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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Military Order of the Purple Heart and Military Order of the Purple Heart Service Foundation, Inc. v. Domain Privacy Service and Barry Wright

Case No. D2013-0301

1. The Parties

Complainants are Military Order of the Purple Heart, Springfield, Virginia; and Military Order of the Purple Heart Service Foundation, Inc., Annandale, Virginia, both of United States of America, represented by Quarles & Brady LLP, United States of America.

Respondent is Domain Privacy Service, Burlington, Massachusetts; and Barry Wright, Chicago, Illinois, both of United States of America.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2013. On February 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 2013, 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 Complainant on February 15, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint February 18, 2013.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 14, 2013.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 2, 2013. 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

Complainants are an organization created primarily to honor and assist former veterans of the United States armed forces who have been awarded the “purple heart” medal, and the fundraising foundation of that organization. Both own registrations for the mark PURPLE HEART, for services including “charitable fundraising.” These registrations include United States Trademark Registration No. 2,206,764 (Registered 1998), and United States Service Mark Registration No. 4,015,788 (registered 2011). Complainants also own marks that include the term “purple heart”, namely MILITARY ORDER OF THE PURPLE HEART, and design. These include; United States Trademark Registration No. 2,206,762 (registered 1998); United States Trademark Registration No. 2,206,768 (Registered 1998); United States Trademark Registration No. 2,212,475 (registered 1998); United States Trademark Registration No. 3,735,894 (registered 2010); and United States Trademark Registration No. 3,738,805 (registered 2010).

Complainants own the registration for the domain name <purpleheart.org> (registered on September 15, 1996), which they use to connect to an active website through which they offer consumers information about their charitable and other services. Complainants own other domain name registrations that include the term “purple heart” with descriptive terms, such as <purpleheartcars.org> (registered on September 19, 2001).

The disputed domain name <purpleheartcaboose.org> was registered by Respondent on July 7, 2012. Respondent has no affiliation with Complainant. Respondent has used the URL associated with the disputed domain name to resolve to a website that describes or advertises charitable services similar to the ones offered by Complainants, including a link requesting donations. Complainants have not authorized these activities by Respondent, nor any use of their trademarks thereby.

5. Parties’ Contentions

A. Complainants

Complainants contend that: (i) the disputed domain name <purpleheartcaboose.org> is identical or confusingly similar to Complainants’ trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

B. Respondent

Respondent did not file a reply to Complainants’ contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <purpleheartcaboose.org> is identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.

The disputed domain name directly incorporates Complainant’s registered trademark PURPLE HEART. Accordingly, consumers would expect to find information offered by Complainants on the website to which the disputed domain name refers. The Panel finds that the added word “caboose” is descriptive, as indeed discussed by Respondent’s own website, which notes: “Why the caboose? The caboose is an iconic image strongly associated with the history of the United States of America and through its symbolism we hope to connect to the hearts of people everywhere.”

That Complainants have other domain name registrations and marks that incorporate the registered term PURPLE HEART with descriptive terms further compounds the likelihood of confusion.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with additional descriptive wording does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; and Microsoft Corporation v. Step-Web, WIPO Case No. D2000-1500.

This Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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.”

Respondent did not submit a reply to the Complaint, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a website that is competing with Complainants or Complainants’ charitable services.

Therefore, this Panel finds that Complainants have provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph (4)(a)(ii) of the Policy, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where:

“by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site 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 or of a product or service on [the] web site or location”.

As noted in Section 4 of this Panel’s decision, Respondent has a webpage at the URL associated with the disputed domain name, with a request for donations, and which even mentions Complainants. Hence, the Panel finds that Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 <purpleheartcaboose.org> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: April 3, 2013

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