WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goldie B. Floberg Center, NFP v. Richard Roach
Case No. D2018-0560
1. The Parties
The Complainant is Goldie B. Floberg Center, NFP of Rockton, Illinois, United States of America (“USA” or “US”), represented by HolmstromKennedyPC, USA.
The Respondent is Richard Roach of Aurora, Colorado, USA.
2. The Domain Name and Registrar
The disputed domain name <goldiefloberg.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 March 13, 2018. On March 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 15, 2018, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2018.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 20, 2018. 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 an Illinois nonprofit foundation that operates programs for children and adults with developmental disabilities in Rockton, Illinois, USA. The Complainant’s residential and training center was renamed in December 1969 the “Goldie B. Floberg Center for Children” in honor of a local chief juvenile probation officer who supported the Center. The name was changed in May 2013 to the Goldie B. Floberg Center, as the organization’s mission expanded to serve persons of all ages. The Complainant operates a website at “www.goldiebfloberg.org”.
The Complainant offers housing, training, educational, and employment services through a variety of programs beyond the facilities of the original Center, including twenty group homes, an Entrepreneurial Partnership program, “Floberg University”, and Supported Employment Services, all referred to with some or all of the “Goldie B. Floberg Center” name. From the Annual Reports published on the Complainant’s website, it appears that much of the Complainant’s revenue depends on private donations, which the Complainant recognizes and encourages with a “Goldie B. Floberg Memorial Leadership Award”. In addition to the Complainant’s website, the record includes samples of print advertising, newsletters, and newspaper articles since 1976, showing how the marks GOLDIE B. FLOBERG CENTER or GOLDIE B. FLOBERG have become associated with the Complainant’s services, both in the Goldie B. Floberg Center itself and in other facilities and program locations. Thus, while the Complainant has not registered GOLDIE B. FLOBERG or GOLDIE B. FLOBERG CENTER as trademarks, there is evidence supporting the Complainant’s claim for common law protection.
According to the Registrar, the Domain Name was created on October 22, 2015 and is registered in the name of the Respondent, who appears to be an individual residing in the State of Colorado, USA. At the time of this Decision, the Domain Name does not resolve to an active website, but the Complaint attaches screenshots of the website (the “Respondent’s website”) to which it resolved in February 2018. The home page of that website was headed “The Goldie B. Floberg Center”, with some text borrowed almost verbatim from the Complainant’s website, including the mission statement: “Our Mission: To empower and enrich the lives of all people served.” The Respondent’s website ran to multiple pages and had the appearance of referring to the Complainant, describing the same programs and services for children and adults that the Complainant advertises, naming the Complainant’s president, and displaying the Complainant’s correct office address, postal box, and telephone contact information. Several pages even included a copyright claim in the Complainant’s name, “All Rights Reserved. The Goldie B. Floberg Center 2015”. Other pages on the Respondent’s website simply reproduced the Complainant’s print newsletter.
In addition to imitating the Complainant’s website and copying its newsletter, the Respondent’s website included links for “Auto insurance quotes”, starting with a link on the home page and progressing to banners, frames, and finally two entire pages devoted to comparative price shopping for auto insurance.
It seems that the Respondent, who is not identified on the Respondent’s website, was also interested in using the Domain Name to promote political opinions. Starting with the second page of the Respondent’s website, there are references to Mark Dubowitz, CEO of the Foundation for Defense of Democracies (“FDD”) and to the FDD organization, as well as a lengthy quotation and a video clip attributed to Mr. Dubowitz.
5. Parties’ Contentions
The Complainant asserts common law trademark rights and argues that the Respondent has no permission or other legitimate interests to use a domain name confusingly similar to the Complainant’s trademark for a “fake” website imitating the Complainant’s. The Complainant infers bad faith in an attempt to generate traffic for the linked auto insurance site and cannot conceive any good faith motivation for registering and using the Domain Name as the Respondent has done.
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
For the reasons described in the Factual Background section above, the Panel finds that both GOLDIE B. FLOBERG and GOLDIE B. FLOBERG CENTER have acquired distinctiveness as service marks associated with the Complainant organization. The Complainant has been using the name “Goldie B. Floberg Center” for the foundation since 1969, and it also has been used for decades in advertising and media stories relating to the Complainant’s programs and services offered in and also outside the original “center”. Thus, the Panel finds evidence of trademark use of both forms of the name, which have acquired distinctiveness in a relevant geographic and service market in Northern Illinois. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3.
The relevant portion of the Domain Name differs from the distinctive name “Goldie B. Floberg” only in lacking the middle initial “b” and the spaces and period that cannot be included with a URL in the DNS address system. The generic Top-Level Domain name “.org” is not a distinguishing feature in this instance. See WIPO Overview 3.0, section 1.11.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7. The Panel concludes under this test that the Domain Name is confusingly similar to the Complainant’s common law marks for purposes of the first element of the Policy.
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 on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
Here, the Complainant has established a prima facie case, shifting the burden to the Respondent. The Respondent has not come forward to claim any rights or legitimate interests, and none are apparent from a perusal of the Respondent’s website.
The Panel concludes that the Complainant has established the second element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
This is an apt description of the circumstances here. The Domain Name is confusingly similar to the Complainant’s distinctive common law marks GOLDIE B. FLOBERG and GOLDIE B. FLOBERG CENTER. Indeed, the Domain Name differs by one letter from the Complainant’s domain name. The Respondent was plainly aware of the Complainant’s marks, as the Respondent’s website copied much material from the Complainant’s website and newsletters. The Respondent’s website misleadingly claimed ownership by the Complainant and displayed the Complainant’s contact details. Such imitation and copying, without permission, is an indication of bad faith. Whether the intent was primarily for commercial gain, by diverting visitors to the repeatedly linked auto insurance site, or for political persuasion, it cannot be considered good faith under the Policy to mislead Internet users by imitating the trademark holder both in the Domain Name and in the content of the associated website.
The Panel concludes that the Complainant prevails on the third element of the Policy, 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 Domain Name, <goldiefloberg.org>, be transferred to the Complainant.
W. Scott Blackmer
Date: May 3, 2018