WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Christian Medical & Dental Associations v. David Mayer, KAT Communications
Case No. D2016-1670
1. The Parties
The Complainant is Christian Medical & Dental Associations of Bristol, Tennessee, United States of America (“United States”), represented by Whitaker, Chalk, Swindle & Sawyer, LLP, United States.
The Respondent is David Mayer, KAT Communications of Bismarck, North Dakota, United States, internally represented.
2. The Domain Name and Registrar
The disputed domain name <globalhealthoutreach.org> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2016. On August 17, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2016, 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 August 22, 2016, providing the registrant and contact information disclosed by the Registrar and notifying the Complainant that the Complaint was administratively deficient. The Complainant filed an amended Complaint on August 26, 2016.
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 August 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 18, 2016. The Response was filed with the Center on September 16, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on September 27, 2016. 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 charitable and religious organization that provides food, clothing, and medicine, primarily in developing countries. The Complainant is the owner of a design plus words trademark registration for GLOBAL HEALTH OUTREACH (U.S. Reg. No. 2422114), issued by the United States Patent and Trademark Office (“USPTO”) on January 16, 2001.1 The Complainant has used the GLOBAL HEALTH OUTREACH mark in connection with charitable services since as early as November 3, 1998.
The Respondent registered the disputed domain name on July 31, 2012, according to relevant WhoIs records maintained by the concerned Registrar. After becoming aware of the Respondent’s registration and use of the disputed domain name, the Complainant on February 14, 2013, sent a cease-and-desist letter to the Respondent. At that time the disputed domain name resolved to a webpage with the following content:
For more information about Global Health Outreach, please e-mail us at […]@globalhealthoutreach.org
Global Health Outreach (GHO) is an international, faith-based group of professionals who help communities around the world create their own public health solutions.
Our goal is to create public health infrastructure and techniques that are sustainable in developing nations.
The Complainant received no reply from the Respondent, and sent a second cease-and-desist letter on October 21, 2015. After the Respondent failed to reply to the Complainant’s second notice letter, the instant Complaint was submitted to the Center. On August 31, 2016, following the Center’s formal notification to the Respondent of the Complaint, the Respondent sent an email to the Center stating: “This site has been taken down.”
The disputed domain name currently resolves to a webpage which contains the following content:
The Global Health Outreach website is currently offline. We apologize for the inconvenience. Please contact […]@globalhealthoutreach.org for more information.
5. Parties’ Contentions
The Complainant asserts rights in the GLOBAL HEALTH OUTREACH mark through registration and based on continuous use of the mark in commerce since November 1998. The Complainant submits that the disputed domain name is not only confusingly similar but in fact identical to the Complainant’s mark. The Complainant notes that its rights in the GLOBAL HEALTH OUTREACH mark have become incontestable.2 The Complainant maintains that its mark is well-known and associated with the Complainant’s ministries and operations, and that its members include thousands of physicians and dentists. The Complainant further relates that it has a significant presence on the Internet and maintains a website at “www.globalhealthoutreach.com”.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s mark, and according to the Complainant the Respondent has not been commonly known by the disputed domain name. The Complainant contends that the Respondent registered a domain name identical to the Complainant’s mark in order to divert Internet users to the Respondent’s website by creating Internet user confusion. In view of the foregoing, the Complaint asserts that that the Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered the disputed domain name to prevent the Complainant from registering a domain name reflecting its mark, and that the Respondent’s intent in registering the disputed domain name was to intentionally attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant further argues that the Respondent’s failure to respond to two cease-and-desist letters is evidence of the Respondent’s bad faith.
The Respondent states that KAT Communications is an agency for the organization previously known as Global Health Outreach. According to the Respondent, Global Health Outreach was formed in 2001, and registered with the Internal Revenue Service (IRS) as a tax-exempt non-profit organization. The Respondent explains that about two (2) years ago it was brought their attention that another organization was registered under the name Global Health Outreach, and that as a result the Respondent’s name was changed to World Public Health Outreach, but that the current website was kept while transitioning to the new identity.
According to the Respondent, its website has been inactive, taken offline, and has not generated any revenue, but ownership of the disputed domain name has been retained. The Respondent submits that its website has not been used in bad faith or to undermine any other organization. The Respondent further asserts that it does not compete with the Complainant, because the Respondent’s mission has been to provide scholarships to students from Africa seeking a degree in public health with an interest in serving their countries in that capacity.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s GLOBAL HEALTH OUTREACH mark, in which the Complainant has established rights.3 In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Although gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The Complainant has demonstrated rights in the GLOBAL HEALTH OUTREACH mark, and the Panel has found that the disputed domain name is identical to the mark. The Complainant has also presented evidence that the Respondent prior to the filing of the Complainant used the disputed domain name in connection with a webpage promoting charitable services similar to those of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a 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.
The Respondent contends that it has operated as a charitable, non-profit organization under the name Global Health Outreach since 2001. However, the Respondent has offered no credible evidence that it had operated a charitable organization known as “Global Health Outreach” prior to registering the disputed domain name on July 31, 2012. Thereafter the Respondent received two cease-and-desist letters from the Complainant, to which the Respondent offered no reply. While the Respondent claims to have changed its name to World Public Health Outreach, the Respondent has provided no credible evidence of this either. To the contrary, the Respondent continues on its current webpage to identify itself as “Global Health Outreach” and to use the disputed domain name as an email address.
Based on the record in this proceeding, the Panel concludes that the Respondent most likely was aware of the Complainant’s rights in its GLOBAL HEALTH OUTREACH mark when registering the disputed domain name. Given the Complainant’s extensive use of the GLOBAL HEALTH OUTREACH for nearly seventeen (17) years, the Panel considers that the Respondent registered and has used the disputed domain name in an attempt to suggest to the public that an association exists between the Complainant and the Respondent. Internet users could easily expect that the disputed domain name, which is identical to the Complainant’s mark, would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
In light of the attendant circumstances, the record does not in the Panel’s view reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, can it be said that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. The Respondent makes no claim to have been authorized to use the Complainant’s mark, and a satisfactory showing has not been made that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The disputed domain name was registered by the Respondent many years after the Complainant began using and registered GLOBAL HEALTH OUTREACH as a trademark in connection with its charitable activities. Based on the record, the Panel concludes that the Respondent in all probability was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. For the reasons noted earlier, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. In the attendant circumstances of this case, the Panel finds also that the Respondent’s failure to reply to the Complainant’s cease-and-desist letters is indicative of bad faith. See Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <globalhealthoutreach.org> be transferred to the Complainant.
William R. Towns
Date: October 11, 2016
1 The Complainant disclaimed the exclusive right to use “Global Health Outreach” apart from the mark as shown.
2 In the United States, a trademark registration becomes incontestable under Section 15 of the Lanham Act after the mark has been continuously used for five (5) consecutive years from the date of registration and a Section 15 Declaration is filed with and acknowledged by the USPTO. An incontestable mark is presumptive evidence of the owner’s exclusive right to use the mark with the registered goods and services, and the mark is not vulnerable to cancellation based on descriptiveness.
3 As noted earlier, the Complainant registered GLOBAL HEALTH OUTREACH as a design plus words mark, and the USPTO required the Complainant to disclaim the word element “Global Health Outreach” apart from the mark as shown. Presumably the USPTO considered the word element to be descriptive. However, given the Complainant’s continuous use of the mark since 1998, the Panel is persuaded that the word mark GLOBAL HEALTH OUTREACH has acquired distinctiveness. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. The Panel further notes that common law protection generally is recognized in connection with the tort of passing off. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter “WIPO Overview 2.0”), paragraph 1.7.