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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

St. Louis Men’s Group Against Cancer v. WhoisGuard Protected, WhoisGuard, Inc. / Glenn Broadnax

Case No. D2020-3201

1. The Parties

The Complainant is St. Louis Men’s Group Against Cancer, United States of America (“United States”), represented by Thompson Coburn LLP, United States.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Glenn Broadnax, Italy.

2. The Domain Name and Registrar

The disputed domain name <stlmgac.org> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2020. On November 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2020 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 amended Complaint on December 7, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2021.

The Center appointed Andrew F. Christie as the sole panelist in this matter on February 2, 2021. 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 is a non-profit corporation based in St Louis, Missouri, United States. It is a charitable organization which undertakes fundraising for, and provides educational resources to, entities and individuals involved in the research, diagnosis, and treatment of cancer. The Complainant has raised substantial amounts of money, providing on average USD 250,000-350,000 annually to other non-profit organizations that provide services related to cancer.

Since 2010, the Complainant has used the initials of its name, STLMGAC, to identify itself on printed material such as letterheads, business cards and brochures. In 2011, the Complainant registered the disputed domain name, and used it to establish a website at “www.stlmgac.org”, at which STLMGAC was used throughout as an identifier of the Complainant. The Complainant does not have any trademark registration for STLMGAC.

The Complainant inadvertently allowed its registration of the disputed domain name to lapse in early 2020.

The disputed domain name was registered by the Respondent on July 12, 2020. The Complainant has provided screenshots showing the website resolving from the disputed domain name on November 25, 2020. That website contained information about the Complainant, including how to donate to it, and a link to another website for undertaking Bitcoin transactions.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical to a trademark in which it has rights because: (i) as a result of the Complainant’s continuous use of STLMGAC for approximately 10 years, STLMGAC has achieved wide-spread recognition, is well-known in the United States, and is a common law trademark in which the Complainant has rights; (ii) the disputed domain name contains the STLMGAC trademark in its entirety and does nothing to distinguish itself from the STLMGAC trademark; and (iii) the disputed domain name does nothing more than add the generic Top-Level Domain (“gTLD”) “.org” to the end of the Complainant’s STLMGAC trademark, which is a standard registration requirement and as such should be disregarded.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because: (i) the disputed domain name resolves to a website that uses the Complainant’s trademark, and the same text, images and layout as the Complainant’s website, adding only a confusing and misleading link to a Bitcoin website that is not connected to the Complainant’s activities; (ii) the Respondent has no affiliation with the Complainant, and has not obtained any license or permission to associate itself with the Complainant, or provide any services as the Complainant’s authorized representative; (iii) the website resolving from the disputed domain name appropriates the Complainant’s original website content and attempts to pass itself off as a legitimate non-profit organization by using the name “St. Louis Men’s Group Against Cancer” and the STLMGAC trademark and lure users into clicking on a website linked to Bitcoin, which is not in any way associated with the Complainant; (iv) using the disputed domain name to appropriate the Complainant’s trademark and website “look and feel” in order to impersonate the Complainant in an attempt to attract users to a Bitcoin service is not a bona fide or legitimate noncommercial use of the disputed domain name; (v) there is a significant risk that Internet users attempting to access and navigate to the Complainant’s website or find information about its services will, instead, find themselves looking at a website for Bitcoin trading and, as a result, be confused as to whether the Complainant promotes the content of that website or unknowingly make a financial contribution to the Respondent; and (vi) to the Complainant’s knowledge, the Respondent has no connection to, and is not in any way known by, the name “STLMGAC”.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent has registered and is using the disputed domain name primarily for the purpose of disrupting the Complainant’s business, as it is doing nothing but attracting Internet users seeking information about the Complainant and showing them a website that appears to be that of the Complainant, then seeking donations from them or directing them to a Bitcoin website; (ii) the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s STLMGAC trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the services provided thereby; (iii) the Respondent has no trademark rights for the STLMGAC trademark, and does not appear to be commonly known by that name, but nonetheless registered a domain name that incorporates the Complainant’s STLMGAC trademark in its entirety and also misappropriated the Complainant’s original website information; (iv) it is clear the Respondent was aware of the Complainant’s trademark rights at the time that it registered the disputed domain name and posted website content of the Complainant, and intended to target the Complainant; and (v) the Respondent is attempting to attract members of the public who have an interest in obtaining additional information about the Complainant’s charitable services, donating to the Complainant, or registering to attend one of its events, and then tricking them into making a donation to the Respondent (instead of the Complainant) or visiting a Bitcoin website unrelated to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

As is explained in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered or common law trademark rights, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

The Complainant provided substantial evidence of its use of STLMGAC. That evidence establishes that STLMGAC has been used continuously by the Complainant for a period of approximately 10 years, and that it has been used by the Complainant as an identifier of the Complainant’s services. By virtue of being the initialism of the Complainant’s name, STLMGAC is inherently distinctive of the Complainant. For these reasons, the Panel is satisfied that STLMGAC is a common law trademark in which the Complainant has rights.

Once the gTLD “.org” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s common law trademark STLMGAC in its entirety. The Complainant’s trademark STLMGAC is clearly recognisable in the disputed domain name. Accordingly, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its STLMGAC trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name has been used by the Respondent to resolve to a website that seeks to pass itself off as the website of the Complainant, and which contains a link to a Bitcoin trading platform that is unconnected to the Complainant. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered by the Respondent after the Complainant inadvertently let its registration of it lapse in 2020. The evidence on the record provided by the Complainant of the Complainant’s use of its STLMGAC trademark, and of the Respondent’s reproduction of the Complainant’s STLMGAC trademark on the website resolving from the disputed domain name, is sufficient to satisfy the Panel that, at the time of the Respondent’s registration of the disputed domain name, the Respondent knew of the Complainant’s STLMGAC trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <stlmgac.org>, be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: February 16, 2021

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