WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Goodwill Industries International, Inc. v. Protection of Private Person，REG.RU Protection Service / Denis Denisov

Case No. D2017-1085

1. The Parties

The Complainant is Goodwill Industries International, Inc. of Rockville, Maryland, United States of America (“U.S.”), represented by Kilpatrick Townsend & Stockton LLP, U.S..

The Respondent is Protection of Private Person, REG.RU Protection Service of Moscow, Russian Federation / Denis Denisov of Saint. Petersburg, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <goodwill-shop.com> is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2017. On June 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2017, 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 June 9, 2017, 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 June 15, 2017.

The Registrar has confirmed that Russian is the language of the Registration Agreement. On June 15, 2017, the Center sent an email in English and Russian to the Respondent, inviting it to comment on the language of the proceeding, as the Complainant had already submitted a request that English be the language of the proceeding in the Complaint. The Respondent did not comment on the language of the proceeding.

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 in English and Russian of the Complaint, and the proceedings commenced on June 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 17, 2017.

On July 18, 2017, the Center received an email in Russian from a party that appears to be related to the company listed on the website at the disputed domain name, in which this party indicated that it did not own the disputed domain name, and requested the Center to contact the owner of the disputed domain name directly.

The Center appointed Ladislav Jakl as the sole panelist in this matter on July 28, 2017. 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, Goodwill Industries International, Inc., traces its roots back 115 years. In 1902, the Reverend Edgar J. Helms founded in Boston, Massachusetts an organization that collected used household goods and clothing and then trained and hired people in need to mend and repair those used goods. See Exhibits C and D to the Complaint, information about Complainant, including printouts from its “www.goodwill.org” website and reports available at “www.goodwill.org/newsroom”. The goods were then resold or were given to the people who repaired them. Money earned from the sales at the Complainant’s stores was used for charitable purposes. In 1915, “Goodwill” was first used for the organization’s name, and has been used continuously for more than 100 years to designate the Complainant and Complainant’s predecessors in-interest, member agencies, affiliates, and stores (collectively, the “Complainant”). Through its growth over the decades, the Complainant has become a global social enterprise focused on helping people become trained, educated, and employed. The Complainant has affiliates in 15 countries around the world, including affiliates operating the Complainant’s stores in Brazil, Finland, Mexico, Panama, Philippines, Republic of Korea, Taiwan, Province of China, Thailand, Trinidad and Tobago, and Venezuela. In the U.S. and Canada, the Complainant’s 164 community-based member agencies operate more than 3,000 stores under the GOODWILL name and mark (Exhibit E to the Complaint).

The Complainant has been using the service mark GOODWILL, either standing alone or in combination with other word and/or design elements (collectively, the “GOODWILL Marks”), in the U.S. for its charitable, community services for over 100 years (Exhibits C and D to the Complaint). For example, U.S. Trademark Registration Nos. 1,224,492 (GOODWILL INDUSTRIES, registered on January 18, 1983) and 3,070,744 (GOODWILL, registered on March 21, 2006) (Exhibit I to the Complaint). The Complainant holds a number of service mark registrations on the Principal Register of the U.S. Patent and Trademark Office (USPTO) for its GOODWILL Marks, including, inter alia, GOODWILL; GOODWILL & Design; GOODWILL INDUSTRIES; GOODWILL INDUSTRIES INTERNATIONAL, INC. G GOODWILL & Design; D POWERED BY GOODWILL & Design; GOODWILL OPTICAL; GOODWILL CARS TO WORK; GOODWILLBOOKS.COM; and SHOPGOODWILL.COM, for use in connection with its services. The Complainant also owns numerous trademark registrations throughout the world, including, but not limited to, Australia, Brazil, China, Canada, European Union, Mexico, Peru, Philippines, Republic of Korea, Russian Federation, and, United Kingdom of Great Britain and Northern Ireland. See Exhibit J to the Complaint, printouts of database information pertaining to representative examples of the Complainant’s non-U.S. registrations for its GOODWILL Marks, all of which are valid and subsisting.

The disputed domain name <goodwill-shop.com> was registered on December 6, 2016.

According to the Complaint, the website at the disputed domain name offers the chance to operate an

e-commerce site or “e-shop” with an entity or service named “InSales”, and the disputed domain name is available for sale.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name <goodwill-shop.com> is identical and/or confusingly similar to Complainant’s well-known GOODWILL Marks, as it fully incorporates the exact GOODWILL trademark. The addition of a hyphen and the word “shop” to the GOODWILL name and mark does nothing to dispel the likelihood of confusion. For these reasons, the disputed domain name is identical or confusingly similar to the Complainant’s GOODWILL Marks.

Furthermore, the Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name. The Respondent registered the disputed domain name on December 6, 2016, decades after the Complainant had established rights in its GOODWILL Marks through extensive use. Where, as is the case here, the Complainant’s trademark is so well known and recognized, there can be no legitimate use by the Respondent (Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko, WIPO Case No. D2004-0483, “[U]sing a domain name that incorporates completely the mark of another is not legitimate use. Prima facie, it supports the conclusion that the Respondent does not have a legitimate interest in the domain name.” See also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163). Since the Complainant’s adoption and extensive use of the GOODWILL name and trademarks significantly predate Respondent’s registration and first use of the disputed domain name (Exhibits A, C, P to the Complaint), the burden is on Respondent to establish rights or legitimate interests in the disputed domain name (PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174). The Respondent cannot demonstrate or establish any such rights or legitimate interests. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s GOODWILL Marks. The Respondent is not an authorized licensee of the Complainant’s trademarks, has not been granted permission by the Complainant to use the GOODWILL name and trademarks for competing or highly similar services, and has no right to exploit the Complainant’s trademarks in any manner (Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312). The disputed domain name is not, nor could it be contended to be, a name or nickname of the Respondent, nor is the disputed domain name in any other way identified with or related to any rights or legitimate interests of the Respondent (Exhibits A, Q, R to the Complaint). Additionally, the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is using the disputed domain name for a site offering the chance to operate an e-commerce site with “InSales” in connection with retail services (Exhibits Q, R, S to the Complaint). The Respondent is offering the website “www.goodwill-shop.com” to be used for an online store (an online “shop”) and is promoting the commercial services of InSales. Such use of the disputed domain name, which is based on the Complainant’s GOODWILL Marks and wholly incorporates the Complainant’s GOODWILL trademark, is nothing more than an attempt, in bad faith and in violation of the Policy, to exploit for commercial gain the Complainant’s valuable reputation. The Respondent is also offering the disputed domain name for sale (paragraph 32, Exhibit A to the Complaint). Offering the domain name for sale does not constitute bona fide use of the domain name (Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551). In view of the extensive use and recognition of the Complainant’s GOODWILL Marks, and the fact that the Respondent has no rights in them, the Complainant reasonably believes that the Respondent registered and used the disputed domain name not for any legitimate noncommercial or fair use purpose, but rather to profit from owning a domain name using the Complainant’s trademark to attract Internet users. Such use of the domain name does not constitute a legitimate, bona fide offering of goods or services (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

The Complainant further argues that the Respondent registered and is using the disputed domain name in bad faith. The Respondent registered and is using the disputed domain name in bad faith for commercial gain and to benefit from the valuable reputation associated with the Complainant’s GOODWILL Marks. The Respondent’s bad faith registration and use of the disputed domain name are established by the fact that the disputed domain name fully incorporates the Complainant’s exact GOODWILL trademark, and the disputed domain name was acquired by the Respondent long after the Complainant’s GOODWILL Marks became well known (PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562). The Respondent’s bad faith registration and use are further established by the fact that the Respondent clearly knew about the Complainant, given the GOODWILL trademark has been used extensively for decades, is one of the most recognized and valuable trademarks in the non-profit arena, and has been registered in the U.S. since 1968 (Exhibit I to the Complaint). The Respondent could only have registered or acquired the disputed domain name so confusingly similar to Complainant’s trademarks to capitalize on the hard-earned and valuable goodwill associated with the Complainant’s marks (Terana, S.A. v. RareNames, WebReg, WIPO Case No. D2007-0489). The Respondent intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s GOODWILL Marks as to the source, sponsorship, or endorsement of or affiliation with the website. Indeed, the disputed domain name begins with the Complainant’s exact GOODWILL trademark. The Respondent’s bad faith is established by the likelihood that Internet users will mistakenly believe the disputed domain name is connected to or associated with the Complainant. After seeing the GOODWILL trademark in the disputed domain name, consumers will initially be confused as to the site’s association with or sponsorship by the Complainant. Such initial confusion is enough to demonstrate bad faith (National Collegiate Athletic Association and March Madness Athletic Association, L.L.C. v. Mark Halpern and Front & Center Entertainment, WIPO Case No. D2000-0700). Such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, but an act of bad faith. Respondent is also offering the disputed domain name for sale (Exhibit A to the Complaint). The Respondent’s bad faith registration is also evidenced by the fact that Respondent has failed to identify itself, choosing instead to conceal its address and contact information by using an identity protection service in connection with the disputed domain name (Exhibit A to the Complaint). Such use of concealed contact information, in combination with the Complainant’s exploitation of the Complainant’s GOODWILL Marks for commercial gain, is further evidence of bad faith (Société Nationale de Radiodiffusion Radio France v. France Info, WIPO Case No. D2002-1052).

Based on all of the above, it is evident that the Complainant has met the Policy’s requirements by demonstrating not only the Complainant’s own legitimate interest in its GOODWILL Marks, as evidenced by its extensive use of the marks in the U.S. and other countries for many years, but also that the Respondent’s interest in the disputed domain name is to unlawfully profit from it. The Complainant requests that the Panel appointed in this administrative proceeding issue a decision that the disputed domain name be immediately transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The Complainant submitted its request for English to be the language of the proceeding in the Complaint. The Respondent did not comment on the language of the proceeding. The language of the Registration Agreement is Russian. Paragraph 11(a) of the UDRP provides, that in absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel to determine otherwise. The Complainant respectfully requests that language of this proceeding be English because the Respondent has availed himself or herself of the English language in connection with the disputed domain name in multiple ways. The Respondent is clearly able to communicate in English as he chose to use and is using English language words in the disputed domain name, e.g., the words “goodwill” and “shop”, written in the Latin alphabet. (Exhibit A to the Complaint). The disputed domain name has been posted for sale on “www.sedo.com” which is an English language website. All of the above indicates the Respondent is conversant in English. The Panel, taking in to account all circumstances of this case and a number of prior UDRP proceedings and the reasons cited therein, decides that the language of the administrative proceeding be English (BrandStrategy, Inc. v. BusinessService Ltd., WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd., WIPO Case No. D2007-1836; F. Hoffmann-La Roche AG v. Onotole Vasermane, WIPO Case No. D2010-2074; F. Hoffmann-La Roche AG v. Nikolay Fedotov, WIPO Case No. D2011-1636; Groupe Auchan v. xmxzl, WIPO Case No. DC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432).

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

There is no doubt that disputed domain name <goodwill-shop.com> incorporates the Complainant’s GOODWILL Marks. The addition of a generic Top-Level Domain (“gTLD”) “.com” and the word “shop” does not sufficiently distinguish the disputed domain name from trademarks of the Complainant. The term “shop” does not distinguish the disputed domain name from the Complainant’s trademarks and relates directly to the services offered by the Complainant. The addition of this word to the Complainant’s protected trademarks does nothing to differentiate the disputed domain name from the GOODWILL Marks (F. Hoffmann-La Roche AG v. Med2shop, Thomas Donald Stenzel, WIPO Case No. D2013-2120). Addition of “.com” does nothing to distinguish the disputed domain name from the GOODWILL Marks.

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s GOODWILL Marks in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, it has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence that before the Respondent obtained any notice of the dispute, it has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services. The Panel accepts the arguments of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has exclusive rights for GOODWILL Marks and that no license or authorization was granted to the Respondent to use the GOODWILL Marks in the disputed domain name. A mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name itself (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; St Andrews Links Ltd. v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490). The Respondent has never been authorized by the Complainant to use any of the GOODWILL Marks, including as a trademark or as part of a domain name. Therefore, the Respondent cannot establish that it has rights or any legitimate interests in the disputed domain name (Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299; Guerlain S.A. v. SL, Blancel Web, WIPO Case No. D2000-1191). The Respondent has not used the disputed domain name in connection with a bona fide offering of services or goods, has never been commonly known by the disputed domain name and the Respondent’s commercial use of the Complainant’s trademarks is not protected by the fair use doctrine. The Respondent is using the Complainant’s trademarks in order to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the GOODWILL Marks. The Respondent has no connection with or affiliation to the Complainant and has not received any express or implied license or authorization to use the GOODWILL Marks in a domain name or in any other manner. Moreover, the Respondent cannot demonstrate a legitimate noncommercial or fair use of the disputed domain name.

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, are to be construed as evidence of both:

(i) circumstances indicating that the Respondent has registered or the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed 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; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith as it knew or should have known of the registration and use of the Complainant’s trademarks prior to registering the disputed domain name. The Complainant has used its GOODWILL Marks in connection with its services since at least as early as 1983, and the disputed domain name <goodwill-shop.com> was registered on December 6, 2016. The Complainant obtained its first registration for the GOODWILL Marks on the USPTO on January 8, 1983 (U.S. Trademark Registration No. 1 224 492), long before the Respondent’s registration of the disputed domain name. That registration of a well-known trademark as a domain name is a clear indication of bad faith (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). Moreover, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to source, sponsorship, affiliation, or endorsement of its website (Popular Enterprises.LLC v. American Consumers First et al., WIPO Case No. D2003-0742). The disputed domain name is being used in bad faith, as the Respondent at the time of registering the disputed domain name had knowledge of the Complainant’s rights in the GOODWILL Marks (Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886). The Respondent literally incorporates the Complainant’s entire registered trademarks into the disputed domain name, driving consumers to a website that undermines the Complainant’s legitimate commercial interests (DFDS A/S v. NOLDC Inc, WIPO Case No. D2006-1070). Therefore, there can be no doubt that the Respondent intended to misappropriate the Complainant’ trademarks in order to deceive consumers and draw an improper association with the Complainant. The Respondent deliberately attempts to attract users by creating confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Such commercial activity trading on the goodwill associated with the Complainant’s mark is indicative of the Respondent’s bad faith in registering and using the disputed domain name. The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that links on the website are associated or recommended by the Complainant.

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <goodwill-shop.com> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: September 4, 2017