WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goodwill Industries International, Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Mark Smith, Good Will Loan
Case No. D2015-0767
1. The Parties
The Complainant is Goodwill Industries International, Inc. of Rockville, Maryland, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondents are Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org of Queensland, Australia / Mark Smith, Good Will Loan of Meilen, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <goodwillloan.org> (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 29, 2015. On April 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 30, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an Amended Complaint on May 10, 2015.
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 the Respondents of the Complaint, and the proceedings commenced on May 12, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 1, 2015. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on June 3, 2015.
The Center appointed Nick J. Gardner as the sole panelist in this matter on June 11, 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, Goodwill Industries International, Inc is one of the largest charities in the United States. It traces its roots back more than 112 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. The goods were then resold or were given to the people who repaired them. Money earned from the sales was used for charitable purposes. In 1915, "Goodwill" was first used for the organization's name, and has been used continuously for since then to designate the Complainant and Complainant's predecessors-in-interest, member agencies, affiliates, and stores.
In 2013, approximately 9.8 million people accessed the Complainant's services for assistance with employment, with managing finances, and for other services. Almost 7.8 million of those people were served online through the Complainant's websites. More than 261,000 people earned a job in 2013 with the Complainant's help. The Complainant's financial management work includes examples such as the collaboration between Goodwill Industries in Indianapolis and the Charles Schwab Foundation to provide financial coaching and education programs to low-income families and individuals, and the GoodChoice loans and free money management classes offered by Goodwill Industries of Central Virginia & Hampton Roads along with Virginia Credit Union and a local church.
The Complainant has used the name "Goodwill" very widely to promote itself and its services. The filed evidence establishes it is widely known and generally referred to (in the United States) as "Goodwill". It is the proprietor of (inter alia) US registered service mark number 3,070,744 in respect of the word GOODWILL, registered on March 21, 2006 claiming a first use date of 1916.
The Complainant also incorporates the word "Goodwill" in its domain name <goodwill.org> and the domain names of various affiliates which it has authorised, for example <goodwillboooks.org>.
On November 15, 2014 the Respondents registered the Disputed Domain Name. It resolves to a website (the "Respondents' Website") which is in very large measure a copy of the Complainant's own web site and which manifestly purports to be a web site operated by the Complainant and which offers, or purports to offer, loan and financial services.
5. Parties' Contentions
The Complainant's case can be summarised as follows.
a) The Disputed Domain Name is confusingly similar to the GOODWILL trade mark as (i) it incorporates in its entirety Complainant's well-known and distinctive GOODWILL mark, and (ii) the combination thereof with generic terminology is insufficient to distinguish the Disputed Domain Name from the Complainant's trade mark.
b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Name.
c) The Respondents use the Disputed Domain Names in bad faith as the Respondents' Website makes use of the Complainant's GOODWILL trademark to promote a service which is impersonating the Complainant and is offering, or purporting to offer, loan and financial services to visitors to the Respondents' Website.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
As a preliminary issue the Panel notes this is a case where one of the Respondents (Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org.) appears to be a privacy or proxy registration service while the other Respondent (Mark Smith) appears to be the substantive Respondent. The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.9, as follows "Most panels in cases involving privacy or proxy services in which such disclosure of an underlying registrant has occurred, appear to have found it appropriate to record in their issued decision both the name of the privacy or proxy registration service appearing in the WhoIs at the time the complaint was filed, and of any disclosed underlying registrant". Accordingly this decision refers to both Respondents. It is not in practical terms necessary to distinguish which Respondent was responsible for specific acts.
The Panel also notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel again adopts the approach set out in the paragraph 4.9 of the WIPO Overview 2.0 namely, "once the WIPO Center has notified the complaint to the WhoIs-listed contact information (especially where confirmed by the registrar) for the domain name registrant, this would normally satisfy the requirement in paragraph 2(a) of the UDRP Rules to employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents' failure to file any Response. While the Respondents' failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondents' default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:
i. the Respondents' Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondents have no rights or legitimate interests in the Domain Name;
iii. the Respondents' domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has submitted detailed evidence that it is the owner of registered trademarks in respect of the word "goodwill".
The Panel holds that the Disputed Domain Name is confusingly similar to the above trademark. The Disputed Domain Name, as registered by the Respondents, incorporates the GOODWILL trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The only difference is the addition of the generic word "loan". This addition does not suffice to negate the similarity between the Disputed Domain Name and the Complainant's GOODWILL trademark. It is established that where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the word "loan") to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's trade mark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in the domain name:
i. before any notice to respondent of the dispute, respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
iii. respondent is making a legitimate non-commercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Name or to use the GOODWILL trade mark. The Complainant has prior rights in the GOODWILL trade mark which precede the Respondents' registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondents have no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the confusingly similar nature of the Disputed Domain Name to the GOODWILL trade mark, and the lack of any explanation from the Respondents as to why they registered the Disputed Domain Name leads the Panel to conclude the registration and use was in bad faith. It is true that "goodwill" is an ordinary English word with several meanings. It is possible to envisage circumstances where a third party could register a domain name incorporating that word without knowledge of the Complainant and without any bad faith. That is clearly not the case here. The detailed evidence filed by the Complainant shows the Respondents' Website is closely modeled upon the Complainant's website. It is clearly an impersonation of the Complainant and part of some scheme that relies upon the Respondents holding themselves out as being the Complainant. In the present case, the Panel concludes that it is inconceivable that the Respondent selected the Disputed Domain Name independently and without knowledge of the Complainant or its activities. The Panel has no doubt the Respondent was, by use of the Disputed Domain Name, seeking to suggest it had a connection with the Complainant in the course of trade, by suggesting that it was the website for a financial/loan business run by the Complainant. It is not clear to the Panel precisely what the Respondents' intent was in behaving in this manner, as it seems unlikely to this Panel that the Respondents were actually offering bona fide loans. This does not however matter as the Respondents' behaviour clearly amounts to that specified in paragraph 4(b)(iv) of the Policy as being evidence of registration and use in bad faith, namely "by using the domain name, you 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".
Further the Panel notes the Respondents have not filed a Response and hence have not availed themselves
of the opportunity to present any case of legitimate use that they might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <goodwillloan.org> be transferred to the Complainant.
Nick J. Gardner
Date: June 22, 2015