WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Share Our Strength v. Registration Private, Domains By Proxy, LLC / James Salvage
Case No. D2016-2155
1. The Parties
The Complainant is Share Our Strength, of Washington, District of Columbia, United States of America (“USA” or “US”), represented by Brennan Law Firm PLLC, USA.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, USA / James Salvage of Cleveland, Tennessee, USA.
2. The Domain Name and Registrar
The disputed domain name <nokidhungrymail.org> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 25, 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 October 28, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 2, 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 November 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on December 5, 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 charity focused on child hunger. Founded in 1984, the Complainant is organized as a District of Columbia nonprofit corporation and is headquartered in the District of Columbia, USA. The Complainant operates a website at “www.nokidhungry.org”, and since at least 2008 the Complainant has raised funds, provided meals for vulnerable children, and conducted education and advocacy programs under the name “No Kid Hungry”.
The Complainant owns the following US Trademark Registrations for standard character marks:
US REGISTRATION NUMBER
NO KID HUNGRY
January 4, 2011
NO KID HUNGRY PLEDGE
April 19, 2011
NO KID HUNGRY CAMPAIGN
April 19, 2011
DINE OUT NO KID HUNGRY
October 2, 2012
According to the Registrar, the Domain Name was created on August 16, 2016. It was registered in the name of the Registrar’s privacy service Domains by Proxy, but when notified of the Complaint in this proceeding, the Registrar identified the registrant as James Salvage of Cleveland, Tennessee, USA, who will be referred to hereafter as the “Respondent”.
The Domain Name does not currently resolve to an active website, and the Internet Archive’s Wayback Machine has no archived screenshots of a website associated with the Domain Name. Rather, the record indicates that the Respondent has used the Domain Name solely as an email domain, to create the false impression that he is associated with the Complainant. It appears that the Respondent posted employment opportunities for a “mail services clerk” in September 2016 on the websites of two US colleges, Brigham Young University Idaho and Chadron State College. One student contacted the Complainant to verify that the Respondent and the job were “legitimate” after responding to the job posting and exchanging emails with the Respondent at the email address “firstname.lastname@example.org”. In his email to the student, the Respondent claimed to be the “Welfare Officer” for No Kid Hungry USA (a registered trade name for the Complainant). The Respondent’s email included copyrighted material copied from the Complainant’s website and a rather vague description of a position contacting people and receiving and distributing by mail “items such as clothing, Med, toys, etc.”, whereupon “delegates” would come monthly and join the employee in visiting the homes of the recipients. The email from the Respondent offered USD 350 weekly in addition to other benefits and asked for the student’s contact information, mailing address, and school schedule.
The Complainant’s representative sent a cease-and-desist letter by email to the Respondent, with no response from the Respondent.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered NO KID HUNGRY marks, in which the Respondent has no rights or legitimate interests. The Complainant argues that the Respondent has registered and used the Domain Name in bad faith to mislead Internet users and create a false impression of an affiliation with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
The Complainant indisputably holds registered NO KID HUNGRY trademarks, and the Domain Name incorporates that mark in its entirety, adding the generic term “mail”, which does not eliminate confusion, particularly where the Respondent has used the Domain Name only in relation to email. Thus, the Panel finds confusing similarity and concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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) that 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, it is undisputed that the Respondent is not affiliated with the Complainant, has no permission to use the Complainant’s mark in the Domain Name, and has used the Domain Name to create the false impression that he represented the Complainant in offering a job position. The Respondent has not come forward to establish rights or legitimate interests in the Domain Name. The Panel concludes that the Complainant has met its burden of establishing the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”. None of them squarely fit the circumstances of this case, but the circumstances cited in paragraph 4(b) are not exhaustive; they are given as examples “without limitation”.
In the current proceeding, the Respondent never used the Domain Name for a website but rather for email, which has been used to furnish misleading contact details for spurious job opportunities with the Complainant, posted on college websites. The Complainant learned of the Domain Name only because one of the intended victims of the Respondent’s fraud approached the Complainant to verify the legitimacy of an emailed job offer. The Respondent did not reply to the Complainant, and the Respondent did not submit a Response in this proceeding, so the Panel can only speculate as to the Respondent’s motives for pretending to be an employee of the Complainant and making such an offer. The Respondent’s email with a college student seeking employment requested personal information including her address and class schedule and told her to expect a visit by “delegates” at the end of the month. The email also asked her to receive packages of “Meds” and other items in the mail monthly and distribute them promptly to addresses that would be provided to her. Since the Respondent clearly has nothing to do with the Complainant’s charitable work in providing meals to hungry children, one may suppose that the Respondent is engaged in illicit activities. In any event, the Respondent’s business, legitimate or otherwise, has nothing to do with the Complainant’s work and merely takes advantage of its reputation. The probabilities lie with bad faith motivations for registering and using the Domain Name in this fashion, relying on the mark of a respected charity that benefits needy children as a way to attract college students looking for part-time employment associated with a worthy cause. The Panel finds this conduct indicative of bad faith within the meaning of the Policy.
The Panel concludes that the third element of the Complaint has been established on the available record.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <nokidhungrymail.org> be transferred to the Complainant.
W. Scott Blackmer
Date: December 13, 2016