WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Military Order of the Purple Heart and Military Order of the Purple Heart Service Foundation, Inc. v. Colours Ltd.
Case No. D2013-0950
1. The Parties
The Complainants are Military Order of the Purple Heart of Springfield, Virginia, United States of America (“USA”) and Military Order of the Purple Heart Service Foundation, Inc. of Annandale, Virginia, USA, represented by Quarles & Brady LLP, USA.
The Respondent is Colours Ltd. of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name < purpleheartcardonationprogram.com> is registered with Key-Systems GmbH dba RRPproxy (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2013. On May 29, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2013, 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. On June 3, 2013, the Complainant submitted the amended Complaint to correct a typographical error in the disputed domain name indicated in the Complaint.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2013.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 1, 2013. 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. Preliminary Issue
A. Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple Complainants. On this subject, paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides inter alia as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
In the present case, the Complainants have not expressly requested consolidation, nor has their submission discussed the terms of the relevant criteria directly. However, the Panel is content that the Complainants’ submissions as to their respective rights and interests in this matter are sufficiently detailed that it is possible for the Panel to identify whether the criteria have been established without the need for the Complainants to have included a specific request for consolidation.
As noted in more detail in the Factual Background section below, the First Complainant Military Order of the Purple Heart is the owner of various PURPLE HEART trademarks while the Second Complainant Military Order of the Purple Heart Service Foundation operates as the exclusive national fundraiser for the First Complainant. The Complainants together allege that the disputed domain name targets the Complainants’ fundraising activities and it is their case that the disputed domain name may lead consumers to believe that the Respondent is affiliated with either one or both of the Complainants. Accordingly, the Panel finds that the Complainants have established that they have a specific common grievance against the Respondent and that the Respondent’s conduct has affected the Complainants’ individual rights in a similar fashion. The Respondent has not filed a Response to the Complaint and therefore has not objected to the Complaint having been brought against it by joint complainants, nor has it suggested that any prejudice would arise from such consolidation. The Panel considers in all of the above circumstances that it would be procedurally efficient to allow the Complainants to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties.
B. Requested Remedy
The Panel notes that the remedy requested in the Complaint is that the disputed domain name be transferred to the Complainants. The Panel cannot however order transfer of a single domain name to multiple parties as this may not amount to a sufficiently clear direction to the concerned registrar. The Factual Background below discloses that the Second Complainant operates the Purple Heart Car Donation Program, which the Complainants allege is being targeted by the disputed domain name. Accordingly, the Panel has decided that in the event of the Complaint’s success it may be most appropriate to order transfer of the disputed domain name to the Second Complainant. If the Complainants intended the disputed domain name to be transferred to the First Complainant, they may simply ask the Registrar to amend the relative account details after the transfer is implemented.
5. Factual Background
The First Complainant was formed in 1932 and is a USA veterans service organization dedicated to the protection and mutual interest of all who have received the Purple Heart decoration. The First Complainant derives funds for welfare, rehabilitation and service work through the collection of used household items, the operation of thrift stores, the donation of automobiles and from the annual distribution of its official flower, the Purple Heart Viola.
The First Complainant is the owner of various USA trademarks of or incorporating the mark PURPLE HEART, including USA Registered Trademark no. 2206764 for the word mark PURPLE HEART, registered on December 1, 1998 in international class 16.
The Second Complainant was chartered in 1957 and is the exclusive national fundraiser for the First Complainant. The Second Complainant’s purpose and objectives include raising funds for service, welfare, and rehabilitation work in connection with the members of the First Complainant, together with contributing to other unrelated veterans’ organizations. The Second Complainant raises money inter alia via its Purple Heart Car Donation Program which is promoted in a variety of ways including through its website at “www.purpleheartcars.org”.
The Second Complainant is the owner of two USA trademarks of or incorporating the mark PURPLE HEART, including USA Registered Trademark no. 4015788 for the word mark PURPLE HEART, registered on August 23, 2011 in international class 36.
The Respondent appears to be an entity based in Charlestown, Nevis, Saint Kitts and Nevis. The disputed domain name was created on September 15, 2012. A screenshot of the website associated with the disputed domain name taken by the Complainants on May 28, 2013 shows that the said website is used to publish a variety of sponsored listings including one headed “Purple Heart Cars”.
6. Parties’ Contentions
The Complainants contend that the disputed domain name is confusingly similar to trademarks in which the Complainants own rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
In addition to their registered trademarks, the Complainants claim unregistered rights in the PURPLE HEART mark which they state has been used continuously and extensively in commerce by each of the Complainants since at least as early as 1957. The Complainants use this mark inter alia on websites, in connection with fund raising activities and on newsletters. The Complainants assert that by virtue of the Complainants’ extensive marketing of their services undertaken for veterans and their dependents, the Complainants’ PURPLE HEART family of marks has become recognized by consumers throughout the USA as designating the Complainants as the source of veterans’ services and fundraising efforts.
The Complainants submit that the Respondent is not, and has never been, authorized to use the Complainants’ PURPLE HEART family of trademarks and that the disputed domain name is not the name of the Respondent, nor can it be considered to be the Respondent’s business name or common trade name. The Complainants assert that prior to any notice to the Respondent of the dispute, there is no evidence that the Respondent used, or made preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainants state that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and that the Respondent has registered the disputed domain name to misleadingly divert donors and collect revenue from them by featuring sponsored advertising links. The Complainants assert that many of the links feature competitors’ names and links to competitors’ websites. The Complainants note that clicking on the “Purple Heart” link takes users to further hyperlinks for competitive car donation programs such as “www.carsforveterans.com” that compete with the Complainants’ fund raising activities.
The Complainants assert that the Respondent knew of the existence of the Complainants’ trademarks and has registered the disputed domain name primarily for the purpose of disrupting the business and advertising funds intended to support the services of the Complainants. The Complainants submit that the Respondent uses the disputed domain name to attract consumers for commercial gain by deceptively leading them to believe that the Respondent is affiliated in some way with the Complainants or that its website is sponsored, approved or endorsed by the Complainants, or that money directed to the Respondent’s advertisers will benefit veterans. The Complainants add that previous cases under the Policy have found bad faith on the part of a respondent where the domain name concerned has been used as a parking page with affiliated links.
The Respondent did not reply to the Complainants’ contentions.
7. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(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.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainants have demonstrated that each of the Complainants has rights in their respective registered trademarks for the word mark PURPLE HEART, as cited in the Factual Background section above. The disputed domain name incorporates this mark in its entirety and as the first and dominant element thereof, together with the generic and descriptive phrase “car donation program”, and the generic Top-Level Domain (gTLD) suffix “.com” which may be disregarded for the purposes of comparison as is customary in cases under the Policy.
It is well established in previous decisions under the Policy that the addition of a descriptive or generic word or phrase to a trademark in a domain name does not prevent the domain name from being confusingly similar to that trademark. A descriptive element cannot remove the overall impression made on the public by a trademark which is the dominant part of the domain name (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409). In the present case, the Panel also notes that the phrase “car donation program” is descriptive of one of the key fund raising activities in which the Second Complainant engages for the benefit of the First Complainant. In the Panel’s opinion, this exacerbates the confusing similarity between the disputed domain name and the Complainants’ trademarks.
In all of these circumstances, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainants have rights and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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”.
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Complainants contend that they have not authorized the Respondent to use their respective trademarks within the disputed domain name, nor is the disputed domain name the Respondent’s name, business or trade name. The Complainants also assert that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainants submit that the Respondent uses the disputed domain name to misleadingly divert donors away from the Complainants and that this could not be considered to be a legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that these submissions, taken together, constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Where, as here, a complainant successfully makes a prima facie case that a respondent has no rights or legitimate interests in a domain name under the Policy, the burden of production shifts to the respondent to bring forward evidence of such rights or legitimate interests. In the present case, the Respondent has not filed a formal Response to the Complaint and accordingly has presented the Panel with no information which might disclose any apparent rights or legitimate interests which the Respondent might have in the disputed domain name. The Panel furthermore accepts the Complainants’ contention that the Respondent’s use of the disputed domain name, which incorporates the Complainants’ PURPLE HEART trademark in its entirety, to provide advertising links that have the effect of diverting potential donors away from the Complainants’ fund raising activities cannot be considered to confer any such rights or legitimate interests upon the Respondent.
In these circumstances, the Panel finds that the Complainants have proved that the Respondent has no rights or legitimate interests in the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”.
In the present case, the Complainants’ submissions focus principally on paragraphs 4(b)(iii) and (iv) of the Policy. Of these, the Panel considers that the submission regarding paragraph 4(b)(iv) of the Policy is to be preferred. The Panel does not believe that the Respondent had the primary intent to disrupt the Complainants’ business per se; however it seems more likely than not to the Panel that the Respondent has engaged in a scheme whereby it has registered and uses the disputed domain name in connection with sponsored advertising (so-called “pay-per-click”) hyperlinks with a view to receiving commercial gain from Internet traffic generated from misled Internet users who are looking for the Complainants’ fundraising program.
Such Internet users will likely arrive at the website associated with the disputed domain name by virtue of the disputed domain name, which is confusingly similar to the Complainants’ trademarks and which mentions the car donation program that is associated with the Complainants fundraising. The Internet users may then click on a hyperlink which seems appropriate to them. The typical sponsored advertising link will at this point generate revenue for the website owner. The Panel accepts the Complainants’ contention that there is no reason to believe that any such funds generated by the website associated with the disputed domain name are given to support USA veterans, whether beneficiaries of the Complainants’ charitable activities or otherwise.
Furthermore, the Respondent has chosen not to file a Response in these proceedings and as such has not provided the Panel with any alternative explanation for its conduct to that which has been put forward by the Complainants. The Panel considers that the nature of the disputed domain name, which is clearly targeted to the Complainants’ trademarks and relative fund raising program, points firmly in the direction of registration in bad faith. Likewise, in the Panel’s opinion the associated website, which contains sponsored listings directing visitors to alternative fundraisers, is itself a clear indicator of use in bad faith. Furthermore, on the record of this case, the Panel finds it inconceivable that there could be any explanation put forward by or on the Respondent’s behalf which would suggest that the Respondent was acting in good faith in connection with the registration and use of the disputed domain name.
The Panel is satisfied in all of these circumstances that the Complainants have successfully made out a case that the Respondent has registered and is using the disputed domain name in bad faith in terms of the Policy. Accordingly, the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <purpleheartcardonationprogram.com> be transferred to the Complainants.
Andrew D. S. Lothian
Date: July 15, 2013