WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Military Order of the Purple Heart of the United States of America, Incorporated, and Military Order of the Purple Heart Service Foundation, Inc. v. Cybrac.com, Jason Groeneweg
Case No. D2013-0494
1. The Parties
The Complainants are: Military Order of the Purple Heart of the United States of America, Incorporated of Springfield, Virginia, United States of America; and Military Order of the Purple Heart Service Foundation, Inc. of Annandale, Virginia, United States of America, both represented by Quarles & Brady LLP, United States of America.
The Respondent is Cybrac.com, Jason Groeneweg of Rock Valley, Iowa, United States of America.
2. The Domain Names and Registrars
The disputed domain names <purpleheartoutdoors.com> and <purpleheartoutdoors.org> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2013. On March 12, 2013, the Center transmitted to the Registrar a request for registrar verification in connection with the disputed domain names. On March 12, 2013, the Registrar transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on March 19, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 9, 2013.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on April 18, 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
The Complainant, Military Order of the Purple Heart of the United States of America, Incorporated (“the Military Order of the Purple Heart”), describes itself as an organization “[c]hartered by Congress in 1958, . . . composed of military men and women who received the Purple Heart Medal for wounds suffered in combat.” The Complainant, Military Order of the Purple Heart Service Foundation, Inc. (“the Service Foundation”), is a national fundraiser for the Military Order of the Purple Heart. The Complainants separately have used various marks that include the “Purple Heart” term, and obtained multiple registrations for them in the United States Patent and Trademark Office. They include registrations on December 1, 1998 (by the Military Order of the Purple Heart) for “magazine for combat wounded veterans”, and on August 23, 2011 (by the Service Foundation) for “Charitable fundraising”. For the latter registration, the date of “first use” is indicated as 1991.
The disputed domain names <purpleheartoutdoors.com> and <purpleheartoutdoors.org> were registered on October 11, 2008.
5. Parties’ Contentions
The Complainants contend that: (i) the disputed domain names are identical or confusingly similar to marks in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainants also state, “Respondent is not, and has never been, authorized to use Complainants’ PURPLE HEART family of trademarks.”
The Respondent did not reply to the Complainants’ contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. Under paragraph 14(b), the Panel may draw appropriate inferences from the Respondent’s default.
6. Discussion and Findings
In order to prevail, the Complainants must prove each of the three elements under paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainants have rights in the PURPLE HEART mark. The Panel concludes that the disputed domain names <purpleheartoutdoors.com> and <purpleheartoutdoors.org> are confusingly similar to the Complainants’ PURPLE HEART mark. The addition of a generic term, such as “outdoors”, along with the top level domain “.com” or “.org”, does not defeat confusing similarity. The “purpleheart” designation is still the predominant portion of each disputed domain name.
The Complainants have proven the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainants have met their initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The burden thus shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted. The Panel is unable to ascertain any evidence that would indicate any right or legitimate interest that the Respondent has in the disputed domain names, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is demonstrated.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances, which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:”
“(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Here, Internet users who resort to either disputed domain name are directed to a website whose content includes the following text:
“Welcome to Outdoor Veterans!”
“The objective of Outdoor Veterans is to provide outdoor activities to qualified and selected Veterans of the United States Armed Forces at no cost to the recipient.”
Users who resort to the “Donate” link on the website are informed that “Outdoor Veterans is ... devoted to helping the wounded Veterans of the United States Armed Forces. Please make your tax deductible contributions by clicking the Donate Button or by mailing your donation to the address below.”
In all of the circumstances, the Panel is left with the conclusion that in using the disputed domain names, the Respondent “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website …, by creating a likelihood of confusion with the [C]omplainant’s mark[s] as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv) of the Policy.
The third element is also demonstrated.
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 names <purpleheartoutdoors.com> and <purpleheartoutdoors.org> be transferred to the Complainants.
Date: May 2, 2013