with the Complainant and so such use does not amount to a legitimate interest.
Nor does the Respondent have any current right or legitimate interest in the disputed domain names as they do not currently resolve to an active website.
The disputed domain names were renewed by the Respondent on May 21, 2015, in association with a corporation "Network of Giving" whose corporate status is "terminated". The Respondent has registered the disputed domain names in bad faith in association with a corporation that no longer appears to exist. This is a clear attempt to mislead the Panel.
Multiple attempts to contact the Respondent through the contact details shown on the WhoIs listing have been unsuccessful. Such tactics to conceal a registrant's true identity were found to amount to evidence of bad faith in other UDRP cases.
The Respondent breached section 4 of the domain name Registration Agreement by not providing up to date and accurate information in relation to the Respondent corporation, which is listed as "terminated". Accordingly the Respondent is using the disputed domain names in bad faith in association with a corporation which no longer exists.
The fact that the disputed domain names incorporate the Complainant's entire distinctive trade mark also supports a finding of bad faith. Such use of the Complainant's trade mark creates an absence of any plausible good faith use.
The Respondent's inactivity amounts to bad faith use as it is not possible to conceive of any plausible use that would not be illegitimate such as by constituting passing off, an infringement of consumer protection laws or of the Complainant's trade mark.
The circumstances of this case amount to bad faith passive holding as the facts here are substantially similar to those which led to a finding of bad faith in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, including the well-known nature of the Complainant's trade marks and the Respondent's false registration details.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Informal / Late Response
In response to the Center's notification of Respondent default on October 13, 2015, the Respondent emailed the Center stating: "We have been an established company for many years, operating and organized as a 501(c)(3) organization incorporated in the State of Virginia. Who is disputing this domain and why?". The Center responded with an explanation that the Respondent was in default and attaching a copy of the Center's "Notification of Complaint and Commencement of Administrative Proceedings" dated September 22, 2015. Nothing further was heard from the Respondent.
Paragraph 10(d) of the Rules provides that the Panel shall consider the admissibility, relevance, materiality and weight of the evidence.
The Panel has decided not to admit the Respondent's email as a Response. First, the Respondent has made no effort to explain its failure to respond to the Complaint within the time limit and appears disinterested in the proceedings. Second, the Response does not comply with the formal requirements for Response set out in paragraph 5 of the Rules. For example, there is no statement of truth.
A respondent's default does not automatically result in a decision in favour of the complainant. See paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). While a panel may appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), the complainant must still support its assertions with actual evidence in order to succeed in a UDRP proceeding.
C. Identical or Confusingly Similar
The Complainant has rights in the mark NETWORK OF GIVING by virtue of its registered trade marks for that term. Disregarding the domain name suffixes ".com" and ".org", this trade mark is identical to the disputed domain names.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
D. Rights or Legitimate Interests
The Panel does not consider it necessary to reach a conclusion under this element in light of its findings in respect of bad faith below.
E. Registered and Used in Bad Faith
The Complainant is required to establish that, on the balance of probabilities, the disputed domain names were registered and used in bad faith.
The Complainant's registered trade marks are all dated 2008 and its earliest claimed use of the mark was in 2007. This poses an immediate problem for the Complainant because, according to the relevant WhoIs printouts, the registration date for both disputed domain names is May 5, 2005.
Paragraph 3.1 of WIPO Overview 2.0 makes clear that, generally speaking, when a domain name is registered by the respondent before the complainant's relied-upon trade mark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. There are exceptions where the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, but there is no suggestion that such a scenario is applicable here.
The Complainant has not exhibited any archive WhoIs printouts but, nonetheless, it concedes that the disputed domain names were registered in 2005 in the name of a Virgina entity called "Network of Giving". And that is still the case. It appears therefore that there has been no material registrant change since the disputed domain names were first registered.
Given these facts, the case must fail as the disputed domain names could not conceivably have been registered in bad faith.
In fact, the Panel is not satisfied from the evidence before it that the disputed domain names have been used in bad faith either. For example, the archive printouts for <networkofgiving.com> from 2008 to 2014 exhibited by the Complainant give the impression that, during that period, the Respondent was providing a genuine service facilitating charitable donations. While the Panel does not have sufficient information about the Complainant's service to be able to assess the exact degree of overlap between the parties' respective offerings, nonetheless the Respondent's service is broadly in line with the somewhat descriptive name "Network of Giving" comprised in the disputed domain names and there is no evidence before the Panel to suggest that the service, or any aspect of it, was at any time or in any way targeted at the Complainant.
The Complainant claims that the renewal of the domain names on May 21, 2015, in association with a corporation "Network of Giving" whose corporate status is shown as "terminated" on official records, amounts to registration in bad faith. The Panel disagrees. First, renewal of a domain name is not generally treated as a new registration for the purposes of assessing registration in bad faith. See paragraph 3.7 of WIPO Overview 2.0. Second, the Complainant has in any case provided no evidence which demonstrates that the "termination" had occurred by the renewal date. Third, even if "termination" had occurred by then, the mere fact (if true) that the WhoIs entry was not updated to correctly reflect the alleged demise of the original registrant does not of itself denote bad faith as there is nothing whatever to connect this event with the Complainant. There is no evidence whatever to support the Complainant's claim that this was somehow an attempt to mislead the Panel.
The Panel disagrees with the Complainant's claim that the mere fact that the disputed domain names incorporate the Complainant's "entire distinctive trade mark" supports a finding of bad faith for the simple reason that the disputed domain names were registered some two years before the Complainant started using its mark and so could not have been in any way motivated by it.
Nor is the Panel convinced by the Complainant's claim that it is not possible to conceive of any plausible legitimate use of the disputed domain names. As mentioned above, the Complainant itself has supplied evidence of the use by the Respondent of one of the disputed domain names for some six years in a manner which is, on the face of it, legitimate.
Finally, in the Panel's view, this case falls well outside the scenario outlined in Telstra Corporation Limited v. Nuclear Marshmallows, supra, whereby UDRP panels must examine all of the circumstances of the case to determine if a passive holding can be considered as use in bad faith. See paragraph 3.2 of WIPO Overview 2.0. Not only are there no relevant circumstances here (for example, there is no evidence supporting the Complainant's claim that its trade marks were well-known), even if there were, they would not avail the Complainant given the lack of registration in bad faith, as explained above.
For the foregoing reasons, the Complaint is denied.
Date: November 18, 2015