WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sheryl Sandberg & Dave Goldberg Family Foundation v. WhoisGuard, Inc. / Hecham Ghazal
Case No. D2019-0213
1. The Parties
The Complainant is Sheryl Sandberg & Dave Goldberg Family Foundation of Palo Alto, California, United States of America (“United States”), represented by Arnold & Porter, United States.
The Respondent is WhoisGuard, Inc. of Panama / Hecham Ghazal of Oakville, Ontario, Canada, self‑represented.
2. The Domain Name and Registrar
The disputed domain name <leanin.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2019. On January 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 29, 2019, 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 January 30, 2019, 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 February 8, 2019.
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 February 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2019. On March 4, 2019, the Center received a request from the Respondent to extend the Response due date to March 8, 2019. That same day, under paragraph 5(b) of the Rules, the Center extended the Response due date to March 7, 2019. On March 5, 2019, pursuant to paragraph 5(e) of the Rules, the Center extended the Response due date to March 8, 2019. The Response was filed with the Center on March 8, 2019.
On March 11, 2019, the Complainant submitted a supplemental filing. On March 12, 2019, the Center received a supplemental filing from the Respondent.
The Center appointed John Swinson as the sole panelist in this matter on March 18, 2019. 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 Sheryl Sandberg & Dave Goldberg Family Foundation, a not for profit corporation incorporated in the United States. A subsidiary of the Complainant, LeanIn.Org LLC, is a worldwide organization that helps people to achieve their goals. The Foundation and LeanIn.Org were created after the success of Sheryl Sandberg’s well known Ted Talk and book Lean In.
The Complainant owns a number of registered trade marks for LEAN IN, the earliest of which is United States registered trade mark number 4,902,173 registered on February 16, 2016 (the “Trade Mark”). The Complainant also owns a domain name incorporating the Trade Mark, being <leanin.org>, which it registered on April 6, 2010.
The Respondent is Hecham Ghazal, an individual from Canada. The Disputed Domain Name was first registered on June 28, 2002. The Disputed Domain Name was transferred to LeanIn Inc., a business owned and operated by the Respondent, on July 28, 2010. The Disputed Domain Name was then transferred to the Respondent on June 24, 2015.
The Respondent has used the email address “[...]@leanin.com” since July 28, 2010. The Disputed Domain Name does not currently resolve to an active website.
5. Parties’ Contentions
The Complainant makes the following submissions.
The Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety. The addition of the generic Top-Level Domain (“gTLD”), “.com”, is irrelevant when determining whether a disputed domain name is confusingly similar to a protected mark.
The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent does not have any license, authorization or consent from the Complainant to use the Trade Mark. The Respondent has no connection or affiliation with the Complainant or its subsidiary. Further, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent cannot establish any rights or legitimate interests by using the Disputed Domain Name as part of a personal email address.
The Respondent has registered the Disputed Domain Name in bad faith. The Disputed Domain Name was transferred to the Respondent in June 2015. By this time, the Complainant was well established and had a reputation in the Trade Mark. An Internet search would have revealed the Complainant’s business and the famous book by Sheryl Sandberg, Lean In. The Respondent has intentionally attempted to attract, for commercial gain, users to its website by creating a likelihood of confusion with the Trade Mark, which is evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent makes the following submissions.
The Respondent has used the email address “[...]@leanin.com” since 2010. The Respondent has rights and legitimate interests as the Disputed Domain Name has been used to host the Respondent’s email address and digital presence. The Respondent is making legitimate noncommercial and fair use of the Disputed Domain Name without intent for commercial gain.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
The Complainant and the Respondent both submitted a supplemental filing. The Rules do not expressly provide for additional filings and generally, panels will only accept supplemental filings in “exceptional” circumstances.
The Panel has reviewed the supplemental filings, however the additional information provided is not material to the Panel’s decision in this case and does not cause the Panel to reach a different view than that which it reached on the basis of the original Complaint or Response. The Panel declines to accept the supplemental filings.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
In this case the Disputed Domain Name is identical to the Trade Mark as it incorporates the Trade Mark in its entirety and no additional terms have been added. The addition of the gTLD “.com” can be discounted for the purposes of establishing whether a disputed domain name is identical or confusingly similar to a trade mark. See Zynga Game Network, Inc. v. Emil Boc, WIPO Case No. D2009-1535.
The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Complainant submits that the Respondent does not have any license, authorization or consent from the Complainant to use the Trade Mark. The Complainant acknowledges that the Respondent is using the Disputed Domain Name in association with an email address, however submits that this use is not sufficient to confer rights or legitimate interests.
The Respondent submits that it has used the email address since July 2010. The Respondent owned and operated a company called LeanIn Inc. from 2010. This company has since been dissolved, however the Respondent is still using the email address which it acquired from the company in June 2015.
Use of an email can be a legitimate use of a domain name under the Policy, for example, where a registrant has established a business of providing email services using the relevant domain name, or where a domain name is being used as a registrant’s primary personal or business email address (Thebuyerpool Limited v. Private Registration / Stephen Pomeroy WIPO Case No. D2018-0133).
Based on previous panel decisions, it is open to the Panel to find that the use of the Disputed Domain Name as an email address constitutes rights or legitimate interests. However, given the Panel’s findings in relation to bad faith below, it is not necessary to decide this issue.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
To succeed in a complaint under the Policy, it is well established that under the third element of the Policy, a complainant must prove on the preponderance of the evidence is that the domain name in issue was registered in bad faith, i.e., was registered with the complainant and/or its trade mark in mind.
In this instance, the Disputed Domain Name was first registered on June 28, 2002. The Disputed Domain Name was transferred to LeanIn Inc., the Respondent’s business, on July 28, 2010. The Disputed Domain Name was then transferred to the Respondent on June 24, 2015.
It is well established that the transfer of a domain name to a third party amounts to a new registration for the purpose of the Policy. It is also generally accepted that this is not the case where there is evidence to establish an unbroken chain of underlying ownership by a single person of a domain name, and any change in the WhoIs registrant data is not being made to conceal the underlying owner’s identity. For example, in Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink, Case No. D2014-1860 the panel found that the original registrant of a domain name was a company established by the respondent and was therefore under the respondent’s control.
In this case, the Respondent was the sole director of LeanIn Inc., which purchased the Disputed Domain Name in July 2010. In the circumstances, it is open to the Panel to find that the Disputed Domain Name has been under the control of the Respondent since July 2010. This is five years prior to the Complainant’s registration of the Trade Mark, two years prior to publication of the book and 6 months prior to Sheryl Sandberg’s Ted Talk.
The Complainant has not provided any evidence of reputation in “Lean In” prior to July 2010, save for its registration of the domain name <leanin.org> on April 6, 2010. However, the Panel considers that mere registration of a domain name does not demonstrate reputation in the relevant trade mark. If the Complainant had provided evidence to show that it had used <leanin.org> prior to July 2010 and that the Respondent was likely to have been aware of such use, or that the Respondent had engaged in a pattern of behavior of registering famous trade marks as domain names, then the outcome may be different. However, the Complainant did not provide any such evidence. The Complainant has not provided any evidence, nor has it even attempted to make any argument, as to why the Respondent knew or should have known of the Complainant or its future business operations in July 2010 (See Mister Auto SAS v. Wharton Lyon & Lyon, WIPO Case No. D2018-1330).
The Panel considers that the Complainant’s registration of <leanin.org> is insufficient to establish reputation in the Trade Mark prior to the Respondent’s registration of the Disputed Domain Name.
Where a respondent registers a domain name before the complainant’s trade mark rights accrue, a panel will not normally find bad faith on the part of the respondent (see WIPO Overview 3.0, section 3.8.1).
No amount of subsequent bad faith use can convert a good faith registration into a bad faith registration (See Green Tyre Company Plc. v. Shannon Group, WIPO Case No. D2005-0877).
As stated by the panel in Coolside Limited v. Get On The Web Limited, WIPO Case No. D2016-0335:
“In those circumstances, it hardly needs stating that the Respondent cannot conceivably have been aware of the existence, or even potential existence, of the Complainant or of any rights it might subsequently acquire in the [trade mark] at the time of registration. In this Panel’s view, therefore, the Domain Name cannot conceivably have been registered in bad faith.”
In light of the above, the Panel finds that the Complainant has not established bad faith registration as required by the third element of the Policy. Accordingly, the Panel does not need to decide whether the Respondent used the Disputed Domain Name in bad faith. However, there is no evidence to suggest bad faith use by the Respondent.
The Complainant has not proved bad faith use or bad faith registration.
For the foregoing reasons, the Complaint is denied.
Date: April 1, 2019