Cure Violence Global and The Board of Trustees of the University of Illinois v. ?????? ??????????
Claim Number: FA2105001948835
Complainant is Cure Violence Global and The Board of Trustees of the University of Illinois (“Complainant”), represented by Laura M. Franco of Winston & Strawn LLP, California, USA. Respondent is ?????? ?????????? (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cureviolence.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 27, 2021; the Forum received payment on May 27, 2021.
On June 1, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cureviolence.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 28, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cureviolence.org. Also on June 7, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Cure Violence Global and The Board of Trustees of the University of Illinois. The Board of Trustees of the University of Illinois is the owner of the CURE VIOLENCE mark and Cure Violence Global is the licensee of the mark. Cure Violence Global is a nonprofit organization that promotes the Cure Violence Model which was developed through partnership with the University of Illinois.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. The proceeding may therefore go forward in that form. In this decision, the two complainants will be referred to as “ Complainant”.
A. Complainant
Complainant made the following contentions.
Complainant has rights in the CURE VIOLENCE mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,883,196, registered Aug. 10, 2010). See Amend. Compl. Ex. D. Respondent’s <cureviolence.org> domain name is identical to and wholly incorporates Complainant’s CURE VIOLENCE mark.
Respondent does not have rights or legitimate interests in the <cureviolence.org> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the CURE VIOLENCE mark. Additionally, Complainant formerly owned the disputed domain name and inadvertently allowed registration for the domain name to lapse.
Respondent registered and uses the <cureviolence.org> domain name in bad faith. Respondent uses the disputed domain name to disrupt Complainant’s business and attract users for commercial gain by passing off as Complainant and phishing for users’ financial information. Additionally, Respondent provided false WHOIS information. Furthermore, Respondent had constructive and actual knowledge of Complainant’s rights in the CURE VIOLENCE mark based on the registration and fame of the mark, as well as Respondent’s use of the domain to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a U.S.-based not-for-profit organization dedicated to promoting the Cure Violence Model, in partnership between the University of Illinois and other professionals to address the causes and remedies for urban violence.
2. Complainant has established its trademark rights in the CURE VIOLENCE mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,883,196, registered Aug. 10, 2010).
3. Respondent registered the <cureviolence.org> on November 14, 2020.
4. Complainant formerly owned the disputed domain name and inadvertently allowed registration of the domain name to lapse on October 2, 2020, showing that Respondent has no rights or legitimate interests in the domain name and that it registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CURE VIOLENCE mark based on registration of the mark with the USPTO (e.g., Reg. No. 3,883,196, registered Aug. 10, 2010). See Amend. Compl. Ex. D. Registration of a mark with the USPTO is a valid showing of rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Since Complainant provides evidence of registration of the CURE VIOLENCE mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CURE VIOLENCE mark. Complainant argues that Respondent’s <cureviolence.org> domain name is identical to Complainant’s mark as it wholly incorporates Complainant’s CURE VIOLENCE mark. When a disputed domain incorporates a mark entirely and simply adds a generic top-level domain (gTLD) the Panel may find the domain name is identical to the mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also ADESA, Inc. v. James Louis, FA 1736761 (Forum July 19, 2017) (“[T]he Panel finds that Respondent’s <adesa.org> domain name is identical to Complainant’s ADESA mark.”). Thus, the Panel finds that the disputed domain name is identical to the CURE VIOLENCE mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s CURE VIOLENCE trademark and to use it in its domain name;
(b) Respondent registered the <cureviolence.org> domain name on November 14, 2020;
(c) Complainant formerly owned the disputed domain name and inadvertently allowed registration of the domain name to lapse on October 2, 2020, showing that Respondent has no rights or legitimate interests in the domain name and that it registered and used the domain name in bad faith;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent does not have rights or legitimate interests in the <cureviolence.org> domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the CURE VIOLENCE mark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, lack of authorization to use a mark constitutes a further showing that a respondent is not commonly known by the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). Here, the WHOIS information lists “?????? ??????????” as the registrant and no information suggesting Complainant authorized Respondent to use the CURE VIOLENCE mark in any way. See Amend. Compl. Ex. L. Thus, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii);
(f) Complainant asserts that it formerly owned the <cureviolence.org> domain name and inadvertently allowed the registration for the domain name to lapse. Previous Panels have found that a respondent lacks rights or legitimate interests in a disputed domain name when the complainant accidentally allowed the domain registration to lapse. See Raise Labs, Inc. v. Hong young jin, FA 1685247 (Forum Sept. 1, 2016) (“[The disputed domain name was] registered by Complainant on or about September 20, 2013. The registration was inadvertently allowed to lapse and was registered by Respondent at a subsequent date… As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Complainant asserts that it registered the <cureviolence.org> domain name on October 2, 2009, and inadvertently failed to renew the domain and was unaware of the lapse in registration on October 2, 2020. Complainant also provides evidence that it tried to backorder the disputed domain name from the registrar on November 13, 2020 but was unsuccessful. See Amend. Compl. Exs. E-G. Therefore, the Panel finds Respondent lacks rights or legitimate interests in the disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <cureviolence.org> domain name in bad faith because Respondent uses the disputed domain name to disrupt Complainant’s business and attract users for commercial gain by passing itself off as Complainant and phishing for users’ financial information. Using a disputed domain name to pass off as a complainant and engage in phishing can be evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv) because the respondent used the disputed domain name to present users with a website that was “virtually identical, with the same color scheme, the same layout and the same substantive content” and used the website to gain access to users’ cryptocurrency accounts). Complainant provides screenshots of the resolving webpage for the disputed domain name which Complainant submits is an outdated version of Complainant’s legitimate website and features a “Donate Now” button which Complainant believes Respondent uses to phish for users’ financial information. See Amend. Compl. Ex. H. Thus, as the Panel agrees, it finds bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues Respondent’s bad faith is evidenced by Respondent’s provision of false WHOIS information. Under Policy ¶ 4(a)(iii), using false contact information for the WHOIS information of a disputed domain name indicates bad faith. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”). Here, Respondent provides a fake name and address for the contact information. See Amend. Compl. Ex. L. Therefore, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant contends that Respondent had constructive and actual knowledge of Complainant’s rights in the CURE VIOLENCE mark based on the registration and fame of the mark, as well as Respondent’s use of the domain to pass off as Complainant. While constructive knowledge is insufficient for a finding of bad faith, per Policy ¶ 4(a)(iii), actual knowledge of a complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and a respondent’s efforts to pass off as the complainant. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); see additionally Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). The Panel recalls that the disputed domain name resolves to a webpage that is an outdated version of Complainant’s legitimate website. See Amend. Compl. Ex. H. Therefore, as the Panel finds Respondent had actual knowledge of Complainant’s rights in the CURE VIOLENCE mark, the Panel finds bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cureviolence.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 6, 2021
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