WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Prevent Child Abuse America v. Sumardi Sumardi
Case No. D2019-1287
1. The Parties
1.1 The Complainant is Prevent Child Abuse America, United States of America (“United States” or “US”), represented by Latham & Watkins LLP, United States.
1.2 The Respondent is Sumardi Sumardi, Cambodia.
2. The Domain Name and Registrar
2.1 The disputed domain name <preventchildabusetexas.org> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 7, 2019, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2019.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 19, 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
4.1 The Complainant is an Illinois non-profit organization located in Chicago but with affiliates or “chapters” operating throughout the United States. It was founded in 1972 and promotes services that improve child well-being through programs that help prevent all types of abuse and neglect of children. It helps 100,000 families a year in the United States.
4.2 The Complainant and its affiliates operate under the name “Prevent Child Abuse America” and using what it describes as a “pinwheel” design mark throughout the United States. The first began to use the “Prevent Child Abuse America” name in March 1999, and the “Pinwheel” design mark in April 2017.
4.3 The Complainant also is the owner of corresponding United States registered trade marks. These include registration No. 3571637 for the standard character mark PREVENT CHILD ABUSE AMERICA in classes 16, 35, and 41, which proceeded to registration on February 10, 2009. The trade mark is not subject to any disclaimer.
4.4 Either the Complainant or its relevant chapters have operated a number of websites in different US states that take the form “www.preventchildabuse[name of US state].org”.
4.5 The Domain Name was previously registered for the Complainant’s Texas chapter in 2003 and was used by that chapter until November 2017, when it was inadvertently allowed to lapse.
4.6 The WhoIs details for the Domain Name suggest that the Respondent is an individual with an address in Cambodia, although that individual also appears to have connections with Indonesia. When the Domain Name lapsed it was acquired by the Respondent. Thereafter, it was initially used for a website that in large part replicated the website that the Complainant’s Texas chapter had operated from the Domain Name. That included text on that website and the Complainant’s “pinwheel” design mark. However, to the right of the page were added a series of links to activities unconnected with the activities of the Complainant; with text such as “Bandarq Agent Poker”.
4.7 On February 20, 2019 and March 14, 2019 the Complainant attorneys sent cease and desist letters to the Respondent demanding, among other things, the transfer of the Domain Name. The Respondent did not respond to that request, but the content of the website changed. The text “Prevent Child Abuse Texas” remained as the header to the home page, but the “pinwheel” design mark was removed and the English text under the header was replaced with text in Indonesian. The text used suggested that this continued to be the website of a non-profit child abuse prevention organisation, provided an address in South Africa (which appears to be false), used an email address associated with the Complainant’s <preventchildabuse.org> domain name and sought donations through a Pay Pal link. The links on the right hand side of the page also remained; with text such as “Poker88qq” and “Anduqq Poker”.
5. Parties’ Contentions
5.1 The Complainant contends that the Domain Name is nearly identical and, to the very least, confusingly similar to the Complainant’s distinctive and arbitrary PREVENT CHILD ABUSE AMERICA mark with the mere addition of the geographic descriptive term “Texas”.
5.2 The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name in that none of the examples of such rights or legitimate interests set out in the Policy apply and that the burden of proof passes to the Respondent to demonstrate that such a right or legitimate interest exists. In this respect, it contends that the Domain Name is actually being used to divert Internet users interested in the Complainant’s Texas Chapter to fraudulently solicit charitable donations for a non-existent child abuse prevention organization and to lure visitors to engage in online gambling.
5.3 The claimed fraudulent use of the Domain Name and the links to online gambling are also said to demonstrate that the Domain Name was both registered and has been used in bad faith. In support of its contentions as to bad faith, the Complainant also relies upon the Respondent’s failure to respond to the various cease and desist letters of its attorneys.
5.4 The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Complainant has demonstrated that it owns registered trade mark rights in the phrase “PREVENT CHILD ABUSE AMERICA”, and that this mark is not subject to any disclaimer. The Panel accepts that these words are arbitrary in the sense that although these words have a significant descriptive element, this particular combination of words is not a purely descriptive phrase.
6.5 The Panel also accepts that the only sensible reading of the Domain Name is as the words “Prevent Child Abuse Texas” combined with the “.org” Top-Level Domain (“TLD”). The phrase “Prevent Child Abuse Texas” has a high degree of similarity with the Complainant’s mark in that it comprises the same first three words combined with the name of an “American” state.
6.6 Further, were there any doubt about this, this is one of those cases where the actual use of the Domain Name after it was acquired, so as to replicate the website of the Complainant, is a factor that the Panel can take into account in its objective assessment of whether the Domain Name and trade mark relied upon are “confusingly similar” for the purposes of the Policy; as to which see section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
6.7 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests and Registered and Used in Bad Faith
6.8 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together.
6.9 The Panel accepts that the Domain Name has been registered and used by the Respondent (whomever that might actually be) to deceptively represent that he is either the Complainant (or at least some other non-profit organisation dedicated to the prevention of child abuse) when he is not, and that this has been done as part of a scheme to direct Internet uses to online gambling website and to seek donations.
6.10 That the Respondent has sought to impersonate the Complainant is clear from (a) the original form of the website that operated from the Domain Name once it had been acquired by the Respondent, in that it reproduced sections of the Complainant’s genuine site; and (b) the fact that even when this was taken down and replaced by Indonesian text, the Respondent continued to use an email address that suggested that the website was operated by or connected with the Complainant.
6.11 There is no right or legitimate interest in holding a domain name to further fraudulent impersonation, and registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Weber-Stephen Products LLC v. WhoisGuard Protected, WhoisGuard, Inc. / Daniela Gebauer, Kitchenhelpers GmbH, WIPO Case No. D2017-0118). As stated in section 2.13.1 of the WIPO Overview 3.0 “the use of a domain name for illegal activity (e.g., […] impersonating/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. There is no need in circumstances where this can be shown for a panel to rely upon arguments as to a prima facie showing of lack of rights or legitimate interest and a passing of a burden of proof. The lack of rights or legitimate interests is clearly evident. Further, the Panel also accepts that the Respondent’s activities fall within the scope of paragraph 4(b)(iv) of the Policy.
6.12 This does not appear to be the most sophisticated of frauds. The Panel questions whether many Internet users would think that an organisation such as the Complainant would promote online gambling, or whether many Internet users would think that the Complainant operates an Indonesian language website for an organisation based in South Africa. However, that does not matter where, as the Panel considers to be the case, the Respondent motives are nevertheless clear.
6.13 In the circumstances, the Panel finds that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
7.1 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 be transferred to the Complainant.
Matthew S. Harris
Date: July 29, 2019