DECISION

 

Spence-Chapin Services to Families and Children v. Spence-Chapin, LLC a/k/a Stanley Wynman

Claim Number: FA0203000105945

 

PARTIES

The Complainant is Katherine S. Legg Spence-Chapin Services to Families and Children, New York, NY (“Complainant”) represented by Katherine S. Legg, of Spence-Chapin Services to Families and Children.  The Respondent is Spence-Chapin, LLC a/k/a Stanley Wynman, Ridgefield Park, NJ (“Respondent).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <spence-chapin.biz>, and <spence-chapin-llc.com> registered with Register.com.

 

PANEL

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.

 

Honorable William H. Andrews, Arbitrator

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 19, 2002; the Forum received a hard copy of the Complaint on March 20, 2002.

 

On March 20, 2002, Register.com confirmed by e-mail to the Forum that the domain names <spence-chapin.biz>, and <spence-chapin-llc.com> are registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 10, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@spence-chapin.biz and postmaster@spence-chapin-llc.com by e-mail.

 

A timely Response was received and determined to be complete on April 10, 2002.

 

Complainant submitted a timely Additional Submission on April 15, 2002, and Respondent submitted a timely Additional Submission on April 19, 2002.  Each of the supplemental designations was given due consideration in arriving at the decision. 

Pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable William H. Andrews as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

1) Complainant contends that both the domain names, <spence-chapin-llc.com> and <spence-chapin.biz> are confusingly similar to Complainants’ domain name <spence-chapin.org> and <spence-chapin.com>; Complainant claims a common law rights to the trademark/service mark spence-chapin

 

2) Complainant contends the Respondent has no right or legitimate interests in the disputed domain names.

 

3) Complainant contends that Respondent’s registration and use of the disputed domain names is in bad faith

 

B. Respondent

 

1) Respondent contends that the Complainant failed to properly serve the Complaint upon Stanley Wynman, as the registrant

 

2) Respondent contends that Respondent does have rights or legitimate interests in the disputed domain name

 

3) Respondent contests that the disputed domain names are confusingly similar

 

4) Respondent contests that Respondent acted in bad faith by registering and using the disputed name.    

 

FINDINGS

1. Spence-Chapin Services to Families and Children, is known to the public and adoption community as Spence-Chapin

 

2.  Spence-Chapin is incorporated in the state of New York

 

3. Complainant has been providing adoption services under the name Spence-Chapin since 1948.

 

4. Complainant has been using its current domain name, <spence-chapin.org> In  

conjunction with its website since 1996.

 

5. Complainant has common law rights to usage of the mark SPENCE-CHAPIN, as the same was found in a prior proceeding involving Stanley Wynman, who is associated with Respondent.           

 

6. Spence-Chapin is well-known locally and nationally as a leader in adoption.

 

7. Among other things, Spence-Chapin provides adoption education programs to the public, and has placed approximately 16,000 children in adoptive homes since its         

inception in the early 1900's.

 

8. Respondent is not affiliated with or in any way sponsored by the Complainant and has never represented Spence-Chapin or its programs in any aspect.

 

9. Respondent produces, among other things, information on adoption, and seeks to use   the sites to register criticism of Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

 

Respondent contends that Complainant’s claim must fail, because Complainant has no registered service or trade marks in the Spence-Chapin name.  The Complainant, however, has demonstrated through its long-time usage, and through its presence on the Internet since 1996, that it has a common law right to the Spence-Chapin name.  Specifically, the exhibits submitted by Complainant establish that it has used the Spence-Chapin name on its brochures and annual reports for more than one-half century.  Moreover, the Complainant has operated under the domain name of <spence-chapin.org> and in a prior proceeding the right to <spence-chapin.com> was transferred to it as well.

 

The Panel now finds that Respondent’s <spence-chapin.biz> is identical to Complainant’s common law SPENCE-CHAPIN mark because it includes Complainant’s mark in its entirety, merely adding the generic top-level domain name “.biz.”  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

Respondent’s <spence-chapin-llc.com> domain name is confusingly similar to Complainant’s SPENCE-CHAPIN mark because it includes Complainant’s name in its entirety, merely adding a hyphen, the generic abbreviation “llc”, and “.com.”  See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding the addition of a hyphen and .com are not distinguishing features”); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term).  Moreover, both the disputed domain names are confusingly similar because their content consists of adoption information, the very services Complainant provides.  Respondent admits in the initial Response that it is involved in the adoption community, as is Spence-Chapin.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

 

Finally, Respondent argues that Complainant should have registered every possible variation of the spence-chapin name, and that its failure to do so should defeat its claim.  Complainant, however, is not required to register every domain name that incorporates its mark to have rights in the mark.  Moreover, the evidence indicates that Complainant has registered several variations of the name.  See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the Complainant to register all possible domain names that surround its substantive mark does not hinder Complainant’s rights in the mark).

 

Rights or Legitimate Interests  

 

Respondent contends that, even if Complainant has rights in the mark, Respondent has legitimate interests because the name will be used for non-commercial reasons including publicizing criticism of the Complainant.  Respondent contends, among other things, that it has a First Amendment right to participate in such activities.  In its additional submission, Complainant contends that, just because Respondent asserts First Amendment rights, does not mean that it can infringe on Complainant’s mark by using identical and/or confusingly similar domain names.  While Respondent may have First Amendment rights as to the content of its site, that does not entitle it to use the same or similar domain name of Complainant to accomplish its goals and further its mission.  See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that, while the content of Respondent’s website may enjoy First Amendment and fair use protection, those protections do not equate to rights or a legitimate interest “with respect to [a] domain name” which is confusingly similar to another’s trademark); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for “public comment” on the Internet).

 

The Panel finds that Respondent’s use of both the identical domain name and confusingly similar domain name to offer information on adoptive services, the same service Complainant has offered since 1948, indicates that it intends to divert Complainant’s customers to its website; and it therefore was not making a bona fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

 

There is no evidence which would indicate that Respondent, known as Stanley Wynman or “Spence-Chaplin, LLC,” is commonly known throughout the community by <Spence-chapin.biz> and <Spence-chapin-llc.com>.  Moreover, as Complainant notes in its supplemental designation, Respondent has an application for a trademark of the Spence-Chapin name, but it does not appear from the evidence that Respondent has obtained rights to the mark as against Complainant’s interests, of which Respondent was aware at the time of filing.  Complainant also contends that it will contest the application as soon as it is published for opposition.  For these reasons, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of analysis under Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name). 

 

Registration and Use in Bad Faith

 

The final issue is whether the domain was registered in bad faith.  Under Section 4(b) of the Policy, evidence of a respondent’s bad faith registration and use includes:

 

(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 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 website or other on-line 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.

 

Here, The Panel finds that Respondent’s registration of the domain names at issue, as well as its previous registration of <spence-chapin.com>, which has been subsequently transferred to Complainant, indicates that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)).  The evidence as presented by Complainant suggests a pattern. On December 12, 2001, the site, <spence-chapin.com> was transferred to Complainant pursuant to a prior ruling finding that the name was similar and that Complainant had common law rights in the mark of spence-chapin.  It appears that <spence-chapin-llc.com> was registered on that same day.  Moreover, <spence-chapin.biz> was registered just one-month later.

 

The Panel also finds that Respondent, as another provider of adoption information services, may be considered a competitor of Complainant, and as a result, its registration of two domain names incorporating Complainant’s marks indicates bad faith under Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).  By registering a same or similar domain name, users might easily be directed to Respondent’s web site when, in actuality, they are attempting to find the site of Complainant.  After accidentally or mistakenly arriving at Respondent’s site instead of Complainant’s, the user will find criticism of Complainant’s business, thus constituting a probable interference with Complainant’s business.  Respondent has stated that it intends to use the site for criticism of Complainant and correspondingly argues that there is a First Amendment right to do this.   Respondent is free to make criticisms, but the right to make such criticisms does not extend to using the same or similar domain name, without any immediate element to distinguish Respondent, as an entity, from Complainant. The Panel does not feel that either of the sites adequately distinguish between the parties. Complainant has been known throughout the adoption community as Spence-Chapin and has developed a common law right in the mark from its historical use and recognition throughout the adoption community over the last half-century.   Respondent has not sufficiently shown that no practical alternatives are available to use of Complainant’s mark for Respondent’s sites. 

 

Accordingly, the Panel now finds that Respondent’s two sites are the same or similar to Complainant’s mark and sites; that Respondent’s sites will produce confusion and that Respondent has no legitimate right to use of the mark; that the sites are registered in bad faith as an attempt to disrupt Complainant’s activities. Accordingly, Complainant shall be granted the requested relief.

 

 

DECISION

Based on the foregoing findings and conclusions, and pursuant to Section 4(a) of the policy, it is decided as follows:

 

The undersigned arbitrator directs that the registration of the domain names, <spence-chapin.biz> and <spence-chapin-llc.com> be transferred to Complainant, Spence-Chapin Services to Families and Children.  The Complainant’s request for relief is granted.

 

 

 

Honorable William H. Andrews, Panelist

Dated: May 6, 2002