WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Option Institute and Fellowship v. Mohamed Salah / AFKAR IT
Case No. D2016-1978
1. The Parties
The Complainant is The Option Institute and Fellowship of Sheffield, Massachusetts, United States of America ("United States"), represented by Christopher M. Hennessey, Esq., United States.
The Respondent is Mohamed Salah / AFKAR IT of El Mansoura, Egypt.
2. The Domain Name and Registrar
The disputed domain name <sonrise-autism.com> is registered with Name.com, Inc. (Name.com LLC) (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 29, 2016. On September 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on October 4, 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 October 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 2, 2016.
The Center appointed Luca Barbero as the sole panelist in this matter on November 4, 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.
The Panel issued an administrative procedural order (Panel Order No. 1), on November 18, 2016, requesting the Complainant to provide further documents to substantiate its allegations in connection with a license agreement and trademark registrations cited in the Complaint and the Complainant's claimed reputation of its mark. The Complainant was invited to send its submission to the Center within November 23, 2016, and the Respondent was granted until November 30, 2016 to submit its reply to the Complainant's submissions.
4. Factual Background
The Complainant is a non-profit corporation engaged in providing educational services for children with special needs, parents and professionals.
The Complainant is licensee of the United States Registration No. 1915517 for THE SON-RISE PROGRAM, registered on August 29, 1995 by Mark, Barry Neil Kaufman and Susan Marie Kaufman, for the following services in International class 41: "educational services, namely conducting seminars to teach parents and interested professionals to work with children with special challenges such as autism, attention deficit disorders, mental retardation, and other areas involving development delays".
The Complainant is also the owner several national registrations for the service mark THE SON-RISE PROGRAM in class 41, including the Argentinian registration No. 2609358, registered on November 19, 2013, the Brazilian registration No. 905357876, filed on September 28, 2012, and the Singapore registration No. T1408751E, filed on June 5, 2014.
The Complainant also filed an application for THE SON-RISE PROGRAM in Egypt on August 15, 2016.
The disputed domain name <sonrise-autism.com> was registered on January 12, 2015, and it resolves to a website dedicated to an autism center based in Egypt which provides autism diagnosis, behavior evaluation services and therapy sessions to support families with autistic children.
5. Parties' Contentions
The Complainant submits that it has been helping families and children with autism through its specific philosophies and teaching methodologies under the mark THE SON-RISE PROGRAM since 1993 and has become distinctively known throughout the world for its teaching practices.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant's mark and advertises services which are nearly identical to those which are covered under the Complainant's mark. Therefore, the Complainant asserts that consumers who see the disputed domain name associate it with the Complainant and its services.
The Complainant states that the Respondent has not been commonly known by the disputed domain name, has not been granted any permission to use the Complainant's mark and has no rights in the mark, of which it has knowledge since it received offers from the Complainant to enroll in courses to become certified to use the mark. The Complainant further states that the Respondent's use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
As to the bad faith requirement, the Complainant claims that the Respondent is aware of the international reputation of the Complainant and its mark and is advertising identical and competing services on its website. Therefore, the Complainant concludes that the Respondent is using the disputed domain name to benefit from the goodwill associated with the Complainant's mark, and that the Respondent is intentionally attempting to attract users for commercial gain by creating a likelihood of confusion with the Complainant's mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
As stated in paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), ownership of a trademark generally satisfies the threshold requirement of having trademark rights, the location of the trademark, its date of registration, and the goods and/or services for which it is registered being irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.
In the case at hand, the Complainant has provided evidence of ownership of valid national registrations for the service mark THE SON-RISE PROGRAM.
Comparing the disputed domain name with the Complainant's trademark, the Panel notes that they both encompass the combination of terms "son rise" with the addition of non-distinctive elements such as the article "the" and the generic terms "program" and "autism".
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademarks as the core of the Complainant's mark is entirely reproduced in the disputed domain name with the addition of a generic term which is not sufficient to exclude the likelihood of confusion.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the registered trademarks in which it has established rights as prescribed by paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; Accor v. Eren Atesmen, WIPO Case No. D2009-0701, and WIPO Overview 2.0, paragraph 2.1.
The Panel finds that the Complainant has made a prima facie case and that the Respondent has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
According to the evidence on records, there is no relation between the Respondent and the Complainant and the Respondent has not obtained any authorization to use the Complainant's trademarks or the disputed domain name.
In addition, there is also no indication before the Panel that the Respondent might be commonly known by the disputed domain name.
The Panel notes that the disputed domain name is used to promote an autism center which is expressly defined on the website at the disputed domain name as "inspired by the international program 'Son Rise' and hoping to get the same global results". In view of the Respondent's use of the Complainant's program's name and its promotion of identical services, it is likely that Internet users could be confused as to the source, sponsorship, affiliation or endorsement of the website.
In view of the above and since the Respondent has failed to reply to the Complainant's allegations and also did not deem appropriate to reply to the Panel Order, the Panel finds that the Respondent has not used, or made preparation to use, the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use prior to receiving notice of the dispute.
Therefore, the Panel finds that also the requirement prescribed by paragraph 4(a)(ii) of the Policy has been met.
C. Registered and Used in Bad Faith
In light of the prior registration and use of the Complainant's mark THE SON-RISE PROGRAM, in several countries of the world, in connection with the Complainant's educational services for special needs children, parents and professionals, the Panel finds that the Respondent's registration of the disputed domain name, with which it is confusingly similar, does not amount to a mere coincidence.
Indeed, the combination of the core of the Complainant's mark with the term "autism" in the disputed domain name suggests that the Respondent had in mind the Complainant and its program at the time of the registration of the disputed domain name. The Respondent's actual knowledge of the mark is also supported by the statement published on the website at the disputed domain name: "Center name is inspired by the international program "Son Rise".
As to the use of the disputed domain name, the Panel notes that the Respondent is promoting services for children with autism disorder publishing on the home page a "SunRise" logo and failing to provide any disclaimer as to the absence of affiliation with the Complainant and its mark.
Therefore, the Panel finds that the Respondent has intentionally attempted to attract users to its website, for commercial gain, by causing a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website and the services promoted therein, according to paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <sonrise-autism.com> be transferred to the Complainant.
Date: December 8, 2016